PRESENTATION BY MR. R. LEWIS GABLE
WELSH & KATZ
MR. GABLE;:  Mr. Secretary, Professor Goffney, and Mr.
Fleming, I'm very pleased to have dug out of my garage this
morning and to be here.  My name is Lewis Gable.  I'm an
attorney with the law firm of Welsh & Katz.  We're an
intellectual property law firm.  And our offices are in
Chicago, and also one here in Arlington, Virginia.
I have practiced patent law for 30-plus year, specializing in
the preparation and prosecution of complex electronic and
computer and software-related patent applications.
I started my career in the Patent Office where for
approximately two years I examined patents while I was going
to law school.  I have practiced through the '70s when the
entire issue of whether computer patents, computer-related
patents, was patentable subject matter under 35 U.S.C. Section
101.
I have talked, and I have written extensively about the 101
issue, some of it with Mr. Fleming on many occasions, which I
have enjoyed very much.
I have chaired the Electronic and Computer Law Committee of
the American Intellectual Property Law Association.
My comments this morning are strictly for myself, and should
not be attributed to Welsh & Katz, or any association, or of
course the clients of Welsh & Katz.
I will focus on questions 2 and 6 of topic B.  Fundamentally
both ask how can the PTO improve the quality of its
examination?
Question 2 asks, how can an examiner measure the ordinary
skill of art?  And question 6, how can the PTO improve its
examination of novelty and obviousness?
It's apparent that these questions go right to the very heart
of the obvious determinations required by the Supreme Court in
their Graham decision.
My point this morning, my focus this morning, is that the
experience level of the average patent examiner is low.  And
that the lack of experience affects the quality of patent
examination.
This is true of all arts, but it is particularly true of
software-related inventions.  And that difficulty quickly
rises in that area because of the complexity of the technology
and the difficulty really to learn it.
The positive aspect of this problem is that there is perhaps
some rather effective solutions.  I do not want my comments
this morning to be interpreted that the people employed by the
Patent Office are unqualified.  My point is that it's very
difficult to become an efficient, effective, competent patent
examiner within the tenure that many patent examiners serve in
the Office.
The average years of experience has dropped significantly
since I joined the profession perhaps about 30 years ago. 
When I joined the Patent Office, my division -- at that time
there were no groups or art units -- was comprised mostly of
experienced primary examiners.  Many of them had 10, 20, even
30 years of experience.
As a novice non-primary examiner, all of my work had to be
supervised.  And my primary examiner was John Burns.  He had
two examiners besides myself to train.  He spent a lot of time
with me, and if I made a mistake in an office action that I
was about ready to issue, he told me about it.  If I had
missed a reference, he had the uncanny ability to go right
over to the shoe, and pick that reference out, and say, this
is where such and such a feature is shown.
He gained that experience because he had been in that art
unit, or that group, that limited number of sub-classes for a
very long time.  He supervised it.  He had supervised the
examiners that had examined in that area.  And he knew,
literally in detail, all the references at issue.  And that's
a great help in examining.
Then the ratio of inexperienced, non-primary examiners to
primary examiners was very low.  However, today that ratio
literally has been turned upside down.  Any time I now receive
a patent office action, one of the first things I do is to
turn to the last page, and to see whether the examiner that
signed was a primary or non-primary examiner.  And that gives
me a good idea of how good this action is going to be.
I rarely have a primary examiner examine my applications. 
When I go in to have an interview with the examiners in the
Office, one of the things I do is I walk up and down past the
Office of the examiner, and I count the number of examiners or
non-primary examiners, and the number of primary examiners. 
Often that ratio may be 9 or 10 to 1.
That ratio tells me something about the supervision that the
non-primary examiners who will receive from the SPE in that
particular art unit.
One patent that I had examined I think illustrates the
difference between experienced and inexperienced examiners. 
I had prepared and filed a very complex application involving
the application of artificial intelligence to setting up a
printing press.
The application had 100 pages.  There were at least 25 pages
of flow diagram.  The initial Patent Office action came back
with but a single rejection, and that was that the
specification was inadequate.  There was no prior art
rejection, no references cited.  And so it was time for me to
have an interview with the examiner.
And I found out that the examiner that I had gotten had six
months of experience, and that the application had come into
this art unit, this group, and all the more experienced
examiners really didn't want to take the time to examine it. 
So it ended up literally with the least experienced examiner
in the group.
I went to the supervisor, the group director.  And he
appointed a more experienced, a senior examiner, to help her. 
And the Office action that I got back was a very fine Office
action.  The references that were cited were even better than
some of them of which I was aware of.
COMMISSIONER LEHMAN;:  You're obviously very familiar with our
Office.  You've worked in it.  You've really worked very
closely with it.  And one of the things that concerns me
about, that I'm picking up on that is a real problem -- and
it's not just in the Group 2300, but I think because of the
pressures on Group 2300 it probably has a bigger effect on
it -- and that is our performance evaluation system in the
Patent Office basically is based on numbers.  It's pushing the
papers out.  You know, how many first actions do you issue? 
How many patents are issued?  And so on and so forth.
I can see why in that situation that you've just described the
more senior people see this, and there's sort of a pecking
order.  They want to get the papers out.  They want to get
that higher performance rating.  And they get a bonus if they
get a higher performance rating.
So naturally, the low person on the totem pole is going to get
stuck with the cases obviously that are going to be harder to
move out.  So in a sense, I think our system -- my impression
is that we may well have a system that pushes these harder
cases down the totem pole to the person that doesn't have the
seniority because those are the cases that take longer.
Do you have a sense that that may be the case?  Do you think
that that evaluation system that we have, that performance
system, needs to be looked at?
MR. GABLE;:  I think you understand the system quite well.  My
impression is that experienced examiners maybe at the 12, 13,
14 level may have as many what we call bogey, or to make per
week, maybe four, five, maybe six actions per week.  And if
you get, say, a very complex, lengthy patent application,
there is no way that you can approach that and get five or six
of them out in a week.
So at least where you have complexity and length of cases,
typically like you have in 2300 or 2600, there has to be
something done to permit people to achieve -- examiners to
achieve, meet their goals, and yet be realistic in terms of
the time that a particular patent application may be examined.
It gives me great pause -- and I'm going off of my talk a
little bit here -- that when you get to the higher levels in
terms of examiners, that they may have only eight hours to
examine a very complex examination, much like the one I put
in.  And in that eight hours, you have to read 100 pages,
maybe review 40 claims.  Then you go to your shoes where you
keep your prior art, search that, come back, evaluate that,
make the critical comparisons that you do in patentability
between what is taught and what is not taught.  And then, does
that rise to the level of unobviousness?
And then you write up a report that conveys all of these
determinations.  You do this in eight hours, and it becomes an
Herculean if not an almost impossible task.
COMMISSIONER LEHMAN;:  I don't think we can underestimate the
importance of this problem.  This is our fourth day of
testimony where people are saying that we're issuing patents
when we haven't caught all the prior art.  And I think you're
pinpointing one of the reasons that that takes place.
Even though it wasn't part of your prepared statement, I think
this little colloquy and dialogue in terms of identifying some
major issues is very important.
MR. GABLE;:  It's hard to set limits on doing a good job.  It
depends -- it's so particular to a given application and also
to a given technology.
COMMISSIONER GOFFNEY;:  I'd like to ask one question about the
quality level that you find in the more experienced examiners. 
Is that manifested in 103 rejections?  Has that been your
experience?
MR. GABLE;:  Yes.  My particular complaint is that with the
younger examiners the art that is cited, the patents that are
cited, many have very little relevance to the invention that
you're claimed.  I come away and I think many of my colleagues
come away, with the idea, was the invention understood?  How
could someone cite this reference back?
I'm not talking about the situation where we disagree, where
we're hassling and bargaining with each other with regard to
the questions, is this sufficiently different, so that it will
be obvious and you can allow this claim?  The question is, is
this reference, or are these sets of references really
pertinent or even in the same ball park?
And it's not surprising, particularly with young examiners,
you come into a particular area of the technology, and you try
to learn it.  I would say the first six months, maybe a year,
is a real struggle, particularly in the very complex
technologies.  And you could have a EE degree or you could
have a computer science degree, and you will not know the
details of the technology, of the software, of the hardware,
that may be involved in what you're searching.
So it's just a struggle until you know that.  You learn this. 
It's surprising.  If you've been there two, three, four, five,
ten years, you know, you've read, you've examined yourself all
these references so that the problem of searching is much
easier.
If I know maybe -- literally you get to know a couple of
thousand patents.  And so, when you see this in an application
in front of you, you have probably a very good idea of where
the basic references are, you know where the various features
are.  And so you can short-cut a good part of the process by
just going and picking up maybe five, ten references.  And the
examination moves on.
Otherwise, if good references are not cited, you're spinning
your wheels.  You have to respond and point out that this has
very little relevance to the invention.
Typically what I've had to do is say, well, look at these
references over here.  These are really much more pertinent,
and try to move the prosecution on so that we can get to the
issues of 103 and 102 and maybe 112, first and second
paragraphs, and really deal with what is the substance of what
an examination should be about.
The difficulty with the younger examiner is that we don't
really get to the issues.  And as I said, I'm not criticizing
the examiner.  I mean, these people are well trained, they
have good degrees.  They just have not been there long enough
to absorb and know the technology thoroughly.
COMMISSIONER GOFFNEY;:  Now, just one further question.  I can
see how that might be the case with the experience with the
technology.  But I'm curious about the legal rationale that
you might get from the examiners.
MR. GABLE;:  Of course, most of it is in terms of what the
art -- I mean, the fundamental question of obviousness depends
upon a critical evaluation of the references.  And of course,
then you define the difference.
If you don't have good art to begin with in your rejection,
regardless of whether you say it's obvious or not -- in other
words, your legal conclusion -- it has no basis.  And you may
write that down very nicely on the Office action, but it makes
no sense to the person reading it trying to respond to it.
One of the other things you mentioned was some of the legal
determinations that you make.  Particularly in the 2300 area,
one of the most difficult ones is a 101 determination.  There
are perhaps maybe 40 to 50 relevant decisions.  I think it's
easy to say, and I think Mike would confirm this, that there
are no bright lines.  It is an extremely complex decision.
I find particularly with the younger examiners that, when they
give a 101 rejection, they really have not done it within the
confines or in accordance with the guidelines the Patent
Office sets out.
That is not because of any lack of training on the part of the
Office, because I know Mike is involved in extensive programs
on 101 issues within and without the Office.  But it's a
problem of just, having dealt with these very complex issues
over a sufficiently long time to absorb and to know very
intimately maybe 10 or 15 cases, and to apply, and to know how
to apply them to the claims and the facts.  It's tough.
When the ratio of non-primary to primary examiners is high,
it's difficult to adequately supervise all the novice
examiners.  Actions may come out, and I think they have, where
the SPE has to supervise 10 or more non-primary examiners. 
There is literally no way that the SPE in a particular art
unit can take a look at the work product, the Office actions,
that come across his or her desk, and to really have a good
feel for whether it represents a quality examination.
The Ps and Qs may be well stated, but the underlying very
complex decisions, which depend upon a grasp of what is
disclosed in the application and a grasp of what is disclosed
in the technology, may or may not be apparent until maybe
you've spent a couple of hours.  And simply the SPEs now do
not have a couple of hours for office action for each of their
nine or ten non-primaries.
My personal observations -- and a lot of what I've said so far
are personal -- are pretty much confirmed by some of the
personnel figures that have been provided by PTO, focusing on
the computer group 2300.  Right now there are approximately
160 examiners.  Of that total, 130 examiners, or over 80
percent, are non-primary examiners; 89 examiners of that
total, or over 55 percent, have less than two years
experience.
Appreciate that, if you don't have a primary authority, you
cannot issue yourself an office action or issue a patent.  So
your Office action has to be supervised by an SPE.  So what
you're looking at is the ratio of SPEs to the number of
non-primaries.  And the arithmetic is fairly simple.  There
are approximately on average in 2,300 10 non-primary examiners
for each SPE.  In some art units, there are as many as 14
non-primary examiners for one SPE.
The significance of this, as I've implied, is somewhat
discouraging and disturbing.  I believe it's impossible for a
single SPE to review the work output of 10 and perhaps 14
non-primary examiners.  These numbers also indicate that there
has been a massive examiner drain, particularly at the two or
three level.  I think when you say there's 55 percent with
less than two years experience, you can see that seems to be
a place when a lot of people are leaving.
After two or three years, the Patent Office pays these
non-primaries approximately $32,000 to $35,000.  And it's a
fact of life that firms and corporations can exceed that pay
significantly.
The problem is not so much with the primary or more
experienced examiners, because it seems that to some degree
the pay does catch up in later years, but the problem is that
most examiners don't wait around much past two or three years
to get to the higher salaries.
Thus the cycle continues.  An examiner comes to the PTO, is
trained for two or three years, and then he or she leaves.
Mr. Secretary, I heard your comments at the AIPLA and the IPLA
and I was very impressed with your efforts to reach out to the
examiner to make the work conditions and the work support
there better.  I certainly would encourage you to continue
that.  But I think you also have to look at the pay schedules,
particularly for young examiners.
I appreciated this time to come and talk with you this
morning.
COMMISSIONER LEHMAN;:  Thank you very much, Mr. Gable.  I
really thought that was very -- a little different perspective
than some of the other witnesses whose statements were very
valuable.  But I think you hit on some very practical issues
that we were aware were there, but I think you put them in
really sharp relief, and helped me a lot, and I'm sure
Commissioner Goffney to put them in sharp relief.  And we'll
go back and redouble our efforts to work on it.
MR. GABLE;:  Thank you.
COMMISSIONER LEHMAN;:  Thank you.
Next, Mr. John DeWald from the Prudential Insurance Company of
America.
I should add that if people have written statements, that we
would appreciate it if you'll make sure that Mike Fleming gets
them, it will help us a lot to make sure that we have the best
kind of transcript that we can have of these proceedings.
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