[Patentpractice] Examiners failing to answer material traversed -- are you seeing this more in recent years?

[David Boundy]

 I observe that silent stonewalling by examiners has gone from rare to
common over 25 years.  Can you confirm my anecdotal observation, that I'm
not personally hallucinating?  If you have an example, can you email me one
or two papers (off-list)?  DavidBoundyEsq at gmail.com

*Background and why I'm asking.  *With a couple coauthors (Trujillo, Soucy,
Katznelson, Snowden) I am working on an article about ex parte appeals --
how to recognize "it's time," what you do during regulation time to make
appeal overtime successful, how to write a good brief, the perverse
incentives and blind spots for examiners and APJs that you have to work
around, how to set up for Federal Circuit appeal or section 145 in EDVa,
etc.  (Thank you especially to David Soucy who prompted the reevaluation
from just the mechanics of a good brief to a strategic end-to-end, to
Doreen for adding a life sciences perspective, to Ron Katznelson who has
some unique experience, and to Tim Snowden who added a number of wise
observations).  This will turn into a practitioner workshop at AIPLA in
Minneapolis in May.

Also Secretary Lutnick has expressed his displeasure at the delays in PTO
proceedings (we were certainly seeing it in business methods groups when I
worked for him 2007-2014).


*Are you seeing the same thing I am?  *A major topic of the article is how
to address examiners that simply ignore issues.  Silence/stonewalling makes
it *really* hard to appeal, because you can't tell what the issue is -- do
we disagree about claim construction, do we disagree about the content of
the reference, do we disagree about what law governs, do we disagree about
application of law to facts, or about something else entirely?  When the
examiner is mutely stonewalling, there's really nothing you can do.  No
matter how you jump up and down in your papers, phone the SPE, complain to
the T.C. Director, petition, there is NOTHING you can do to get a
silent/lazy/passive aggressive examiner who's just milking counts to engage
with an issue.  (note that every step in the chain, from examiner to SPE to
T.C. Director, gets evaluated by numbers of actions sent out -- as far as I
can tell, there is *zero* evaluation for quality/completeness.)

This morning, I realized that in the last two years, 2/3 of my allowances
have involved at least a pre-appeal.  100% of my appeal briefs are bottomed
on examiner silence.   20 years ago, you'd get a stonewalling examiner one
time in ten.  Now, at least for me, it's a solid majority of my
more-than-two-action cases.

Is my experience out of the mainstream?  Maybe not to confirm my numbers,
but are you seeing as clear and remarkable a trend as I am?  If this is a
real thing, I want to be able to say something about it in the article, and
that "it's not just me."

Do you have any observations / conjectures about why?  If you can send me a
couple examples, I won't broadcast serial numbers, but I'd like to have a
basis to make a generalized statement, that goes beyond a single person's
observation.

Thank you


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*David Boundy *| Partner | Potomac Law Group, PLLC

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