I held a contest and Apple wins–for having the patent with the largest number of cited prior art references (patents issued 2005-2021). Apple’s U.S. Patent No. 11,037,565 is directed to a version of Siri that works across devices – an “Intelligent digital assistant in a multi-tasking environment.” The total, 9,441 cited references — 3 of which were cited by the examiner. Apple.Patent.
Here is claim 1:
1. A non-transitory computer-readable storage medium storing one or more programs, the one or more programs comprising instructions, which when executed by one or more processors of a first electronic device, cause the first electronic device to:
provide a media output;
while providing the media output: receive a speech input requesting to continue providing the media output at a second electronic device different from the first electronic device;
determine, based on the speech input, whether to continue providing the media output at the second electronic device; and
in accordance with a determination to continue providing the media output at the second electronic device: cause the second electronic device to continue providing the media output by resuming the media output based on where the media output was previously stopped at the first electronic device.
The application claims priority back to a 2016 provisional application and has three additional family member patent already issued.
9,441 cited references?
Yet more Apple shenanigans.
The Patent Office should require that applicants — all applicants — identify no more than what the applicant believes to be the 25 most relevant references.
Hide-the-ball dumps greater than 50 – 100 items do not meet the duty of disclosure:
link to uspto.gov
+1
And what if applicant believes two references to be relevant and 4000 unevaluated references to be possibly relevant? Doing the work implicit in your requirement sounds like a genuine burden to me.
Two falls in the category of “no more than… 25… .” I do not see the burden that you perceive. The applicants’ duty of candor only obliges them to turn over the art whose relevance they know—not to go questing for even more relevant art. It seems to me that the correct response in the situation that you propose is to turn over those two, and then you are done.
That seems like a fair response to my (bad) example. I still am troubled by the idea of applicants needing to evaluate which references are most relevant if they have more than the 25 references.
The Patent Office should require that applicants — all applicants — identify no more than what the applicant believes to be the 25 most relevant references.
And what happens if the USPTO/Federal Circuit finds that’s the 27th most relevant reference should have been the 25th most relevant reference and since it wasn’t cited, the patentee loses the patent?
The number of patents being cited is patentee’s reaction to the Federal Circuit.
The number of patents being cited is patentee’s reaction to the Federal Circuit.
Agreed, which is precisely why the rule change that Pro Say proposed is necessary.
And what happens if the USPTO/Federal Circuit finds that’s the 27th most relevant reference should have been the 25th most relevant reference and since it wasn’t cited, the patentee loses the patent?
Yes, if the challenger can show that substitution of 27 for 25 is intended to hide the missing. If the challenger cannot make such a showing, then it will be just another failed inequitable conduct challenge.
Meh, the better rule is to scrap it, or just leave it as it is. You make matters worse by imputing that some distinction of possible references was undertaken.
The point from the courts was that examination is to be by the examiner — and THAT includes any such “relative importance” aspect.
Pro Say,
You might realize that if Greg agrees with you, that you might need to give pause to what you are saying.
Down below in relation to a teaching moment for Paul, I provided a link. Follow that link. You will see that OTHER listed “requirements” defeat the supposition that you provide.
It’s pretty much any open secret that examiners don’t review the references cited in an IDS, right?
They review every reference closely except the one killer reference the attorney sneaks in without comment in an attempt to avoid unclean hands.
I think it depends on what you mean by “review.”
If you mean thoroughly read the reference, your statement probably true.
If you mean reading the title, your statement is probably incorrect.
I agree with Ben (and did have to check myself).
“Review” is the operative word.
In today’s day and age of search strings, you might be surprised at the volume that can be “reviewed.”
From my own experience as an Examiner at the USPTO, I was instructed to do my own search and look for the overlaps between the references I found and references cited in an IDS. I did that but I also took a look at the figures and abstracts of all the IDS references. Then again, I was the type of Examiner who also read the entire written description and figures so that my Office Actions included specific objections to the written description and figures (for example, use of the same reference number for different parts or use of different names to identify the same part). These days, based on the rejections I see in Office Actions, I get the impression that Examiners who read the entire specification (and not just the claims) are a small minority.
I hope so. Proof reading background and boilerplate seems to me to be a poor use of time when there’s already insufficient time for a comprehensive search.
It’s not about proof-reading. It’s about reading the written description and having an actual understanding of the invention. Pointing out the mistakes in the specification found along the way towards that understanding is still part of the job.
The issue I’m taking is not with proof reading but with “entire.” In my art areas, the real description of the invention typically makes up about a third of the specification with the remainder being boilerplate and background describing things like the types of servers which the invention might be run on. Reading, checking for mistakes, and marking up those sections is a poor use of time that could have been better spent on a more thorough search.
Ben, I do hear what you are saying: that is, you have a limited amount of time allocated for examination. On the prosecution time, we have the similar issue: only a limited amount of time to respond to an Office Action. That doesn’t mean we shouldn’t be doing as complete a job in responding to the objections/rejections in the Office Action as possible and lots of practitioner go above and beyond because we are fighting for our clients. We expect Examiners to read the specification and understand the invention. Doing that results in a better search. If Examiners are not doing that, they are not doing their jobs (and explains why so many rejections demonstrate a lack of understanding of the invention). Even MPEP 904 recognizes that the search should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed. There are numerous times I’ve gotten Office Actions made final because with the Examiner giving the reason that the amendment required a new search when the response to the non-final was amended to include subject matter which the Examiner should reasonably be expected to have been claimed. Examiners aren’t complying with MPEP 904, but the time delays by the USPTO make it virtually worthless to try to petition the improper final or even the denial of an AFCP 2.0 because the additional search would take too long. It’s B.S.
“We expect Examiners to read the specification and understand the invention.”
Doesn’t at all address my point that much of the specification may be unnecessary background and boilerplate.
If you want to assume that every paragraph of every application is necessary to understand the application’s invention, I will agree that your point holds under that silly assumption.
“There are numerous times I’ve gotten Office Actions made final because with the Examiner giving the reason that the amendment required a new search when the response to the non-final was amended to include subject matter which the Examiner should reasonably be expected to have been claimed.”
Sounds like you’re another guy expecting their 25 cent cheeseburger to be 100% beef and have two pieces of cheese.
MPEP 706: “an examiner cannot be expected to foresee whether or how an applicant will amend a claim to overcome a rejection except in very limited circumstances”
I get that it’s natural for prosecutors to have this attitude, as you’re effectively a reseller of the cat-meat burger masquerading as a 100% beef burger. But I’m surprised that someone who previously worked behind the counter making cat-meat burgers would ever act like it was reasonable to expect all beef patties from that burger stand.
“Doesn’t at all address my point that much of the specification may be unnecessary background and boilerplate”
Which doesn’t at all address my point that it’s about reading the written description and having an actual understanding of the invention. If someone bothered with a Background post-Festo, it’s there for a reason.
“Sounds like you’re another guy expecting their 25 cent cheeseburger to be 100% beef and have two pieces of cheese.”
Let me throw that back at you: You sound like just another lazy examiner who can’t be bothered to abide by the MPEP even as they cite it against applicants.
“MPEP 706: “an examiner cannot be expected to foresee whether or how an applicant will amend a claim to overcome a rejection except in very limited circumstances””
And the portion of MPEP 706 preceding that refers back to MPEP 904 and reiterates that: A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings should not be made final if it includes a rejection on prior art not of record of any claim amended to include limitations which should reasonably have been expected to be claimed. See MPEP § 904et seq.
You’re right that the MPEP can be an empty joke and that it is too much to expect Examiners to actually do a quality job and not take advantage of all the end-runs and nonsense the USPTO packed into the MPEP in the years since I worked there. The emphasis has gone from the quality of the sausage making to the quantity of sausage made, and there’s no negative consequences for Examiners doing their job badly or just plain wrong.
So not only do you tell yourself it’s not your fault that you resell cat-meat burgers, you’re convinced that you didn’t produce cat-meat burgers when you were behind the counter?
I hope it’s nostalgic gloss rather than self-serving history rewriting (assuming there’s a difference), but the PTO has been a quantity over quality shop since the count system was implemented. If you made it past your probation period, you made cat-meat burgers too.
Ben is sadly one of those typical bureaucrats.
Blames others and thinks that everyone shirks their duties in order to self-justify the shortcuts that he takes (while STILL confusing internal metrics with what applicants have actually paid for).
You’re correct in the sense that there have always been Examiners who put quantity over quality and churned out low quality Office Actions to meet their production and Examiners have certainly learned to milk the count system for all its worth (there really needs to be a study of the rate at which Notice of Allowance are issued as the next action after filing of RCE). Even as an Examiner, I viewed the quality of my work product as a reflection of who I am professionally, and I put in a fair amount of VOT while at the Office to make sure my Office Actions meet my standards (then again, my SPE actually cared about quality). The same is true today with the specifications and Office Action responses that I prepare.
“There are numerous times I’ve gotten Office Actions made final because with the Examiner giving the reason that the amendment required a new search when the response to the non-final was amended to include subject matter which the Examiner should reasonably be expected to have been claimed. ”
Why would they use that as a reason to make the action final? Either it is final based on the amended language (or them just arguing unpersuasively) or it isn’t for me 99+% of the time.
“or even the denial of an AFCP 2.0 because the additional search would take too long. It’s B.S.”
Lol, the new “search” often takes longer than an hour in my cases to just “pick up the case” as it is called. Attorney’s act like examiner’s are going to pick up a case they worked on two months ago, read (often) 3x ind claims, understand them perfectly, and do a new search (even small one) in an hour or two. Lelz. AND be confident to allow the case. Hilarious. AFCP is for small time nothings, not getting in new substance (even that which lol “shoulda” been searched).
“You’re correct in the sense that there have always been Examiners who put quantity over quality and churned out low quality Office Actions to meet their production and Examiners have certainly learned to milk the count system for all its worth (there really needs to be a study of the rate at which Notice of Allowance are issued as the next action after filing of RCE). Even as an Examiner, I viewed the quality of my work product as a reflection of who I am professionally, and I put in a fair amount of VOT while at the Office to make sure my Office Actions meet my standards (then again, my SPE actually cared about quality). The same is true today with the specifications and Office Action responses that I prepare.”
Yeah it’s such bs, people killing themselves on the alter of “professionalismlol”. Professionalism was never supposed to be code for overworking people en masse.
“A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings should not be made final if it includes a rejection on prior art not of record of any claim amended to include limitations which should reasonably have been expected to be claimed”
This absolute bro, hilarious. I’m not even sure what they’re thinking is limitations which should “reasonably have been expected to be claimed” other than ones I specifically tell the applicant to claim. There’s always a thousand ways to try to amend apps before me, which one to “reasonably expect” is anyone’s guess, although I am able to tell sometimes myself what way will be best for them. Still, whether or not they will concede that amendment can never be reasonably expected as that you literally never can predict/expect 100% unless it’s tidying up a 112 issue etc. Which they apparently seem to acknowledge in that very paragraph. But even when I suggest and predict how to get over a 112 or tidy up some language, often that will just lead down a whole other rabbit hole of art and the ol spe doesn’t like me to do reference dumps. So they’re getting a final. And it’s often on art “not previously citedlol” as there is a gigantic pool of art which is applicable to their initial shotgun claim, and then there is a pool applicable to their claims if they go down one rabbit hole, and a pool available if they go down another rabbit hole (even if one of the rabbit holes is tightening up language to get around a 112).
Dropping all that art just clouds the prosecution in some cases as it’s a gigantic mountain. No reason to even cite it, it’s only applicable because the applicant drafted sloppy or super broadly (or both). Bottom line, I wouldn’t rely on that.
6 quips,
“Yeah it’s such bs, people killing themselves on the alter of “professionalismlol”. Professionalism was never supposed to be code for overworking people en masse.”
You are NOT “overworked” if you are merely working to your agreed upon (and Union-assisted) work levels.
Further, even THOSE work levels are not dispositive as to what applicants have paid for.
Don’t like that disconnect? Don’t make it into my client’s problem, but instead take whatever INTERNAL actions you need to.
Yes 6, this (yet again) resolves back to the fact You (the Royal You) agreed to those internal measures, and if you cannot do the job properly within those measures, then You need to do something about it — internally.
You cannot whine about “overworking” when you signed up for that from the get-go.
ipguy,
We may not always agree on patent law topics, but I will vouch that your professionalism DOES come through in your posts.
You are not one to play silly games or 1gn0re counterpoints presented to you.
For what it is worth, I value your contributions.
Thank you, anon. As you say, we may not always agree but even if we don’t agree on something, I still appreciate hearing your viewpoint.
Believe me when I say that I am far from perfect (just ask my wife).
I can understand Ben’s viewpoint, even if Ben and I don’t agree on the extent of an Examiner’s duties. When I was an Examiner, I saw a lot of work product from patent practitioners that was so appalling in terms of quality . I told myself that no Examiner would ever say that about my work product. At that time, the attitude at the USPTO was that applicants were our “customers” and that Examiners should be providing customer service. We even had a few hours of “customer service” training. I’m not saying it was a Golden Age, but the attitude was different, and my SPEs set high standards.
Examiners follow the lead of their SPEs.
Apple is far more often a defendant than a plaintiff. This patent’s claimed priority back to a 2016 provisional application and the 9,441 cited references IDS dump is presumably intended as a defensive prior art reference against later filed patents of others on other shared information on shared electronic devices, which can be used in an IPR? [Unlike unpublished software, or commercial devices themselves.]
… asking, or stating?
… and – I wonder – if you are (yet again) going to bypass the teaching lesson as to what it means — and what it does not mean when an applicant submits an IDS…
Anon, you are ignoring what I had already said when you first asked about what an IDS really “means.” That is, what it can do in some cases for defendants being sued on the patent. [Or, sometimes, for suing patent owners.]
[As opposed to examiners, who cannot possibly read all citations, and P&P practitioners for the vast majority of patents which are never asserted.]
“Anon, you are ignoring what I had already said when you first asked about”
That would be blazingly incorrect there Paul – You never answered the point that I put to you.
Need a reminder?
Here: link to patentlyo.com
What’s with the broken links?
A double bonus for me with YOUR choice$$
– inserting a false assertion into a random old thread in which you were not part of the conversation, and
– the false insertion itself.
Your old meme/tell of broken links is so evidently self-defeating that one has to wonder why in the world you would employ such a gambit.
So how much $$ were you paid to post? In US dollars. Be specific.
Thank you for proving my point – yet again.
So to paraphrase, as this post of yours is merely a mild alteration of what you so recently erred on:
This a primary reason why my enterprising works so well.
As to: “How much money did you make from your post …”
1) Yet again, I make nothing from MY posts.
2) Your view of my posts as “nonsense” is afforded the same level of veracity as the level of care that I give for your sense of my credibility.
As to: “A dollar (US) amount)”
The specific schedule of coin that I make from YOUR posts was shared with you over a year ago, in the fall of 2020. I am not going to look it up for you.
But I AM considering negotiating an increase due to inflation. My friends are wondering how soon it is that the cyber sta1 king aspect raises enough concern to the blog operators that they have another talk with you or simply shut you down. Last time the big cyber S was mentioned, you disappeared for several months.
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