Mr. John Leguyader
Office of the Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Dear Mr. Leguyader.
This is in response to your letter dated September 13, 2005. I will try to make my comments brief.
1. In your letter you stated:
In your letter, you state that the examiner did not respond to your arguments in his Final
Rejection. However, a review of the final rejection mailed 6/15/05 shows that the examiner
addressed your arguments on pages 2-6.
In the Second Office Action dated 6/15/2005 the Examiner gave an incomplete summary of the arguments from my Response dated 4/21/2005 to the First Office Action and repeated his rejection. For example, from the Second Office Action:
1. Ellis does not show a Home Network Server. Ellis’s server 2 is part of the Internet Service Provider’s equipment and is not in the Subscriber’s home. As per section  in the application, applicant states: A Home Network Server is used in a home to network various clients such as PCs, sensors, actuators,and other devices. It also provides the Internet connection to the various client devicesin the Home Network.
Ellis does show a Home network server (Figure 2 item 2) and it does provide a Internet connection to various client devices (Figure 2 item 3) As far as the subscriber’s home, the Home network server receives the service from the PC. (Col7 lines 46-4 7) When a device receives a service, is interpreted by the examiner to mean “subscribing” to a service.
In my response to the First Office Action I did more than merely state that my Home Network Server is different from Ellis’ Network Server 2. I presented a number of arguments in support of my position.
The following is how I summarized one section
of the arguments I presented in my Response:
Summary of Applicant’s Response:
· The server taught by Ellis is part of the Network Provider’s equipment.
· Ellis draws a sharp dividing line between network providers such as internet service providers (ISPs) and PC users.
· Ellis’s financial arrangement requires that the PC User and the Network Provider be different entities.
· Ellis’s network server’s
computing resources are not the resources being traded by the PC User for
something of value such as Internet access. Instead, it is the resources
of PC User which are being traded.Applicant’s Home Network Server is part
of the subscriber’s system and is located on the Subscriber’s premises.
It is the resources of the Home Network Server that are being traded for
something of value, like subsidized or free Internet access.
I then spent several pages supporting my
arguments. The Examiner did not respond to any of my arguments. He simply
repeated his original rejection.
2. In your letter you stated:
You also believe that the Final Rejection was procedurally improper because it is your position
that the examiner instituted a new rejection. Comparing the rejection as made in the Non-Final
Rejection mailed 1/26/05 and the Final Rejection mailed 6/15/05, the two are verbatim identical.
Not only is the rejection verbatim, but in rebutting your arguments, the examiner set forth no
new line of rationale or interpretation different than that set forth in the Non-Final Rejection
mailed 1/26/05. Therefore, there is no new rejection and the second rejection was properly made
final in accordance with the Manual of Patent Examining Procedure (MPEP) Chapter 700,
section 706.07(a). Procedurally, the examiner is following current USPTO Rules & Regulations
as set forth in the MPEP.
Mr. Leguyader, go back to the example I just cited where the Examiner says:
As per section  in the application, applicant states: A Home Network
Server is used in a home to network various clients such as PCs, sensors, actuators,
and other devices. It also provides the Internet connection to the various client devices
in the Home Network. Ellis does show a Home network server (Figure 2 item 2) and it
does provide a Internet connection to various client devices (Figure 2 item 3) As far as
the subscriber’s home, the Home network server receives the service from the PC. (Col
7 lines 46-4 7) When a device receives a service, is interpreted by the examiner to
mean “subscribing” to a service.
Where do you see that in the First Office Action?
In the Second Office Action the Examiner
2. As such, its computing resources are not the resources being traded by the PC User for something of value such as Internet access. Instead, it is the resources of PC I which are being traded.
The Home Network Server (2) provides the services to the client, which is interpreted as something of value. Per the claim, “something is value” in claims 1 and 3is interpreted by the examiner as very broad and a variety of subject matter can read on this limitation. Applicant needs to be clear as claiming what the invention is.
Show me where the Examiner states this in the First Office Action. Besides, the Examiner misquoted my application which says “something of value.”
By introducing these rejections in the Second Office Action and making the Second Office Action final the Examiner denied me the opportunity to respond to it.
Of course, now that I have had three telephone interviews with the various Examiners who seem to be involved in this case it might appear that I have had the opportunity to respond to these rejections.
Unfortunately, this is not the case.
Examiner Patel agreed to a telephone interview only after I filed a complaint with Group Director Peter Wong. In that interview (8/5/2005) Examiner Patel gave every indication that he understood my Home Network Server was different from Ellis’ Network Server 2. Why else would he schedule a telephone interview with his supervisor (SPE Dharia) who had the authority to negotiate the case? If Examiner Patel had still believed my Home Network Server was the same as Ellis’ Network Server 2 there would have been nothing to negotiate.
In that second scheduled interview (8/9/2005) SPE Dharia was a no-show. His place was taken by an Examiner who was unfamiliar with the case and Examiner Patel denied the substance of the 8/5/2005 interview.
Note that Examiner Patel has yet to file a summary of the 8/5/2005 interview.
In the Examiners’ Summaries that have been filed they have had the advantage of reading my summaries first. Although the File History shows a different order, the true order is shown in the Image File Wrapper that lists them according to the Mail Room Date.
The Telephone Interviews of 8/9/2005 and 8/25/2005 followed what has become a familiar pattern. The Examiner refuses to address my arguments, simply repeats the rejection verbatim, and advises me that he will consider my arguments if I file a formal After-Final Response.
3. In your letter
Regarding the rejection in your application over the Ellis reference, it would appear as if you and the examiner have reached an impasse. You express displeasure that your only option at this point is to take the application through the appeal process.
If you were to give an Examiner a completely-red piece of paper and he insisted it is blue you might express displeasure, too.
Mr. Leguyader, is this how you treated
Applicants when you were an Examiner? This is not a rhetorical question.
There is also the timeliness of your own response to consider.
On September 1, 2005 I received a call from Ms. Wendy Garber who said she was calling in response to my fax to the Commissioner. We had a very nice talk. At the end of the conversation she suggested I use the Pre-Appeal Brief Conference and was sending me information to help me.
As I outlined in my fax to the Commissioner my deadline for filing a Notice of Appeal was September 15 and, because I hate leaving things for the last minute, I had planned on filing a Notice of Appeal on September 6.
I decided to try the Pre-Appeal Brief Conference and spent several days writing it. I waited until the mail came on September 6, and because Ms. Garber’s promised material never arrived, I ran to the Post Office to send it. (I assume your letter is the letter she promised to send me.)
If you had checked the File Wrapper on this case you would have seen that I filed the Notice of Appeal and Pre-Appeal Brief on September 6.
My questions to you, Sir, are:
1. Why did you send me the information on filing a Pre-Appeal Brief when you knew (or should have known) that I had already filed one?
2. Why did you send me the information on filing the Pre-Appeal Brief when you knew (or should have known) that it would arrive too late for it to be any value to me? My absolute deadline for filing a Notice of Appeal and Pre-Appeal Brief was September 15; I received your letter on September 17.
(These are also not rhetorical questions.)
In conclusion, lest there be any doubt on your part, I am disappointed with both the content and timeliness of your response.
All it has done is to persuade me that the Patent Office is unable to deal with its own problems.
The workings of the Patent Office need
to be brought to the attention of American Public (especially the Independent
Inventors) and the Patent Office needs more supervision by Congress.
Cc: Ms. Wendy Garber, fax (571) 273-7308