TGIF for the Anonymous Patent Examiner Blog

Here are just some of the excellent insights from the "Just a Patent Examiner Blog."

On July 11, 2005 regarding "Motivation to Combine:"

. . . for a good paper on the myriad court decisions related to motivation, see Harold R. Brown III’s “Finding Motivation, Teaching or Suggestion in the Prior Art” in the October 2004 Journal of the Patent and Trademark Office Society . . . .

If you want the average examiner’s eyes to glaze over (or me to disregard your arguments), put 4 pages of arguments citing 10 different pieces of case law regarding the motivation to combine. I simply don’t have the time to research all of the case law you've cited to figure out which applies and which does not. I don't mind seeing responses like that, because suddenly I find that what I thought was a 6 page response consists of only two pages that actually need to be responded to.

If an attorney wants me to seriously consider their arguments that my motivation is no good, they need to pick one piece of case law, and please, tell me why it applies to the particular circumstances of this application. Then I’ll be happy to consider the arguments.

Please, only one piece of case law at a time. [Read the comments here.]

On July 20, 2005 regarding "The One-Hand Rule:"

Physics has the right-hand rule.

Patent examination has the one-hand rule.

The rule, as I've heard it stated, says that if a claim is longer than the length of the examiner's hand, it's allowable. I've heard it more than once, from more than one examiner. The thing is, it's a complete fallacy. I know of not a single examiner, not even the ones from whom I've heard it, who actually subscribe to it. . . .

An attorney filed an RCE, and canceled all of the 30-some claims except for
a few independent claims, into which they incorporated all of the dependent
limitations. The remaining independent claims were roughly analogous, and were
each about two pages long. The thing was, though, that they had failed to
incorporate anything new; all they did was incorporate existing limitations.
Sure, the claims were long, and they included a whole lot of limitations, but
they were the same limitations that I'd already previously rejected. In that
case, the attorney made it easy on me. All I had to do to was to combine the
rejections that I'd already written.

on May 10, 2005 regarding "Patent Examination vs. Patent Prosecution:"

Why am I not in law school?

As I said, when I had been at the Office for two years and was eligible to apply, I really didn't feel the need. First of all, attending law school at night while working a full-time job (especially one as demanding as patent examining) would certainly be no picnic. And you're stuck doing it for FOUR YEARS.

OK, suppose I finish law school and now I have my law degree. I could waive into the patent bar, having already worked at the Office for at least 4 years, so I'd be free to leave (after working off the debt to the Office) and go work in private practice. Instead of sending out the rejections, I'd be writing the applications and sending in the amendments.

Well, to be perfectly blunt, I'd rather be doing what I'm doing now. Yes, I make less money. But I get to work semi-normal hours with a semblance of a life away from work. But the real deciding factor is that I like the idea of working to protect the public interest, preventing crappy patents from issuing, rather than to having to try to get some examiner to issue my crappy patent because that's what my client is paying me to do. That's the bottom line.

I could always go to law school, get the degree and stay at the Office. It would certainly allow me to do my job better, and would open up options for jobs here at the Office that require a law degree. Maybe one of these days I'll decide that I want to do it. But not yet. I like what I'm doing. So, for now, I'm content to remain Just a Patent Examiner.

With a truly noble calling, no less.

Thank Goodness It's Friday (and hopefully the end of the Examiner's bi-week),

--Bill Heinze