The Examining Groups reporting 12 months delay are on target with an established program for reducing pendency to first action and such achievement demonstrates that the schedule of the established program is attainable. Production reports indicate that the Examining Groups have the productive capacity to materially reduce the reported delays to first action. For example, on June 28, 1969, there were reported 92,236 new applications docketed in the Examining Groups. During FY 1970, actions were given on 115,561 new applications. While a number of new applications filed subsequent to June 28, 1969 had authorized "Special" examination status and were properly taken up for action, it appears there should have resulted significantly larger reductions in the maximum delays to first action than were reported on June 30, 1970. Docket activity reports indicate that in many Examining Groups there are substantial spreads between the filing dates of the oldest new applications awaiting action. On June 30, 1970, the spread is as high as eight (8) months. It appears that a reduction of this spread by concentrating on the oldest filed new applications would rapidly result in significant reductions in the reported maximum delays to first action. It is worth noting that the aforementioned Examining Groups reporting only 12 months maximum delay to first action are operating with less than a one (1) month spread between the filing dates of the oldest new applications. Accordingly, a further subordinate goal is established as follows: 6. (To follow the 5 Subordinate goals noted above). Dockets should be adjusted to assure new applications are taken up for action with no more than a two (2) months spread with respect to filing date. In order to attain a normal 18 months pendency, it is desirable to reduce the overall backlog of pending applications by initiating and terminating the examination of applications at a rate exceeding the rate of receipt of new applications, leads to additional subordinate goals as follows: 7. (To follow Subordinate goals noted above). First actions should exceed receipts of new applications as indicated by the assigned Group first action goal. 8. Disposals should exceed receipts of new applications as indicated by the assigned Group disposal goal. The above noted primary goal and subordinate goals do not reserict the authority of the Directors to set additional goals consistent with the overall goal of normally disposing of an application within 18 months from the date the application was filed. PROBLEM SITUATIONS You are aware that a number of positions throughout the Patent Office are filled by detailing examiners to those positions for limited periods. This practice has been incorporated in the Career Development Program as details to many positions provide the examiners with a wider knowledge of the overall operation of the Patent Office. If an examiner is selected for one of these details the Supervisory Examiner and Director should cooperate with the Program. However, if too many examiners are selected for details from one Art Unit or one Examining Group for concurrent details this situation should be called to the attention of the selecting official with a view of deferring a detail to a future date. Currently there are in progress a number of Information Retrieval Projects, some of which have been developed by the Patent Office and some have been requested by foreign Patent Offices under the ICIREPAT Program. The manpower for these projects is being supplied by the Examining Groups on the theory that the project will on completion assist the examiners in searching for prior art. RICHARD WOODBRIDGE, PO. 1142 Years ago an ancient Greek innkeeper by the name of Procrustes invented the ultimate reference stretcher. He would torture his victims on an iron bed onto which each unfortunate was made to fit exactly. To insure this perfect fit Procrustes the Greek would stretch a victim if he were too short or cut his legs to size if he were too tall. To this garret entrepreneur the English language is indebted for the adjective "procrustean", which is defined by Webster as being "marked arbitrary and often ruthless disregard for individual differences or special circumstances." • Examiner, Art Unit 254. Thanks to the typewriter, secretaries, Ballerina ballpoints and modern technology in general it is now possible for the present day examiner to stretch his or her rejection into a length adequate to cover any first action examining situation. However, in a recent step backward into antiquity, the administration reinvented the modern equivalent of the procrustean bed-the new first action form PO-1142. The most obvious shortcoming of PO-1142 is that it does not provide sufficient writing space in which to make the rejection. The space designated for identification of references, analysis of the application, application of the reference to the application conclusions as to obviousness, supporting reasons, indefiniteness, misdescriptiveness, general observations and comments, etc., is a Lilliputian sized box one inch deep by four inches long. This box is surgically further subdivided into six lines each one-sixth of an inch high. While this space may be sufficient for the 102 "Chiness Copy" situation, it is more often than not inadequate for the average 103 or 112 rejection and totally failing in more complicated situations. Imagine, for example, the frustration of an examiner trying to reject an applicant on the basis of two or more references. His first step is easy, he writes: "It would be obvious to . . .". but then the examiner becomes seized with panic as he realizes that he has already used up one precious line and said exactly nothing. Feverishly his mind races for some simple way to abbreviate what he wants to say. What he writes usually comes out something like this: "It would be obvious to make a fluted FRISBEE like A with synchronized stabilizers like B (see FIG. 8A) and powered by solar cells like C" The lingering question begging to be answered is-WHY IS IT OBVIOUS? A few hints as to reasons may have been provided by reference to appropriate sections of the reference, but space is not provided in which to develop a full explanation of the sort rightfully expected from a professional grade employee of the United States Government. The examiner is left with the feeling that the administration is not interested in his opinion on patentability, but rather simply desires a quick search of the prior art in order to give the applicant something to define around. Understandably the examiner feels that his profes sional status has been undermined. Moreover, could you imagine the crisis in confidence that would ensue if Supreme Court Justices had to confine their opinions to the space afforded by a one inch by four inch rectangle? Brown v. Board of Education would be reduced to the area of four and a half eight cent stamps. Also, imagine the file wrapper record history upon which future litigants have to rely. One can just see a Supreme Court justice throwing up his hands in despair when he discovers that the initial paper of the record consists of several barely legible conclusions as to possible patentability, and little or no objective reasoning offered to support those conclusions. What can he hang his hat on. Not only is it difficult for others to understand the examiner, but is is often difficult for the examiner himself to reconstruct his thinking when confronted with the applicant's response to PO–1142. On at least one occasion a PO-1142 has been returned to the Patent Office with a request for clarifications and extensions of time to respond because the carbon copy was barely legible and did not lend itself to photoduplication. Many attorneys send a Xerox of the examiner's rejections to the applicant as a normal part of their operating procedure. Clearly the applicant is not impressed when he receives an unintelligible and clumsily lettered Xerox copy of a carbon copy of the examiner's communication. He paid at least $65 in filing fees and probably several hundred dollars to prosecute an application. and all he gets in response to his application is a third hand copy of a short order form filled with hen scratchings and hieroglyphics. Some attorneys are also annoyed by the practice of substituting letters for proper names on the new first action forms. It is difficult to make the transition from a PO-1142 to PO-892 reference, from a PO-1142 to PO-892 reference, etc., in order to translate a 103 type of rejection. This difficulty is exacerbated by the fact that the indefinite article "A" looks like the reference "A" in the context of a rejetion. The difficulty of reading a PO-1142 is frequently compounded by ballpoint pens that skip and poor impressions made upon irregular writing surfaces Such conditions lead to mistakes, and it is almost impossible to correct mistakes made in ballpoint in a space only one-sixth of an inch deep. Take the example of an examiner who has completely filled out his form, and then real izes he has made some error which requires rewriting part of his rejection. His choice is to scratch out his error and write over it, or to start another PO-1142 and do it all over again. If the rejection were made the old fashioned way the examiner, who usually writes on every other line, would merely cross out his error and write in the space between the lines. There are two types of situations in particular where the PO-1142 is difficult to use. First, a telephone restriction requirement contains a minimum of 150 words (at five letters per average word this equals 750 letters), and fresuently more. When a telephone restriction is combined with a rejection the number of characters to be squeezed into the PO-1142 increases accordingly. It is conspicuously obvious from the above that writing all this information in the meager space of a PO-1142, all the while bearing down sufficiently hard on your Ballerina ballpoint to insure an adequate impression, is no mean task. Frequently the rejection/restriction will slop over to another sheet. No matter how you look at it the PO-1142 just was not designed for this type of situation. Second, the PO-1142 just does not cut the mustard when it comes to pointing out gross informalities. For instance, what do you do when a pro se inventor comes into the mill and the specification is riddled with errors? Should you simply flip the applicant the old chestnut about getting "the services of an experienced patent attorney or agent", or should you point out the errors so that he may correct them himself? MBut where do you find room on the PO-1142? Or, what about a foreign application that does not conform to standard United States patent practice? Shouldn't the examiner point out major areas of concern? Or, what if an examiner gets a highly sophisticated case that has been floating around the Office because no one could understand it? If the case is inherently hard to understand shouldn't the examiner tell the applicant what things there are that he can't grasp? But-how can you do that adequately on a PO-1142? Again the PO-1142 fails the test of sufficiency. On March 1972 a memorandum was sent to all patent examiners concerning the "Abbreviated First Action Program". The memo suggested that the PO-1142 will be modified at some unspecified future date to include some extra distance between lines and that an additional line per box will be added. Even though this is a step in the right direction it is still not enough. Even twice as many lines would not make the PO-1142 satisfactory for anything more than simple 102 and 103 situations. Of course, the biggest problem remains, and that is that the PO-1142 is an inducement to quick and sloppy work. It is an easy way to help the examiner avoid his duty of fully and adequately explaining his rejection. That is where the cancer gnaws. The March memo also told the examiner that "when filling out the form, the examiner should keep in mind the importance of legibility, clarity, and completeness in setting forth his position." What a strange thing to say! Were it not for the administration's insistence on using the form there wouldn't be any "legibility, clarity, and completeness" problem in the first place. The examiner is not the one to blame for he is merely coping with the form as best he can. It is almost as if the administration were trying to wish away the very reasons that this form is a failure. The problem and solution are not as simple as that. As mentioned before, the PO-1142 is adequate for most 102 rejections and some simple 103 and 112 rejections. We do not suggest doing away with the PO-1142 entirely, even though it is definitely inferior in communicative ability to a personal letter. Rather, we would like to offer up some constructive suggestions that would improve upon the PO-1142's limited utility. First, and foremost, the PO-1142 must provide considerably more writing space both in terms of line height and line length. The administration should remember that few patent examiners will ever win a prize for penmanship. Many examiners look upon the task of writing a complicated 103 rejection on a PO-1142 with as much relish as if he had been asked to inscribe the Lord's Prayer on the head of a pin. Moreover, many sages through the ages have observed that it is often more difficult to write an abbreviated message than to write a long one. The PO-1142 should include enough space so that proper names can be used. Perhaps the administration would be more sympathetic to the attorney's plight if letters were used instead of names in amendments and appeal briefs. Second, an improved system must be found that allows the examiner to correct mistakes without messing up the original and the carbon copy. Perhaps the original could be done in dark pencil and then photoduplicated. The Journal would welcome any constructive suggestions you may have concerning PO-1142. 23-932 O-74-36 u.Sc. B/C 102 Axle assemblies of cach fixed to Tubular members (7ig 2 of B, Fig 4 of C) Obvious to extend auxiliary wheels of D(7191) Laterally As DvE+FiN E (p, 2, L 1-6). Also, obvious To provide vertically adjustable. wheels in D AS shown by F (7ig 3). Misdecriptive in U.S.C Claim sleeve within a member. Obvious to extend AuxiliARY objected to - depend fROM RE-, to 6 would be allowed if Amended specific hydraulic wheel Moving ARRANGEMENT. Recite the 6, cited to show aN ANALagous hydraulic wheel Moving MechANISM. Exhibit H TEXT OF AN ADDRESS BY HON. ROBERT GOTTSCHALK, COMMISSIONER OF PATENTS, U.S. DEPARTMENT OF COMMERCE, BEFORE THE PHILADELPHIA PATENT LAW ASSOCIATION, UNION LEAGUE, PHILADELPHIA, PA. ON MARCH 9, 1972 Introduction THE PATENT OFFICE IN A CHANGING WORLD I am very pleased to be here this evening and to have the opportunity to share with you some of my views concerning the Patent Office and the patent system, now and in the years ahead. I thought this topic might be especially challenge in the century to our national statute, our industrial strength, our nation. We know that the founders of this nation, with rare wisdom and foresight, provided in the Constitution for a patent system "to promote the progress of the useful arts." We know they were right-and that our patent system has made a tremendous contribution to the development of our country-to its industry and economy, its military strength, and the dignity and well-being of all our people. We know that we face today, at home and abroad, what may be the greatest challenge in a century to our national statute, our industrial strength, our standard of living, and our social progress. We know that our patent system can and must play a vital role in meeting that challenge. We know that the very heart and soul of a sound patent system lies in a sound and effective Patent Office-one which understands its mission and performs it well. Yet, we know, too, that the office today is not as sound or effective as it can and must be to meet that challenge. Where does this leave us? What do we have to do? How do we go about it? Where do we begin? By taking a hard look at ourselves-each of us. A long and careful look, analytical and free of bias, grounded in the experience of our history but free of its restraints and inhibitions-to see how we measure up-to see where we are falling short and to develop a sense of direction and purpose of urgency and need—of personal commitment, responsibility, and mission. In the Patent Office, we are doing just that. As did Janus-the ancient Roman God of all new beginnings-we are looking in more than one direction. We are looking to our past, as an aid to understanding the present, as a key to preparing for the future. We are looking outside ourselves, to the public we serve, the better to serve their needs; the nation and the world, the better to relate to the context within which we must function; and to the fast-moving changes in technology and trade, the better to keep pace with the demands they make upon us and the new opportunities they afford. And we are looking within, as well, to appraise our competence and performance; identify faults and failures; and ready our staff, our tools, our methods, our attitudes, and our will-for the tasks at hand and those that lie ahead. Service Operations Most of you realize that I have not come here to tell you that the Patent Office is operating smoothly and efficiently, and that all of our problems are behind us. It was in recognition of the many problems the Patent Office faced last fall that I asked a number of leading patent law associations throughout |