Patent Office Story

How the U.S. Patent Office Jumped the Shark

Jed Margolin

October 30, 2005

I have a number of U.S. patents. The ones that came from my work at Atari were prepared and prosecuted entirely by Atari's patent attorneys. Of the ones that came from my work as an Independent Inventor I started out by working with Patent Attorneys. For the past several years I have been doing them completely on my own (making me a pro se Applicant from the Latin "for self").

I have gotten the following patents pro se:

United States Patent    6,377,436    April 23, 2002
Microwave transmission using a laser-generated plasma beam waveguide

United States Patent      6,177,943   January 23, 2001
Digital map compression and display method

United States Patent     5,978,488    November 2, 1999
Simulated AM radio

United States Patent      5,974,423   October 26, 1999
Method for converting a digital elevation database to a polygon database

United States Patent     5,933,156    August 3, 1999
Z-Buffer for row addressable graphics memory with flash fill

In prosecuting these patents I have talked to most of my Examiners. My favorite Examiners have been the ones who have been Tough, but Fair, like Mr. Xu Mei (5,978,488) and Mr. Ronald Leja (6,377,436).

When we had a difference of opinion it was an honest difference of opinion and we were able to reach an acceptable compromise.

That is how the System is supposed to work.

That is not why I am writing this article.

I am writing this article because the System is broken.

The Patent Office has been hiring a great many new Patent Examiners recently. Unfortunately, they have hired too many new Examiners for them to train and supervise properly.

New Examiners get two weeks of training in MPEP (Manual of Patent Examining Procedure). After that they are set to work examining patents under the watchful eye of their Supervisors. Unfortunately, there are too many new Examiners for the Supervisors to supervise and train. It appears that many of these Supervisors provide no supervision at all. The Supervisors themselves might be new Supervisors and have not been trained how to supervise and train the Examiners in their charge.

According to the GAO Report to Congressional Committees June 2005  INTELLECTUAL PROPERTY - USPTO Has Made Progress in Hiring Examiners, but Challenges to Retention Remain (Report Page 24, PDF page 28):

Managers and examiners told us that examiners usually become fully proficient in conducting patent application reviews in about 4 to 6 years.

and from PDF page 2:

USPTO faces three long-standing challenges that could also undermine its efforts to retain a qualified workforce: the lack of an effective strategy to communicate and collaborate with examiners; outdated assumptions in the production quotas it uses to reward examiners; and the lack of required ongoing technical training for examiners. According to patent examiners, the lack of communication and a collaborative work environment has resulted in low morale and an atmosphere of distrust that is exacerbated by the contentious relationship between management and union officials. Also, managers and examiners have differing opinions on the need to update the monetary award system that is based on assumptions that were established in 1976. As a result, examiners told us they have to contend with a highly stressful work environment and work voluntary overtime to meet their assigned quotas. Similarly, managers and examiners disagree on the need for required ongoing technical training. Examiners said they need this training to keep current in their technical fields, while managers believe that reviewing patent applications is the best way for examiners to remain current.

(The report is available at

Thus, Examiner training is done at the Applicant's expense. This is unacceptable.

Patent Attorneys and Agents have to more-or-less put up with this crap. They have their future clients to think of, not to mention their own careers (they may get the same Examiner again). Besides, when an Examiner pulls a lot of crap the result is usually more RCEs (Request for Continuing Examination) so the Examiner is rewarded by more Counts (used to measure an Examiner's productivity) and the Patent Attorney gets more billable hours. An RCE also starts the examination clock over again so it appears to reduce the average pendancy time for an application. Everybody wins except for the Applicant.

This article is about my recent (and continuing) experiences with the Patent Office. I am taking the step of going Public because if you are an Independent Inventor you should know what may happen to you. It's also possible that you will get an Examiner who is tough, but fair. But with the massive hiring of new Examiners it is becoming less and less likely that you will.

Most of this information is in the File Wrapper but when I filed the patent application I did not elect Pre-Grant Publication so the application (and the File Wrapper) were not published, which means they were not accessible to the Public. I have since rescinded the request for non-publication but File Wrappers are not especially easy to access, and without an article such as this you would have no reason to access it.

I will be posting documents from the File Wrapper in their PDF format. When possible I will also post them in html format. Documents that I wrote started out in MS Word format but since you cannot rely on being able to read any particular MS Word document with future versions of MS Word I think html is a better way to preserve information even though the formatting might not match the original document.

The basis for my dispute with the Patent Office is that the Examiner (Chirag R. Patel) and his Supervisor (Rupal Dharia) insist on misinterpreting a prior art patent (U.S. Patent 6,167,428 issued to Ellis) and my application and asserting that my invention is the same as Ellis. Their actions are not the result of an honest difference of opinion unless you would consider someone looking at a completely Red piece of paper and announcing that it is Blue to also be an honest difference of opinion. Examiner Patel and SPE Dharia have also engaged in duplicitous behavior. At this point I believe that Examiner Patel (a newbie Examiner) is doing what SPE Dharia is telling him to do. Even so, Examiner Patel must take responsibility for his own actions.

Let's get started.



I filed a Provisional Application for Distributed Computing System on 11/17/2000.  (Here is some information on Provisional Applications:

On 9/6/2001 I filed the Non-Provisional Application. (Naming something by what it isn't is poor product placement. You should name something by what it is. The USPTO should call it a Regular Patent Application, or maybe a Real Patent Application, not a Non-Provisional Application.)

This is the Abstract for the Distributed Computing System. Note that the sole purpose of the Abstract is to provide search terms. It gives an idea of what field the invention is in and what it is about but it is not the legal definition of the invention.

Distributed Computing System


A distributed computing system uses the computing resources of Home Network Servers connected through the Internet, where the owners of the Home Network Servers receive something of value in return for access to their Home Network Server's otherwise unused computing resources. The contracting company may use these distributed computing resources itself or it may resell the resources to others.

Here is Figure 1.

Here is the complete Application (with Drawings) in html format:  dcs_appl.htm.

The following are in PDF format and were downloaded from the File Wrapper:

Application Specification as scanned by PTO:   fw_spec.pdf

Application Drawings as scanned by PTO: fw_dwgs.pdf

Information Disclosure Statement By Applicant (IDS):  dcs_ids.pdf

     Non-patent IDS references:  dcsrefs1.pdf

Wholesale Computation,   by Paul Wallich, Scientific American, November 2000, page 42.

As We May Live,  by W. Wayt Gibbs, Scientific American, November 2000, pages 36, 40.

Internet data gain is a major power drain on local utilities by John Cook, Seattle Post-Intelligencer, Tuesday, September 5, 2000 (

I filed the application on September 6, 2001.

Here is the File History until it was examined. (The File History has the most current entry first.)

01-26-2005       Mail Non-Final Rejection

01-24-2005       Non-Final Rejection

11-18-2004       Case Docketed to Examiner in GAU

06-16-2004       Case Docketed to Examiner in GAU

05-26-2004       IFW TSS Processing by Tech Center Complete

09-06-2001       Reference capture on IDS

11-12-2002       Case Docketed to Examiner in GAU

10-04-2002       Case Docketed to Examiner in GAU

09-06-2001       Information Disclosure Statement (IDS) Filed

10-23-2001       Case Docketed to Examiner in GAU

10-11-2001       Application Dispatched from OIPE

10-05-2001       Correspondence Address Change

09-14-2001       IFW Scan & PACR Auto Security Review

09-06-2001       Initial Exam Team nn

The application was docketed to five Examiners until it was examined in January 2005. From September 2001 to January 2005 is 40 months (3 years and 4 months). So much for the Patent Office's goal of issuing a First Office Action within 18 months of filing. Maybe they should start with a more realistic goal, like 36 months.

First Office Action

First Office Action (1/26/2005) [from File Wrapper]:  dcs_foa.pdf

Claims 1-5 were rejected under 35 U.S.C. 102(e) as being anticipated by Ellis (US 6,167,428).

The Ellis patent:

    Ellis 6,167,428 (PDF): 6167428.pdf

    Ellis 6,167,428 (html, no drawings):  6167428.htm

My Response to the First Office Action

My Response (4/21/05):  dcs_foar.htm

The PDF version in the File Wrapper: dcs_foar.pdf

In my response I referenced the First Office Action to Ellis's patent application (ellis_foa.pdf) and his response to the First Office Action (ellis_foar.pdf).

I started my response with a Summary:

Section 1.   General Summary

Claims 1 - 5 were rejected solely under 35 U.S.C. 102(e) as being anticipated by Ellis (US 6,167,428). Applicant will show that the elements “server” and “network server” used by Ellis are distinctly different from the term “home network server” used by Applicant and this difference makes Applicant's invention distinctly different from Ellis’s. Applicant will show:

1. The definition of Server as would have been commonly understood at the time Ellis's invention was made.

2. Ellis uses the terms Server and Network Server to mean the same thing.

3. Ellis makes a clear distinction between the PC User and the Network Provider (also called Internet Service Provider).

4. Ellis's financial arrangement requires that the PC User and the Network Provider be different entities.

5. Ellis's Server is part of the Network Provider, not the PC User.

6. Ellis has drawn a distinction between the Network Provider and the Internet. The Applicant has not drawn such a distinction.

7. Applicant acted as his own lexicographer to define Home Network Server.

8. Applicant's Home Network Server is distinctly different from Ellis's Server (Network Server).

9. Ellis's preference for a network architecture that physically clusters PCs together teaches away from Applicant's invention which teaches the value of having Home Network Servers located in widely different geographic areas in order to distribute the load on electric utility companies.

The issue is simple. I use the otherwise-unused resources of a Home Network Server for distributed computing, not a PC client's resources. Ellis uses the otherwise-unused resources of PC clients for distributed computing and does not show a Home Network server anywhere.

It should have been a slam dunk.

Second Office Action


The Second Office Action ( 6/15/2005) [from File Wrapper]: dcs_soa.pdf

The Second Office Action (6/15/2005) [OCR from File Wrapper; the FW PDF is the controlling document]: dcs_soa.htm

The Examiner insisted that Ellis' Network Server 2 is a Home Network Server and rejected all the claims again.

He made the rejection Final.

The Examiner stated, " Applicant's arguments filed for claims 1-5 have been fully considered but they are not persuasive."

While he may have considered them, he did not respond to them in his rejection.

Among other things, he came up with a new rejection that was not based on my having amended the claims (I didn't amend the claims) and was not based on new prior art. The Patent Rules say the Examiner is supposed to give the Applicant the opportunity to respond to new rejections under these circumstances.

He also came up with a novel definition of the term subscribing that is not supported by the way I used it in my application. I used the common meaning of the term.

Note that the Examiner asked another Examiner (Nabil El Hady) how to respond to my arguments. I would have expected him to ask his Supervisor for help, not another Examiner. (See elhady.pdf)

My Response to the Second Office Action

July 25, 2005

I called the Examiner on Monday, July 25, 2005. He refused to conduct or schedule a telephone interview. He refused to withdraw making the Second Office Action final. He refused to discuss the case at all. He said he did things only in writing. He said to send him a fax and he gave me what he said was his personal fax number (571-273-7963). He said that sending him the fax would not trigger the $395 fee for filing a submission after final rejection.

When I started to ask him about appeals he refused to give me any information at all. After I explained that I was just asking about the procedure he was willing to confirm that I had until the 3 month statutory deadline to file a Notice of Appeal and then a two-month deadline to file an Appeal Brief.

This is the fax I sent him on the evening of July 25, 2005:     af_resp.htm (html)    af_resp.pdf (pdf)

I told him I would call him the next week to discuss it.

The next day (Tuesday, July 26, 2005) I called him to make sure he had gotten the fax. He said he hadn't. It turned out he had given me the wrong fax number. His correct fax number is 571-273-7966. (The last four digits are the same as his voice number.) He also, for the first time, characterized the fax as "talking points."

Since I had already spent several hours on the fax, and the fax was a complete answer to his rejection,  I sent the fax again. He called me later and left the following message on my answering machine: patel1.mp3

I called him on Wednesday, August 3, 2005 to talk about it.

He refused to talk about it again. He said to file an After-Final Response. When I protested his refusal to talk about it, especially after he had characterized the fax that he had asked for as Talking Points, he terminated the conversation.

An After-Final Response costs $395, which is the same as filing an RCE (Request for Continued Examination). Given his blatant unfairness and his refusal to follow the Rules, the only course is to file an Appeal.

In the Second Office Action:

1.  The Examiner failed to respond to the arguments I presented in my response to the First Office Action.

2.  The Examiner came up with a new grounds for Rejection that were not due to my having amended the claims (I didn't) and were not based on new prior art. He should have either issued that rejection in the First Office Action or given me the opportunity to respond to the new Rejection by not making the Second Office Action final.

3. The Examiner came up with a novel definition of the term subscribing to a service that is not supported by the way I used it in my application. I used the common meaning of the term as is clear from my application.

The Examiner terminated the proceedings prematurely and unfairly, refused my request for a telephone interview, and refused to withdraw making the Second Office Action final.

August 3, 2005

Afterwards (Wednesday, August 3) I called his supervisor, SPE Rupal Dharia (571-272-3880), got his voicemail, and left a message. It has been my experience that SPE Dharia does not answer his phone and does not return messages.

I called SPE Dharia's supervisor, Group Supervisor Jack B. Harvey (571-272-3896), with the same result. I called Mr. Harvey's supervisor, Group Director Peter Wong (571-272-2100), and spoke to one of Mr. Wong's administrative assistants.

I explained that, among other things,  Examiner Patel had issued a new rejection in the Second Office Action that was not based on my having amended the claims and was not based on new prior art. By making the Office Action Final he had unfairly deprived me of the opportunity to respond to the new rejection. I also explained that he had come up with his own definition of a term that was not supported by my application.

I told her that my attempts to contact his supervisor (SPE Dharia) had been unsuccessful because SPE Dharia does not answer his phone and does not return phone calls.

She promised to have SPE Dharia return my phone call. He never called me.

The next day I called the usual suspects again. Again, neither SPE Dharia nor Group Supervisor Harvey were answering their phones or returning their calls.

When I called Mr. Wong's office I spoke to another administrative assistant (Janine), who also promised to have SPE Dharia call me.

She actually did better than that. She had Examiner Patel call me.

Wednesday, August 3, 2005

I talked to Barbara in the Pre-Grant Publication Division about rescinding my Previous Nonpublication Request. I faxed Form SB36 to her the next day. PreGrant Publication is scheduled for 11/10/2005.

Friday, August 5, 2005

The conversation got off to a rocky start when I expressed my disappointment at his refusal to talk to me until I called the Group Director's Office to complain. I also summarized my Informal Response:

1.  In the Second Office Action he had failed to respond to the arguments I presented in my response to the First Office Action. He simply dismissed them and repeated his original rejections.

2.  He had come up with a new grounds for rejection that were not due to my having amended the claims (I didn't amend the claims) and were not based on new prior art. He should have either issued that rejection in the First Office Action or given me the opportunity to respond to the new rejection by not making the Second Office Action final.

3. He had come up with a novel definition of the term subscribing to a service that is not supported by the way I used it in my application. I used the common meaning of the term as is clear from my application. I went into more detail on that one.

He did not have any response to my charges.

After that, we had what seemed to be a productive conversation.

I explained in simpler terms what my invention was and how it was different from Ellis. He asked some questions that suggested he was finally understanding my invention.

He seemed receptive to my offer to amend the claims to say that "something of value" was "something of value from a contracting company."

For some reason, towards the end he felt it necessary to quote the sentence from MPEP 408 Telephoning Attorney:

" Examiners are not required to note or acknowledge requests for telephone calls or state reasons why such proposed telephone interviews would not be considered effective to advance prosecution."

As I found out later when I looked it up, he had taken it out of context. The complete paragraph says:

"Present Office policy places great emphasis on telephone interviews initiated by the examiner. For this reason, it is not necessary for an attorney to request a telephone interview. Examiners are not required to note or acknowledge requests for telephone calls or state reasons why such proposed telephone interviews would not be considered effective to advance prosecution. However, it is desirable for an attorney to call the examiner if the attorney feels the call will be beneficial to advance prosecution of the application. See MPEP 713.01 and 713.05."

I asked him if he had ever had a pro se Applicant before, and he said, "no." He also said that he had never even talked to an Applicant's attorney.

At the end he said that he didn't have the authority to negotiate but would arrange a conference call with SPE Dharia and do another search for prior art. The conference call was scheduled for Tuesday at 2:00pm (Eastern). While he didn't promise me anything he certainly led me to believe that we would be able to resolve the matter.

I thought this thing might have a happy ending. Naturally, I was wrong.

August 9, 2005

I received a call at 1:00pm (Eastern) from Examiner Patel explaining that the Primary Examiner would not be available at 2:00pm but would be available at 3:00pm. Then he called back to make sure I knew he meant Eastern Time. Since I wasn't expecting him to call so early I hadn't turned my phones on and found the messages on my answering machine. (patel2.mp3).

3:00pm (Eastern) came and went and they did not call. They finally called 3:30pm (Eastern). That's when I learned that this conference interview would not be with SPE Dharia. It was to be with Primary Examiner Frantz Jean, who was not a SPE. He was just a Primary Examiner in another group (Group 2151, Phone number 571-272-3937). He assured me that he had the authority to negotiate. I didn't ask when and why the switch was made or how much time PE Jean had spent reading the File Wrapper but my impression was that he was doing this interview cold, with no preparation.

That's when Examiner Patel turned into his Evil Twin. Perhaps he had talked to his friend, Examiner El Hady, again.

He said that he had only listened to me on Friday and had not changed his opinion about my invention. Basically, he had only pretended to have a serious interview.

He again advised me that he would only consider my arguments when I filed a Formal After Final Response ($395).

At one point PE Jean said that we were just going around in circles because he wanted to talk only about claims and I wanted to talk about Examiner Patel's insistence that my Home Network Server was identical to the Ellis Network Server NS2.

Examiner Patel kept insisting they were the same and I kept explaining how they were different and he steadfastly kept refusing to respond to my arguments.

He seems to think that saying, "No, they are the same," without giving any reasons is a valid response.

PE Jean was no help. He advised me to either file a Formal After Final Response ($395) or a RCE (also $395).

I explained that as long as Examiner Patel insisted that my Home Network Server and Ellis's Network Server NS2 were the same there was no point discussing the claims. PE Jean eventually agreed with my assessment.

He said he would work with Examiner Patel in writing the Examiner's Summary of the Interview and it would be posted to the FW in a few days.

I said I would file my own Summary as required by 713.04(b).

Examiner Patel and SPE Dharia have made a mockery of the Examination process and are a disgrace to all Examiners and their SPEs.

August 10, 2005

I faxed a complaint to Group Director Peter Wong.



His Administrative Assistant (Janinie) said there is a reorganization going on and Group 2141 will probably be transferred to another Director.

She said she would make sure Mr. Wong got my fax.

August 12, 2005

Examiner Patel has not posted his summary of our telephone interview of August 5 to the FW.

Examiners Patel and Jean have not posted their summary of our telephone interview of August 9 to the FW as they promised.

Faxed my Applicant's Summary of Telephone Interview with Examiner Patel for Friday, August 5, 2005. I included my Informal AF Response to get it into the FW.


sum1fax.pdf (with Informal AF Response)

August 19, 2005

Examiner Patel has still not posted his summary of our telephone interview of August 5 to the FW.

Examiners Patel and Jean have still not posted their summary of our telephone interview of August 9 to the FW as they promised.

My summary of the August 5 interview is in the FW along with my Informal AF Response.

I filed my Applicant's Summary of the August 9 Interview.



Here is the Examiner's Summary of the interview. It appeared in the File Wrapper later on after several other events had occurred so the Examiner had the benefit of seeing my summary (and other stuff) first.


August 22, 2005

Since I had not heard from Group Director Wong I called Janine to ask if he had gotten my fax. All I got was the Group's voice mail.

I called the Telephone Center who transferred me to Mr. Wong's private line, a number they do not give out.

Amazingly, he answered the phone.

He said he hadn't gotten the fax but would look for it and call me the next day.

August 23, 2005

Group Director Wong did not call, but SPE Dharia did.

We scheduled a conference telephone interview to include Examiner Patel for Thursday August 25 for 10am Pacific which was changed a short time later to 9:00am.

I framed the issues as follows:

1.  The main issue is whether my Home Network Server is the same as Ellis' Network Server NS2. Unless that is resolved there is no point in discussing the claims.

2.  Examiner Patel improperly made the Second Office Action final by introducing a new rejection and by defining the term subscribing in a way that is not supported by my Specification.

SPE Dharia defended Examiner Patel by saying he had a substantial amount of engineering experience before he became an Examiner. I politely explained to Mr. Dharia why he is wrong.

SPE Dharia filed an Examiner's Interview Summary, so he apparently considered this an Interview. I thought an interview was when something of substance was discussed in order to advance the case.


There is a good chance that this will be another sham interview like this last one.

August 25, 2005

It was.


Here is the Examiner's Summary of the interview. It appeared in the File Wrapper later on after several other events had occurred so the Examiner had the benefit of seeing my summary (and other stuff) first.


One part of the summary is especially egregrious:

It was discussed that Ellis's definition of network provider included an individual and thus the definition of subscribe is the same as disclosure.

1. It was not discussed that Ellis's definition of network provider included an individual. If the issue had been brought up I would have pointed out that the individual/network provider still had to be different from the individual/PC owner in order for Ellis to be valid.

2. Ellis' definition of network provider has nothing to do with the definition of subscribe. The Examiner has used a non sequitur in a lame attempt to support an unsupportable argument.

Also August 25, 2005

I faxed a formal complaint to John Doll, Commissioner for Patents. (Unfortunately, the Examiner's Summary had not yet appeared in the File Wrapper so it is not mentioned in my fax to the Commissioner.)


September 1, 2005

I received a call from Wendy Garber.

They are taking my complaints seriously (maybe).

She said that Group 2100 is being restructured (Supervisors have been stretched too thin by the current structure.)

Harvey and Dharia have been told to return my phone calls if I call them. (I assume that applies to all applicants.)

She said she is sending me information on the Pre-Appeal process and recommended it.

She also said they are changing the way Examiners are trained by setting up an 8-month University. She agreed that using retired Examiners to help train the newbies is a good idea.

September 6, 2005

I waited eagerly for the mail. Finally, it came.

The material Ms. Garber had promised to send me was not in it.

I filed the Notice of Appeal (with a check for $250) along with the Pre-Appeal forms and the 5-page Pre-Appeal Brief.


I am holding off going public for now. They promise a maximum of 45 days to respond to the Pre-Appeal Brief.

If it begins to look like this is a delaying tactic on their part I will go public immediately.

What did come in the mail was the Examiner's Summary for the Telephone Interview of August 25.

If all you had to go on were the Examiner's Summaries you might think they were being perfectly reasonable. If you had been part of the telephone interviews you would wonder how anyone could be so clueless and/or evil.

Today is the four year anniversary of when I filed the Patent Application (09/06/2001) which was five days before September 11, 2001.

September 17, 2005

Today I received a letter from Mr. John Leguyader, Executive Assistant, Office of the Commissioner for Patents.


The letter is dated September 13 and is postmarked September 14.

It contained a lame defense of the Examiner's actions.

It also contained instructions for filing a Pre-Appeal Brief.

If he had read the File Wrapper he would have known I had already filed one.

He would also have known that my deadline was September 15.

Either way, his "help" was worthless.

Naturally, I sent him a response to let him know I was disappointed with him.


October 27, 2005

The File History contains two new entries:

10-27-2005 Mail Appeals conf. Proceed to BPAI
10-26-2005 Appeals conf. Proceed to BPAI,

I called the PTO Help Desk to ask what it meant. They didn't know.

They transferred me to the Inventors Assistance Center. They didn't know.

They transferred me to the Board of Patent Appeals and Interferences (BPAI). They didn't know, either. It seems that Pre-Appeals are not handled by BPAI.

October 30, 2005

The result of the Pre-Appeal Conference has appeared in the File Wrapper.

2.  Proceed to Board of Patent Appeals and Interferences — A Pre-Appeal Brief conference has been
held. The application remains under appeal because there is at least one actual issue for appeal. Applicant
is required to submit an appeal brief in accordance with 37 CFR 41 .37. The time period for filing an appeal
brief will be reset to be one month from mailing this decision, or the balance of the two-month time period
running from the receipt of the notice of appeal, whichever is greater. Further, the time period for filing of the
appeal brief is extendible under 37 CFR 1.136 based upon the mail date of this decision or the receipt date
of the notice of appeal, as applicable.

X The panel has determined the status of the claim(s) is as follows:
Claim(s) allowed: _____.
Claim(s) objected to: _____.
Claim(s) rejected:      1 -  5   .
Claim(s) withdrawn from consideration: ______

Here is the compete action: pares.pdf

Note that there is no explanation of their action. As I suspected, the Pre-Appeal Conference program is a sham and totally worthless.

All they have done is to waste more of my time and piss me off that much more.

In other news, Examiner Patel has still not posted his summary of our telephone interview of August 5 to the FW.

This article went live today.

November 17, 2005

My Application was published today as Pre-Grant Publication US 2005-0256938.

Normally, a patent application is published 18 months after filing unless you want it published sooner or you do not want it published at all. See 37 CFR 1.211 Publication of applications

There are advantages and disadvantages either way.

When I filed this application I elected not to have it published, but when it became clear that it was not going to issue as a patent anytime soon I filed the appropriate form to have it published. The people in Publications have always been very helpful to me; even so, I am impressed that it was published this soon.

One of the things that comes with Pre-Grant Publication is that it opens up the prosecution file to public inspection. You don't have to wait for the patent to issue; you can actually see the case as it progresses.

You can access published applications through the Public PAIR site

Since you cannot link directly to the file, go to the above link and enter 09/947,801 as the Application Number.

Now you can see how the Official Story might give you a different impression of how the case is actually going.

Note that only the Image File Wrapper lists items according to the date they were received. The order in which they appear in the Transaction History does not follow any pattern that I can discern.

If you use the Patent Database for Published Applications remember that these are only Applications.  Some have become issued patents. Some will become issued patents after they are examined. Some will be abandoned, but not this one.

November 17, 2005 (continued)

I filed the Appeal Brief today.  dcs_abrief.htm

If you want to know how it turns out, come back in about two years.

January 29, 2006

On January 20, 2006 the Examiner filed a response to my Appeal Brief.  dcsa_x1.pdf

He gave me so much great material to work with that I hardly know where to start my response to his response.

I think I will start with him having misquoted my Appeal Brief on an issue of merit.

The downside to filing a response to his response to my Appeal Brief is that under MPEP 1208.03 Reply Brief the Examiner can reopen prosecution of the case which would apparently terminate my Appeal. Given the Examiner's past intransigence in advancing the case there is no reason to believe that reopening prosecution of the case would serve any purpose other than to deny me the right to an Appeal.

I have almost two months to work on my reply. Stay tuned.

March 16, 2006

I filed my Response to the Examiner's Answer to my Appeal Brief.

If you have a U.S. Patent or plan to get one, I suggest you read my Response. How my case turns out may affect how your patent will be interpreted.

dcs_myresponse.htm    (html format):

dcs_fw_rp.pdf                (pdf format from the File Wrapper)

I filed this response using the new Web-based Electronic Filing System (EFS-Web) where you simply tell it what you want to do and attach PDF files of the documents you want to file.

Even though this is the first day it was available for general use it worked really well. (It's been in beta testing for several months.)

By all accounts the previous EFS system was just horrible. The new system is great.

I want to thank Carl Oppedahl of Oppedahl & Olson LLP ( for all the hard work he did working with the USPTO Electronic Business Center ( in coming up with this new system. Carl has also spent a great deal of time helping people with the old EFS system; I wonder what he is going to do with all of his newly-free time.

One thing about the new EFS system is that it works best with PDF files that are purely graphic images of the text. PDF files that contain fonts can be a problem if the EFS system does not recognize the font.

The consensus is that the best way to produce a purely graphic PDF file is to use CutePDF (

I used a very old version of Paperport that came with my (now very old) HP-5P Scanner. I can "print" almost anything to Paperport and then export it as a PDF file. While it is in Paperport I can add annotations, draw simple figures, and do some basic cut-and-paste operations.  As I recall, Adobe sued Visioneer (who owned Paperport at the time) and forced them to remove the PDF capability. Later versions of Paperport will export in PDF format only if you have the Adobe PDF Writer.

BTW, another reason for reading my response is that it contains two words that have probably not been used in a Response before. (I'll let you figure out which ones.)

April 17, 2006

On April 11 (or thereabouts) an entry appeared in the File History:  Reply Brief Noted by Examiner.

On April 13 (or thereabouts) an entry appeared in the File History:  Mail Reply Brief Noted by Examiner.

A few days later the action appeared in the File Wrapper. It says:

Reply Brief Noted

The reply brief filed March 16, 2006 has been entered and considered.  The application has been forwarded to the Board of Patent Appeals and Interferences for decision on the appeal.

The scan of the page chopped off part of the top so I waited until I received it in the mail so I could scan it myself.

Here is the action:  dcs_rpnoted.pdf

Note that while SPE Dharia signed it, Examiner Patel did not. (I don't know if that means anything.)

In any event, barring any more surprises, the case is finally on its way to BPAI.

I have been told that it takes BPAI anywhere from six months to two years to review a case. A lot can happen in two years. In two years the World could be a very different place than it is today.

October 11,  2006
On Thursday, August 24, the following two entries appeared in the File History:

    8-24-2006     Mail BPAI Decision on Appeal - Affirmed
    8-24-2006     BPAI Decision – Examiner Affirmed

The decision appeared in the Image File Wrapper the next afternoon.

Here is the PDF version created after scanning the paper copy that was mailed to me:  dcs_bpai.pdf

Here is an html version made by using OCR (the PDF is the controlling document):  dcs_bpai.htm

Not only did BPAI completely affirm the Examiner, they aimed a few well-placed kicks of their own.

They missed.

The next step is to go to the Court of Appeals For the Federal Circuit.

I mailed my Notice of Appeal on October 6, 2006. It was received by the Patent Office today.

I want to thank everyone at the Patent Office who made this possible, not to mention necessary.

A fronte praecipitium a tergo lupus.

Jed Margolin
Reno, NV (was San Jose, CA)

October 30, 2005        11/18/2005, 1/29/2006, 3/16/2006,  4/17/2006, 10/11/2006



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