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Pecked to death by ducks April 29, 2016

Posted by Brian Schar in General.

You may be familiar with travel writer Tim Cahill; if not, do yourself a favor and read “Road Fever.”  (Full disclosure: I am not providing a link to Amazon because I make no money off this blog, nor do I aspire to.  You can cut and paste the title yourself into your online retailer of choice.)  “Road Fever” concerns an attempt to set a speed record driving from the southernmost road-accessible point in South America to the northernmost road-accessible point in North America.  It is also a fascinating window into how such adventures are planned and financed.  Cahill published another book, which is more of a collection of magazine articles he wrote, entitled “Pecked to Death by Ducks.”

Some file histories I was just reviewing made me think about that.  Personally, after I have exhausted all reasonable amendments in a case, and the Examiner just doesn’t want to listen, and I am 100% confident in my position, I will appeal.  Otherwise the needle never gets moved in that case.  The file histories I was just reviewing, however, are examples of endless RCE churn, and we’ve all been there.  Nonfinal Office Action -> interview -> tentative agreement that a particular amendment overcomes the rejection “but the search needs to be updated” -> Final Office Action -> interview -> tentative agreement that a particular amendment overcomes the rejection “but the search needs to be updated” -> new Nonfinal Office Action.  Some of these cases have pendencies approaching 10 years.

As averse as you may be to confrontation with an Examiner, at some point you just have to accept the fact that the case is never going to issue unless you appeal.  Sometimes the fault is the Examiner’s, sometimes the SPE’s, sometimes your own.  But you’ll never get off the merry-go-round if you don’t do something different in a case from what you’ve done before.  6 “minor amendments” in a row to overcome objections end up narrowing a claim a lot, and each of those amendments is another duck peck.

Also by way of full disclosure, I got pecked by a duck when I was a kid, and it hurt a lot.   I made the mistake up picking up its duckling and it responded by clawing into my back and pecking the back of my head quickly and repeatedly.  As Mama Duck no doubt expected, it had the desired effect of me dropping the ducking and running away.


1. Robert - June 20, 2016


I just wanted to know that’s great to see you blogging again recently. Your blog postings contain invaluable, first-hand patent prosecution insight.

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