New article by Jeff O’Neill, on IPwatchdog.com: “Visualizing Outcome Inconsistency”:

http://www.ipwatchdog.com/2018/10/31/visualizing-outcome-inconsistency-uspto/id=102810/

The article refers to how the likelihood of a grant of patent on any particular patent application is largely a function of which examiner is assigned to the application, perhaps moreso than the mere merit of  patent application. The uspto is striving to create greater consistency across its examiners, to eliminate the factor of mere luck.

[don’t want to read the article, but want to get it from the horse’s mouth? Then call me at 919-649-4218 or email dibecker@olivelawgroup.com].

With a very large standard of deviation in patent issuance, per examiner, O’Neill posits:

 

Possible reasons for the wide spread of grant rates include the following:

1. 1. Technology areas may have inherently different grant rates based on the difficulty of discovering an invention in a technology area.

hunting, fishing, weaponry, plant husbandry, animal husbandry, armor, soil compositions, and sporting equipment and games. You can imagine what my rejections looked like:

– No, you cannot patent fire. rejection under 35 USC 101, for claiming non patentable subject matter.

– No, you cannot patent an infinitely firing assault rifle. The blowback used to eject a shell is available to provide energy to a subsequent step or method, but the amount of energy is always less than the amount that was available at an earlier step. Irrespective of whether that energy is enough to drive a similarly repeating step, friction and entropy and heat all consume a partial amount, and the process will eventually come to a stop, sooner or later.  Rejection under 35 USC 112, not enabling to a person having ordinary skill in the art to practice the claimed invention, and under 35 USC 101, for lack of utility.

– No, you cannot patent basketball. rejection under 35 USC 102, for a lack of novelty in the claimed invention, over the prior art.

– No, you cannot patent a greenhouse that has a watering system which is driven by gravity fed rainwater exceeding a particular threshold of weight. Greenhouses are for plants, plants need water, greenhouses are outside and are in footprint exposed to rain, buildings exposed to rain can catch water in barrels or rooftop reservoirs, reservoirs are designed to spill if they exceed a certain volume or weight, release systems for irrigation can use weight as a trigger characteristic….rejection under 35 USC 103, because of a failure to demonstrate a lack of non-obviousness over the prior art in view of teachings in the prior art.

Rejections may have been more nuanced, and they were not without their own delays and significant number of steps, but the tangible nature of mechanical arts creates a certain degree of logic that can be readily accepted across a broad population of people, and particularly examiners and academically-competent mechanical engineers. And this is also true of what a typical allowance may have stated:

YES, you can patent a golf club which is combined with a fishing pole. That’s just wacky and there’s a lot of reasons to not do it. Not 102 (actually, I think there is a reference, but presume that there wasn’t, at the time of filing), and not 103, because the art lacks a reason to combine golf and fishing. For example, beyond the two activities being distinct in nature, as well as separately practiced (no one goes fishing at a driving range, and it is difficult to play a round of golf from a boat or a dock), the devices of the art are taught to behave differently. It is known that fishing poles are better performing when they include a significant amount of deflection and spring return characteristics per unit bending moment input, with a minimal amount of angular inertia. It is known that golf clubs are better performing when they carry very large angular inertia, and deflect to a desired deflection during a large swing, until a desired impact point, as well as to minimize spring back that might interrupt a user’s input of a driving or sustained loading force. … And even if it WAS a close call, but a legitimate reason for issuance, I could spell-out, fairly undebateably, my reasonable examiner’s reasons for allowance.

 

Compare that to examiners that were simply in “semiconductors.” That’s such a narrow realm, and one where all the solutions are in parallel and contemporaneously being developed, and especially by competing entities, and over a relatively momentary blip of an era, compared to the dawn of the wheel, that there really could be quite a debate at hand, about what is truly without anticipation or teachings that inform how to make an invention before the claiming of such an invention in a new application.

I veered a bit from the O’Neill article. Go read it!

Then call me at 919-649-4218 or email dibecker@olivelawgroup.com