to conduct a thorough search of the prior art.”). The MPEP also requires examiners to
identify all grounds of rejection in the first official PTO action to avoid unnecessary
delays in examination. Id. §2106(II) (“Under the principles of compact prosecution,
each claim should be reviewed for compliance with every statutory requirement for
patentability in the initial review of the application, even if one or more claims are found
to be deficient with respect to some statutory requirement.”). I note that this
requirement does not appear to have been here met.
Several amici curiae referred to the difficulties that the PTO has reported in
examining patents in areas where the practice has been to preserve secrecy, for
published prior art is sparse. The Federal Trade Commission recognized that the
problem of “questionable” patents stems mostly from “the difficulty patent examiners
can have in considering all the relevant prior art in the field and staying informed about
the rapid advance of computer science.” FTC, To Promote Innovation: The Proper
Balance of Competition & Patent Law and Policy at ch. 3, pp. 44 (Oct. 2003), available
at http://www.ftc.gov/os/2003/10/innovationrpt.pdf. However, this problem seems to be
remedied, for the PTO reported in 2007 that for Class 705, “[t]he cases the examiners
are now working on have noticeably narrower claims” than the cases filed in or before
FY 2000. PTO Report at 9. The PTO reports that its search fields have been enlarged,
staff added, and supervision augmented. FTC Report at ch. 1, p. 30. (“Since the PTO
introduced [these changes] the allowance rate for business method patents has
decreased, and the PTO believes that this decreased allowance rate indicates improved
PTO searches for prior art.”). If this court’s purpose now is to improve the quality of
2007-1130
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