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: Just a Patent Examiner

Office Action, Circa 1976

In 1976, the Office came up with the examiner production quotas that are still in place today. The quotas were designed to embody the amount of time that it should take a competent examiner to generate Office actions for an average application.

So, what was the typical examiner doing back in 1976 in order to generate that Office action?

Well, anecdotal evidence says that searching in 1976 involved choosing a few subclasses and looking through the shoes. No Internet, no on-line databases, and minimal sources available for non-patent literature searching.

Contrast that with today's searching. There is the capability for automated searching of the US patent database (and EPO, JPO, and Derwent), as well as many other on-line databases. Given the existence of the Internet, there are virtually endless places for today's examiners to search. More time spent searching, and lots more prior art to review and evaluate.

As far as the Office action itself (and I apologize for the small size of the images; you should be able to get a full-size version by clicking on the image)...

Behold!

Form PTO-326 Office Action Summary:

I didn't even bother with the PTO-892; it's pretty much the same.

But here's the interesting part...

Form PTO-1142 Notification of Rejection(s) and/or Objection(s):

If you are an examiner, you have to marvel at the simplicity of this form. The clean lines. Completely free of those pesky, extraneous non-essential details (well, that's what they thought in 1976...who am I to argue?). This is the entire statement of rejection and objection of a 1976 Office action. All of the rejections and objections. 101, 112, 102, 103, double patenting, all on this form. Think about the kind of production today's examiners could maintain filling out this form instead of writing out the kind of detailed action that is now required.

If you are a practitioner, you might say to yourself "Wow! It would suck to have to answer Office actions like that...", or perhaps even "Wow! It sucked to have to answer Office actions like that..."

In the interest of full disclosure, the MPEP also included the following:

"In exceptional cases, as to satisfy the more stringent requirements under 37 CFR 1.106(b), and in pro se cases where the inventor is unfamiliar with the patent law and practice, a more complete explanation may be needed. If necessary, a regular action, not using form PTO-1142, may be prepared."

So in the vast majority of applications, form PTO-1142 was used to convey the claim rejections to the applicant. Not only that, but the MPEP goes on to say:

"The prearranged paragraphs numbered 1-4 on the upper part of form PTO-1142 are expected to be adequate for all the claims that are subject to rejection and/or objection in most cases."

I would love to be allowed to use this form. It would be a huge time saver.

The Office decided in 1976 that examiners should only need to spend a certain amount of time to perform a prior art search that was pretty much limited to the shoes, and fill out a form PTO-1142. Assuming that those estimates were somewhat accurate (and the examiners back then weren't all slacking off), I'm not sure how that can possibly equate to today's examiners being able to search and evaluate the (vastly greater) available prior art, and prepare the much more onerous detailed Office action, all in the very same amount of time.

[Obviously, I wasn't examining in 1976; this is mostly derived from a reading of the MPEP of the mid 1970's. So if there is someone out there who was actually in the patent biz at that time, I'd welcome any corrections.]

Full post as published by Just a Patent Examiner on October 08, 2007 (boomark / email).