PETE ANTONIAK

SOLAR SYSTEMS SOFTWARE

MR. ANTONIAK:  My name is Pete Antoniak and  I'm  a  professional
engineer.  I'm looking at the agenda today and see a lot of CEOs,
chairmans of boards, and lawyers, patent agents,  et  cetera.   I
see very few engineers and software developers.

COMMISSIONER LEHMAN:  You can probably help us a  little  bit  if
you just make sure that that mike you're talking into __

MR. ANTONIAK:  Can you hear me now?  Everybody?   Good.  You  see
very  few  engineers,  software developers. I develop educational
game software.  I also teach, consult and program for  others  in
order  to  supply  this software habit of mine.  For the past ten
years I've been making about a third as much of money  as  I  was
making  as an executive for GTE Sprint, and I do this because I'm
looking  for  the  big  payoff,  developing  the  great  American
software.

Approximately six years ago I started development  of  an  educa-
tional game concept that I thought was quite unique and I was to-
tally aware that nobody else had4e anything like I was  doing.  I
attended   a   seminar   up   in  San  Francisco,  I  believe  by
Prentice_Hall, in which I believe somebody  from  this  panel  or
somebody from the Patent Office gave a talk and encouraged people
like me to go ahead and get patents on our software.  I was  sent
some brochures and literature and it seemed like a fairly friend-
ly environment, I said, By golly, I'll do it.  I'm  the  type  of
guy that repairs my own car and so I went to it.

When I developed my program, and I can understand from people out
there that, you know, I'm a little naive in this, I wanted a pro-
gram that could make an educational game out of any type  of  ma-
terial,  any  subject, any grade level and any language. Particu-
larly I wanted a game that did not require the  need  of  a  key-
board,  no typing required. And I came up with a very interesting
concept.  My game  used  objects  on  the  computer  screen  that
represent  abstract ideas and concepts.  The player moves the ob-
jects around on the  screen  to  represent  their  relationships.
Th8ncept  I developed is simple, compelling and fun, and not only
was there no prior art, but even to this day,  and  this  is  six
years after development there still is nobody even doing anything
like I'm doing.  I have essentially no infringers.

I purchased and read the book called Patent It Yourself by  David
Pressman, which is kind of a bible in this industry of people who
are  inventors  like  me.  I  also  learned  that  David  was   a
fellow_member  of  Mensa, lived in San Francisco and for a fee of
seventy_five dollars a review, now one hundred, would  review  my
application.  I spent six months developing an application, writ-
ing and rewriting it.  He had about three or four times to review
it and I sent it in as a patent application.

My first office action came about six months later  when  all  my
claims  were  rejected  on the basis of prior art. Now anybody in
this business understands that this is very common.  I was  upset
at  the  time, extremely upset, but have since come to understand
that this is normal.  I can't complain about this as I was  told  by
somebody  in  the  Patent  Office,  this  is the way the game was
played.

However, what I can complain about is the fact that none  of  the
prior  art  had  anything  to do with computers. I was confronted
with such things as jigsaw puzzles, board games, card games,  and
classroom  wall  charts.   One of the prior art patents was a few
months short of one hundred years old.  I spent a great  deal  of
time  writing responses, and it was very frustrating.  It was un-
believable to me that anyone could even connect my  program  with
the  prior  art  that was being used.  I felt that there was some
kind of a logic gap between me and the examiner.  In the end  the
examiner  maintained that my arguments were not persuasive enough
and I got a final rejection.

I phoned the examiner, and during the interview it came out  that
she was a mechanical engineer, did not have a computer and didn't
know much about computers in general. She told me that her exper-
tise  was  in  games.  I presented a logical set of arguments@get
her to admit over the phone that the prior art she was using  was
absolutely not applicable to my claims.

She then stated that she was sure that there  was  something  out
there,  perhaps  in child development books or something that du-
plicated my computer game on a table, with three_by_five cards, a
pencil  and  perhaps  a  teacher  to  look over as a referee or a
judge. If she had the time she would find it. I said that a table
was  different  from  a  computer  in that a table could not know
where those three_by_five cards were, whereas the computer screen
did  and could do instant evaluation well beyond the capabilities
of a teacher.  She said that I should explain that if  I  was  to
reapply.   Well, essentially what I was doing defending an inven-
tion that didn't exist but only in her mind and which she  didn't
really tell me about.

She finally requested a different examiner. David  Pressman  also
advised  me  to request a different examiner.  He even made a few
derogatory comments about my examiner being young  and  expDnced.
This was the luck of the draw and I just had to live with it.

I resubmitted,  respectfully  requesting  a  different  examiner,
waited six months, and the first Office action came back, and you
guessed it, I had the same examiner. I went through another frus-
trating  round going back and forth.  I felt sometimes like I was
arguing with a brick wall and there was some  sort  of  a  hidden
agenda  that  no  matter what I said that I wasn't going to get a
patent.

After the final rejection the second time, I traveled to  Crystal
City,  had  an  interview with the examiner and her supervisor. I
arranged to use a computer store across the street from  the  Pa-
tent  Office  and  demonstrated  my  software.   I quickly became
aware, to my dismay, from the examiner's reaction to the program,
that  she  really  didn't  even understand what it was that I had
submitted, and more importantly how it worked.   This  was  moot,
however,  because  just prior to the demonstration her supervisor
had promised that if I were to resubmit again that  I  Hd  get  a
different examiner.

I resubmitted a third time, and again was rejected in the initial
office  action.  However, the tone of the rejection is different.
It was obvious that the new examiner had read the application and
understood  it.   He pointed out discrepancies in grammar between
the original application and the claims.   He  pointed  out  some
tactical  errors in the claims and he recommended ways to correct
things.  The prior art he introduced seemed more pertinent to the
claim and the invention.  I almost cried, not that I had been re-
jected a third time, but because at least I had someone whose at-
titude  was  not, "How do we get this guy out of here," but, "How
do we get this application in proper order to be patentable."

In the next two weeks I will submit a file  wrapper  continuation
and start Round 4. The last thing my new examiner told me, howev-
er, when I called him up, was that he is now under  pressure  be-
cause  of the Compton's fiasco, whatever you want to call it, and
that he'd probably be thLng a lot more  prior  art  at  me.   I'd
rather  take  a stoic attitude about my experience with my Patent
Office.  I'd like to say that an easy patent that  has  not  been
exposed to a lot of prior art is not a patent that would stand up
to a challenge; this has often been said, that if you get  a  pa-
tent too easy you may have a problem with it later on. However, I
believe that the type of prior art used in my case was so  nonap-
plicable  as  we go to the background, the experience of the exa-
miner, that for all intents and purposes I am starting over, hav-
ing wasted four years, many thousands of dollars in fees, approx-
imately eight man months of my time that I could have been  using
in development, in marketing a product.

My claims are not earth_shaking. They're not controversial.  They
only  protect  my program.  I will note that even though, and I'd
mentioned before, I haven't shown it to a lot of people, I'm  al-
ways  aware  of  what's going out there, I've yet to find anybody
that would be considered an infringer of my prodP  I'm  a  little
guy; I'm the inventor.  I'm the software_equivalent of the inven-
tor, and my bottom line in all this is that if the Patent  Office
is  doing  a good job __ I'm not recommending a lot of changes to
the Patent Office __ it's just if they're doing a good  job,  you
know,  I would __ I would probably have a patent right now, or at
least I would know I couldn't get a patent right now.  Right  now
I've  spent  a  lot  of time on absolutely, you know, nonsensible
things.  And I kind of consider, like when I took Latin  in  high
school,  you know, it's one of those things to give you some dis-
cipline.  I can certainly write a claim.  Jeez, you know,  I  can
do  very  well.   Matter of fact, as a member of the Software En-
trepreneurs Forum I even had a conference about a year and a half
ago in which we had the whole afternoon devoted to doing patents.
I brought in a patent agent and we discussed these  things.   I'm
pretty  much  up on it. However, I'd rather have a patent, rather
have the, you know, the rights thereto, thaTmay attain to.

Anyway, that's it, and that's my bottom line, and if I  have  any
time left, I can entertain any questions.

COMMISSIONER LEHMAN:  Thank you very much, Mr. Antoniak. I  would
just say that the patent system is not set up to be a pro se sys-
tem, and we have a lot of problems in that and we're here to help
solve those.  But part of being a good patent lawyer is to under-
stand the art of lawyering, and oftentimes that  involves  making
certain  that your claims are drawn in such a way that you get to
the right patent_examining group __ doesn't sound like  your  pa-
tent  originally  went  to  Group  2300 __ and that it get to the
right examiner, and I'm very sympathetic with  your  difficulties
that  you  had,  but  I think that when one attempts to bootstrap
their case and you try  to  do  brain  surgery  self_taught  that
you're  inevitably  going to run into some difficulties, that are
hard for us to try to address in the system.

MR. ANTONIAK:  Let me add that all along the way I  was  using  a
patent  agent  to  review eXthing I set in. First it was Pressman
and then it was a registered patent agent here in the Valley  who
has done software for the last twenty years.  I looked to the Pa-
tent Office like a pro se inventor.  In reality,  though,  every-
thing  was  checked and rechecked and gone over by a patent agent
who gave sound advice.  All along  the  line  they  were  saying,
"Yes.   This  is  definitely  patentable.  Matter of fact, what's
somewhat ironic is that when I submitted my thing to Dave  Press-
man the first time around, he said somebody else had also submit-
ted something that he said was  absolutely  not  patentable,  and
what  he  was  surprised was he sent it in and got a patent right
off the bat with very little problems.  I've run into that  indi-
vidual  because  it  turned  out  I know him anyway, and Dave was
surprised that mine had such a hard time getting a patent. Again,
the wording was right, everything was pretty much right, my logic
was right.

I think that the term pro  se  inventor,  you  know,  have  said,
"Okay, here's a catego240 this guy the, you know, the profession-
alism that you'd give perhaps a patent attorney who can  call  us
on  it."  Now that's my, that's my personal judgment on this, and
I could well be wrong, but this is an experience; a lot  of  emo-
tions and a lot of energy's gone into this, and __ you know, what
can I say?  I've been __ I've been to Vietnam and I've learned  a
lot from that, too. So.

COMMISSIONER LEHMAN:  Well, I'm sorry you had that difficulty and
I'm  hopeful  as a result of these hearings we'll get the problem
fixed. Thank you very much.

MR. ANTONIAK:  Thank you.

COMMISSIONER LEHMAN:  Next I'd like to call Mr. Robert  May  from
Ikonix Interactive, I believe.

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