Office of Enrollment and Discipline
Patent and Trademark Office (P.T.O.)
IN RE THE MATTER OF BERTRAM BOE
File No. E ---
August 17, 1992
Cameron Weiffenbach
Director, Office of Enrollment & Discipline
DECISION ON APPLICATION FOR REGISTRATION
*1 Bertram Boe [a pseudonym] (applicant) applied to practice before the Patent and Trademark Office (PTO or Office) in patent cases.
After a detailed consideration of the entire record developed to date, I am of the opinion that the evidence, developed by the inquiry conducted by the Office of Enrollment and Discipline (OED) and discussed in this decision, convincingly demonstrates that applicant does not possess good moral character required for registration to practice before the PTO. 35 U.S.C. 31; 37 CFR 10.7(a)(2)(i) and (b).
In this decision, OED Exhibits 1 through 8 correspond to Exhibits 1 through 8 in the Order To Show Cause dated [date deleted]. OED Exhibits 9 through 22 are new to this decision.
BACKGROUND
1. Applicant was employed in the PTO as an assistant patent examiner. In the position of assistant patent examiner, applicant was responsible for examining patent applications and formulating an appropriate Office action with respect to the grant or denial of a patent to a patent applicant. Preparatory to formulating the action, it was necessary that he (i) analyze the disclosure and claims in an application for compliance with requirements of 35 U.S.C. 112, (ii) plan and conduct a search of relevant prior art, and (iii) formulate rejections under 35 U.S.C. 102 and 103 with supporting rationale, or determine how each claim distinguishes over the prior art. When he formulated a denial of a patent, he was required to draft an Office action containing, where appropriate, objections or rejections for noncompliance with § 112, and rejections under §§ 102 and 103. The drafted action formulated by applicant was required to be complete and accurate. 37 CFR 1.105; MPEP 707.07. Applicant did not have authority to sign the Office actions he formulated. Accordingly, the Office actions he formulated had to be signed by a primary examiner.
2. Patent examiners are rated on their performance, and one of the elements of their performance is production of completed Office actions. Routinely, handwritten Office actions were prepared by applicant and were submitted by applicant with the application file and references to his docket clerk, Amy Ott [a pseudonym], for counting. With each action, applicant submitted an Examiner's Case Action Worksheet, PTO 1472, on which he indicated the type of action being taken. Ms. Ott thereafter counted the action by updating the PALM (Patent Application Locating and Monitoring) record of the application and applicant's production record by entry of the appropriate on-line bar code reader transaction.
*2 3. Ms. Ott checked the Worksheet to verify that applicant provided all necessary information relating to the action. She then placed the count date of the action on the Contents flap of the application file wrapper. Ms. Ott then entered applicant's action for the case directly into PALM using a Bar Code Reader. Applicant's action reported to the PALM system was then listed by serial number on the Examiner's Biweekly Time and Activity Report. Applicant's examining and non-examining time, as listed on the Examiner's Biweekly Time and Activity Report, was entered into PALM for use in the computation of his productivity data.
4. After counting the handwritten Office action, Ms. Ott forwarded the application, references and action to a clerk to copy the references, and then to the typist for typing the action. Applicant's surname and telephone number were typed below the action. The typed action was returned to applicant to review for correction. If applicant did not have any corrections, he would initial or sign his name above the typed name, and forward the action with the application to a primary examiner authorized to sign his actions. Usually, John Spe [a pseudonym], applicant's supervisory primary examiner, or other designated primary examiner in his art unit, AB [pseudonym letters], CD [pseudonym letters], EF [pseudonym letters] or GH [pseudonym letters], would sign applicant's actions. Mr. Spe or the primary examiner who signed the action then submitted the signed action and application to a clerk who mailed the action, and recorded the type of action and mailing date on the Contents flap of the application.
5. In or about 19X1 [pseudonym alphanumeral year], applicant was caught using the foregoing routine procedures to submit to Ms. Ott two incomplete Office actions for counting. See paragraphs 9, 10 and 12 through 15 of the Declaration of John Spe (OED Exhibit 1).
6. On or about Orange [pseudonym month] 14, 19X2 [pseudonym alphanumeral year], applicant was warned against submitting incomplete Office actions to be counted. See paragraph 11 of the Declaration of John Spe (OED Exhibit 1).
7. In 19X3 [pseudonym alphanumeral year], applicant began to use a CPT word processor to type his Office actions. See paragraph 17 of the Declaration of John Spe (OED Exhibit 1); and paragraph 4 of the Declaration of Amy Ott (OED Exhibit 4). According to Mr. Spe and Ms. Ott, the procedure for processing his Office actions was modified as follows. The action would be typed and printed by the examiner. The printed action would bear his typed surname and telephone number at the bottom of the action. The action would be initialled by applicant, and who would then deliver the patent application, the Worksheet, and typed action to John Spe or other designated primary examiner to review and sign the action. The typed action, initialled by applicant and signed by the primary examiner would then be submitted with the application file, references and Worksheet to the appropriate docket clerk for counting. The docket clerk would thereafter count the action in the manner described above. The application, references and typed action would then be forwarded to a clerk to reproduce copies of the references, and then to a clerk to mail the action. The clerk who mails the action would take the first page of action form, PTOL-326, supplied by the examiner, add address and identifying information to the form using the PALM system, mail the action, and record the action and mail date on the Contents flap.
*3 8. Inasmuch as applicant typed his actions on a CPT word processor, applicant's typed actions logically would be expected to be his final product following a completed examination of the application and search. See paragraphs 16 through 18 of the Declaration of John Spe (OED Exhibit 1).
9. In 19X3, applicant worked numerous hours each week of paid overtime. He obtained a loan to buy a house. To qualify for the loan, it was necessary for him to work paid overtime to show sufficient income. See paragraph 21 of the Declaration of John Spe (OED Exhibit 1). And to qualify to work overtime, it was necessary for applicant to meet goals or production quotas set by the Office. See paragraph 22 of the Declaration of John Spe. Additionally, in or about Indigo [pseudonym month], 19X3, applicant attended law school, [information deleted]. See paragraph 20 of the Declaration of John Spe (OED Exhibit 1).
10. In 19X3, applicant was denied a within grade increase in pay due to work flow problems he encountered involving, inter alia, "end loading", whereby he produced most of his work in the last month or two weeks of a quarter. Additionally, his low production achievement also temporarily precluded him from paid overtime for the pay period beginning on Green [pseudonym month] 17, 19X3. See the Declaration of John Spe (OED Exhibit 1).
11. To minimize the practice of "end loading", Mr. Spe informed members of Art Unit 455 [pseudonym numbers] that to qualify to work paid overtime the last two weeks of a quarter, their fiscal year production must be at least 95% by the first day of the two week period. They could not resume paid overtime until their fiscal year production is again at least 95%. See paragraph 22 of the Declaration of John Spe (OED Exhibit 1).
12. On Indigo 11, 19X3, Mr. Boe submitted to Ms. Ott a typed action and a Worksheet for application No. 07/000,001 [pseudonym numbers] (the '001 application). Ms. Ott recorded the date the action was counted by writing "8- 11" on the "Contents" list of the application file wrapper. The typed action submitted to Ms. Ott for counting was initialed by applicant, but not signed by Mr. Spe or any other primary examiner. Attached to the "Contents" list of the ' 001 application was a handwritten note on yellow paper with instructions to "Please Return to the examiner after copying references. Already typed DO NOT MAIL". A retyped action was mailed on Pink [pseudonym month] 15, 19X3. The retyped action, unlike the original typed action handed in to be counted on Indigo 11th, contained a rejection of a claim under § 102 over a prior art reference not previously used. Additionally, the retyped Office action greatly expanded on the reasons for rejecting claim 19, the only claim in the application. See the Declaration of John Spe (OED Exhibit 1). At some point in time Mr. Spe became aware of the typed action submitted on Indigo 11, 19X3 for counting as well as the retyped action.
*4 13. The "Searched" notes on the file wrapper jacket of the '001 application indicated that an updated search of class 1A [pseudonym alphanumeral], subclass 5 [pseudonym number] was conducted on 1/26/X3 [pseudonym alphanumeral year]. The next entry indicated that a search of class 1A, subclass 6 [pseudonym number] was conducted as of 9/15/X3. The "Searched" notes on the jacket also indicated that there was a "Search Taken From Parent Application No. 07/000,002 [pseudonym numbers]" as of 08/10/X3. See OED Exhibit 2. Each entry was initialled by applicant. There was no indication that any updated search or search of another class was conducted in conjunction with the original typed action submitted on Indigo 11, 19X3. The submission by applicant of the Worksheet for the '001 application on Indigo 11, 19X3 was a representation that the work in the '001 application was completed on Indigo 11, 19X3. The typed action applicant submitted on [day deleted], Indigo 11, 19X3 for the '001 application was counted as having been done during the biweek work period ending [day deleted], Indigo 12, 19X3. OED Exhibit 3.
14. On or about [day deleted], Grey [pseudonym month] 4, 19X3, applicant deviated from the authorized modified procedure for turning in actions he typed to be counted. Instead of submitting the application file, Worksheet, and typed action to be signed by Mr. Spe or a designated primary examiner, applicant submitted three applications directly to Ms. Ott: Application Nos. 07/000,003 [pseudonym numbers], 07/000,004 [pseudonym numbers] and 07/000,005 [pseudonym numbers] (respectively, the '003, the '004, and the '005 applications) together with corresponding typed actions and Worksheets to be counted. Attached to the applications and/or actions submitted to Ms. Ott were notes requesting that the cases be returned to applicant before mailing or after being counted. See the Declaration of Amy Ott (OED Exhibit 4). Ms. Ott, per applicant's instructions, returned the applications to applicant after the actions were counted.
15. The actions applicant submitted on Grey 4, 19X3 for the '003, the '004, and the '005 applications were counted as having been done during the preceding biweek work period ending [day deleted], Grey 2, 19X3. OED Exhibit 5.
16. In connection with the '003 application, a retyped action was mailed on Orange 19, 19X4 [pseudonym alphanumeral year]. The "Searched" notes in the file wrapper were changed. The "Searched" notes in the file wrapper on or shortly after Grey 4, 19X4 indicated that class 1A, subclasses 9 [pseudonym number], 10 [pseudonym number], and 11 [pseudonym number] had been searched on or as of "12/04/X3". However, as of the Orange 19th mailing date, the original "Searched" notes had been obliterated with blue coloring matter, and the new "Searched" notes indicated that class 1A, subclasses 3 [pseudonym number], 4 [pseudonym number], 7 [pseudonym number], 8 [pseudonym number], 9, 10, and 11, class 2A [pseudonym alphanumeral], subclasses 1 [pseudonym number] and 2 [pseudonym number], and class 3A [pseudonym alphanumeral], subclasses 1 [pseudonym number] and 2 [pseudonym number] had been searched as of "12/04/X3." The Notice of References Cited was dated "12/04/X3" and was submitted with the original typed action on Grey 4, 19X3 (the first Notice). An additional notice, a list of References Cited By Applicant (second Notice) was prepared and submitted with the first Notice and the retyped action. Whereas the first Notice was dated "12/04/X3," the second Notice was dated "12/27/X3" and cited a United States patent and one foreign patent. The original typed action was revised and greatly expanded. In the original typed action, applicant rejected claims as being rendered obvious under 35 U.S.C. 103 over Smith [a pseudonym] in view of Frank [a pseudonym] (a Japanese Kokai patent cited by the patent applicant). In the retyped action, the rejection was not maintained. Instead the retyped action was an examiner's amendment containing seventeen (17) changes "made solely to bring the claim into compliance with 35 U.S.C. 112, second paragraph, and to improve their form" whereby the application was allowed on the first Office action. The original typed action contained no rejection of any claim under 35 U.S.C. 112, first or second paragraphs. In the examiner's amendment, applicant stated that the changes made by the examiner's amendment "were made solely to bring the claims into compliance with 35 U.S.C. 112, second paragraph, and to improve their form." See Appendix 6 of the Declaration of John Spe (OED Exhibit 1). Following applicant's examiner's amendment, the '001 application was processed for allowance, and issued as U.S. patent [number deleted].
*5 17. In connection with the '004 application, a retyped action was mailed on Orange 3, 19X4. Whereas the original typed action contained a rejection of claims 1 and 2 under 35 U.S.C. 102(e) over a patent to Wilson [a pseudonym], the retyped action did not contain such a rejection. Unlike the original typed action, the retyped action contained a rejection of claims 1 and 2 under 35 U.S.C. 102 over the prior art represented as Figure A in the application and over prior art methods described in the specification of the application. Moreover, unlike the original typed action, the retyped action included an objection and a rejection under 35 U.S.C. 112. See Appendix 2 to the Declaration of John Spe (OED Exhibit 1).
18. In connection with the '005 application, [FN1] a retyped action was mailed Grey 12, 19X3. Applicant prepared a new Notice of References Cited with the retyped action. The original Notice was dated "Grey/04/X3" and cited a patent to Walter [a pseudonym] et al and two patents to Bud [a pseudonym]. The new Notice, also dated "Grey/04/X3," cited the patent to Walter et al as well as patents to Jones [a pseudonym] et al, Les [a pseudonym] et al, and Hope [a pseudonym] et al, but not the patents to Bud. Additionally, in the original typed action, the claims in the application were rejected as being anticipated under 35 U.S.C. 102(e) over Walter et al. The rejection was not repeated in the retyped action. Unlike the original typed action, the retyped action contained rejections of claims as being obvious under 35 U.S.C. 103 over prior art references which were not cited in the original Notice of References Cited. Also unlike the original typed action, the retyped action contained a rejection of claims under 35 U.S.C. 112. See Appendix 3 to the Declaration of John Spe (OED Exhibit 1).
19. On [day deleted], Grey 18, 19X3, applicant again deviated from the authorized procedure for turning in actions he typed to be counted. Instead of submitting to Mr. Spe or a designated primary examiner the application file, Worksheet, and typed action to be signed, applicant submitted Application Nos. 07/000,006 [pseudonym numbers] and 07/000,007 [pseudonym numbers] (respectively, the '006 and the '007 applications) to Ms. Ott together with the Worksheets corresponding typed actions to be counted. Attached to the applications and/or actions submitted to Ms. Ott were notes requesting that the cases be returned to applicant before mailing or after being counted. See the Declaration of Amy Ott (OED Exhibit 4). Ms. Ott returned the applications to applicant as instructed after the actions were counted.
20. The original typed actions applicant submitted on [day deleted], Grey 18, 19X3 for the '006 and the '007 applications were counted as having been done during the preceding biweek period ending [day deleted], Grey 16, 19X3. OED Exhibit 6.
*6 21. In connection with the '006 application, a retyped action was mailed Orange 24, 19X4. The "Searched" notes on the file wrapper of the application were changed. On or shortly after Grey 18, 19X3, when the original typed action was submitted to be counted, the "Searched" notes indicated that class 1A, subclass 2 had been searched on or as of "Grey/18/X3." When the retyped action was mailed on Orange 24, 19X4, the "Searched" notes had been obliterated with a blue color in the space where the "358" was originally noted, the number 358 appears to have been rewritten, and the notes indicate that in addition to subclass 2, sixteen (16) other subclasses in class 1A as well as class 4A [pseudonym alphanumeral], subclass 1 [pseudonym number] had been added to the search. The "Searched" notes represented that these new classes and subclasses had been searched on "Grey/18/X3." The Notice of References Cited submitted with the retyped action differed from the Notice of References Cited which applicant submitted to Ms. Ott with the original typed action. The original Notice of References Cited was dated "Grey/18/X3" and cited a patent to Stella [a pseudonym] and a patent to Roma [a pseudonym] II et al. The Notice submitted with the retyped action was also dated "Grey/18/X3," but it did not cite the Stella and Roma II et al patents. It cited seven new United States patents and four foreign patents. In the original typed action, the claims in the application were rejected under 35 U.S.C. 102(b) as being anticipated by Roma II et al. The rejection was repeated in the retyped action. Unlike the original typed action, the retyped action contained rejections of claims under 35 U.S.C. 102 and 35 U.S.C. 103 over prior art references which were not cited in the original Notice of References cited. Also unlike the original typed action, the retyped action contained a rejection of claims under 35 U.S.C. 112. See Appendix 4 to the Declaration of John Spe (OED Exhibit 1).
22. In connection with the '007 application, a retyped action was mailed Grey 18, 19X3. In the original typed action, the claims were rejected under 35 U.S.C. 102 as being anticipated by Motto [a pseudonym] et al. No claims were rejected over Motto et al in the retyped action. The retyped action contained a rejection of claims under 35 U.S.C. 102(b) as being anticipated over Smith. The retyped action also contained a rejection of claims under 35 U.S.C. 112, whereas the original typed action did not contain these rejections. See Appendix 5 to the Declaration of John Spe (OED Exhibit 1).
23. In each of Application Nos. '001, '003, '004, '005, '007 and '006 applicant submitted to Ms. Ott, applicant included a typed Office action wherein applicant's name and telephone number followed the action, and his signature appeared above the his name. None of the actions bore the name and signature of a primary examiner. All of the applications bore a note to return the application to applicant after counting, after copying references, or before mailing the action. All the applications were submitted to Ms. Ott with a completed Worksheet to get credit for completed work.
*7 24. Three of the applications, Application Nos. '005, '006 and '007, each contained a rejection of claims as being anticipated under 35 U.S.C. 102 by an art reference. None of the art references cited as anticipating the claimed subject matter in these applications actually anticipated or rendered obvious the claimed subject matter. Moreover, the rejections were spurious. See the Declaration of Examiner In Chief (OED Exhibit 7).
25. Ms. Ott processed the Worksheet to count the action, and where appropriate turned over each of the applications to a clerk to photocopy prior art references cited by applicant for registration on the new Notices of References Cited. The applications and typed actions were then returned to applicant, who later revised and prepared a more extensive typed Office action for each of the applications. Applicant delivered the retyped actions to Mr. Spe or a primary examiner for signature. The original typed actions were not with the applications when they were delivered to Mr. Spe, and they apparently have disappeared.
26. The retyped actions in the '004, the '005, the '006 and the '007 applications neither repeated the rejections under § 102 over the art references applied in the original typed action, nor used the art references in support of a rejection under §§ 102 or 103 of any claim in the corresponding application. Moreover, the retyped actions for the '006, and the '007 applications contained a rejection of claims under § 102 over art references which were different from the art references used in the original typed action. The retyped action for the '004 application contained a rejection under § 102 over a drawing figure and prior art acknowledged in the application.
27. On [day deleted], Orange 31, 19X4, Mr. Spe informed applicant that he wanted to meet with applicant on [day deleted], Red [pseudonym month] 1, 19X4, to inquire about Office actions applicant had written. Applicant was advised of his right to be represented by a union representative. See page 1 of applicant's Statement dated Grey 22, 19X4 (OED Exhibit 8).
28. On [day deleted], Red 1, 19X4, applicant and his union representative met with Mr. Spe and another supervisory primary examiner, and Mr. Spe showed applicant six patent applications, including the five applications referenced in paragraphs 12 and 18 through 20, supra. Mr. Spe requested that applicant look at the actions and provide a written explanation of the reasons for the changes in the actions. [Day deleted] afternoon, Red 5, 19X4, was set as the date for response. On that date applicant's union representative informed Mr. Spe that they were not able "to formulate a meaningful response" in the allotted time period. Mr. Spe said he would accept any response which could be formulated until such time as he could no longer accept a response. See pages 2 and 3 of applicant's Statement dated Grey 22, 19X4 (OED Exhibit 8).
29. On [day deleted], Red 6, 19X4, applicant was informed by Mr. Spe that he was no longer authorized to work overtime. Applicant alleges that being taken off overtime deprived him of an amount of money that made it virtually impossible for him to meet his monthly mortgage payments. He further alleges that he was outraged, and immediately began to look for a new job. See pages 3 and 4 of applicant's Statement dated Grey 22, 19X4 (OED Exhibit 8).
*8 30. On Red 13, 19X4, applicant interviewed for and received an offer of employment at a law firm of Smith & Jones [a pseudonym firm name] (the firm). On the same day, upon returning from the interview, applicant submitted to Mr. Spe a letter of resignation having an effective date of Brown [pseudonym month] 10, 19X4. See page 4 of applicant's statement dated Grey 22, 19X4. Prior to submitting his letter of resignation, applicant did not provide the written explanation requested by Mr. Spe as to his reasons for changing the Office actions in question.
31. On Red 13, 19X4, applicant received from Mr. Spe a handwritten note informing him that Office management believed that six actions had been "mortgaged". Consequently, his production for the first quarter of FY 19X5, i.e., Blue [pseudonym month] 1 through about Grey 31, 19X4, was now considered unsatisfactory, and he was being given an oral warning for unsatisfactory productivity. See page 5 of applicant's Statement dated Grey 22, 19X4 (OED Exhibit 8).
32. On Red 15, 19X4, applicant received a typed Confirmation Of Oral Warning dated Red 14, 19X4, of the oral warning mentioned in the handwritten note of Red 13, 19X4. See page 5 of applicant's Statement dated Grey 22, 19X4.
33. Following unsuccessful efforts on [day deleted], Brown 2, 19X4, union personnel on or about Brown 5 or Brown 6, 19X4, served on XA [pseudonym letters], an SPE in Group 450 [pseudonym numbers], a written grievance regarding the oral warning and written notice Mr. Spe gave to applicant. See pages 5 and 6 and Attachment F of applicant's Statement (OED Exhibit 8).
34. On [day deleted], Brown 7, 19X4, the union secretary presented the Acting Director of Group 450 with a proposed settlement agreement wherein applicant would agree to drop his grievance if the Office would agree not to divulge anything relating to the investigation to the Office of Enrollment and Discipline (OED). At the time, applicant was unaware that the application form for registration had been changed to include Question 10, requiring him to explain about the investigation in any event. On [day deleted], Brown 8, 19X4, applicant signed the proposed settlement agreement in anticipation that the Office would not sign it until after the effective date of his resignation. The proposed settlement agreement apparently was not accepted by the Office, and was met with a counter proposal which was apparently equally unacceptable to applicant. See pages 6 and 7 of applicant's Statement dated Grey 22, 19X4.
35. On [day deleted], Brown 10, 19X4, applicant's resignation became effective. On [day deleted], Brown 15, 19X4, applicant filed an application for registration using an old form as opposed to the application form required at that time. Applicant was orally informed that the application form he used was no longer appropriate and he was handed the new appropriate form to complete and file. After several weeks had passed without submission of new application form completed by applicant, he was notified by OED in a letter dated Purple [pseudonym month] 23, 19X4 that his application would not be further considered if the form was not filed in two weeks. By letter dated Yellow [pseudonym month] 11, 19X4, applicant confirmed an oral request that OED not further consider his application for registration. His application fee was refunded.
*9 36. In Orange, 19X5, applicant reapplied for registration using the proper form and he submitted with the application a twelve page statement dated Grey 22, 19X4 (Statement) (OED Exhibit 8). In the Statement, applicant stated that at the time he resigned, he was "under investigation, but for conduct which could only unreasonably have been considered as involving dishonesty, fraud, misrepresentation, or deceit." Applicant discussed in the Statement the chronology of events "surrounding the investigation." He also discussed his handling the applications without referring to copies of the original typed Office actions or the retyped Office actions. Despite apparently lacking copies of the documents, applicant presented, for the first time, his explanation for "revising" the Office actions in the six applications cited by his supervisor on Orange 31, 19X4. Applicant stated that he did nothing wrong in writing the original actions, and in essence, first realized that the action required revision when he reviewed the action prior to submitting them to Mr. Spe for review.
37. On page 8 of his Statement (OED Exhibit 8), applicant said, with regard to the '003 application, "[w]hen I reviewed the action prior to submitting it to my SPE for his review, I realized I had failed to appreciate the significance of certain features in the application." For the '007, the '006 and the '005 applications, he said on page 9 of his Statement that his misinterpretations of references were "discovered ... when I reviewed the actions prior to submitting them to my SPE for his review". For the '004 application, he said on page 9 of the Statement that he did not appreciate a difference between the disclosure in the drawings and the specification until he "discovered this when I reviewed the action prior to submitting it to my SPE for his review." For the '001 application, on page 9 of his Statement, he said that "[w]hen I reviewed the original action prior to submitting it to my SPE for review, I thought of an additional area of search which had not occurred to me at the time I wrote the original action".
38. Applicant did not disclose in the Statement that the original "Searched" notes in at least two applications had been obliterated by a blue colored substance; that the "Searched" notes in all the applications had been changed after the date the original action had been counted to show a more extensive search, but the date given as the date of the search remained the same in five of the applications; that the original Notice of References Cited in three of the applications had been replaced with a second Notice of References Cited, and the second Notice of References Cited in the three applications cites additional prior art references and while two of second Notices of References Cited deletes references cited in the original Notice of References Cited; that the content of the retyped Office actions was significantly and materially different from the content of the original typed action; and that notes had been attached to the Office actions in all the applications submitted to Ms. Ott for counting and the notes contained instructions not to mail the Office action. The information not disclosed by applicant was discovered by OED upon investigation.
*10 39. In view of the applicant's explanations for changing the Office actions and the information discovered by OED upon investigation, OED sought the opinion of an independent person competent to analyze the original Office actions and had no prior knowledge of applicant or his circumstances. Examiner In Chief, a member of the Board of Patent Appeals and Inteferences of the PTO, was asked to provide his opinion regarding the completeness of applicant's original Office actions. Mr. Chief, in an Affidavit (OED Exhibit 7), concluded that the rejections of claims under 35 U.S.C. 102 in the original Office actions in the '005, '006, and '007 applications were clear error and spurious. Mr. Chief further concluded that no reasonable examiner, using reasonable care, could have concluded that the disclosure in the respectively cited prior art references met every limitation in the rejected claims.
40. On Pink 30, 19X5, the Director of OED issued to the applicant an Order to Show Cause why his application should not be disapproved.
41. On Orange 28, 19X6 [pseudonym alphanumeral year], applicant filed a Response To Order to Show Cause (Response) (OED Exhibit 10). The Response was accompanied by separate Declarations of ADD [pseudonym letters] (OED Exhibit 11), KLS [pseudonym letters] (OED Exhibit 12), ASW [pseudonym letters] (OED Exhibit 13), EDS [pseudonym letters] (OED Exhibit 14), DNJ [pseudonym letters] (OED Exhibit 15), and BIC [pseudonym letters] (OED Exhibit 16), six attorneys with the firm where applicant went to work after he resigned from the PTO. On Orange 30, 19X6, applicant gave a communication titled "Apology" (OED Exhibit 17) to Messrs. Spe; ABR [pseudonym letters], Acting Director of Group 450 during a period inclusive of Grey, 19X4 through Red, 19X5; and Stephen G. Kunin, Deputy Assistant Commissioner for Patents. Subsequently, a letter on behalf of applicant was received from MM [pseudonym letters]. [FN2]
42. In the Response (OED Exhibit 10), applicant states that at the time he examined the six applications he was "trying to meet [his] production goals," that his "desire to do the best job possible had caused [him] to spend an excessive amount of time on other applications earlier in the quarter, and as a result [he] did not have enough time to do [his] usual thorough job," and he "attempted to do the best job [he] could in the time remaining ... [whereby he] looked over each of the six applications, pulled the best art that [he] could find which looked relevant to the claims, and wrote the best Office actions [he] could using that art." See page 3 of the Response. Applicant further states that "[w]hen [he] thoroughly analyzed the art [he] had found with respect to the claims after the Office actions were counted, [he] discovered that the actions were deficient. In fact, [he] was surprised at how bad they were." See page 3 of the Response. Still further, he states that he decided to revise the actions without consulting Mr. Spe, and that he "now recognizes that he was "wrong to revise the deficient Office actions without consulting Mr. Spe." Applicant states that his "reason for handling the six applications as [he] did without going to Mr. Spe for help is that [he] did not feel comfortable about talking to Mr. Spe about such matters at that time [inasmuch as he] had filed five grievances against Mr. Spe before the incidents in question." See page 4 of the Response. Applicant also states that in Grey, 19X3, when he wrote five of the six Office actions, he was "under an extreme amount of stress ... [he] was working 40 hours regular time and 20 hours of paid overtime each week as an examiner ... going to law school at night where [he] was in the middle of final examinations ... [and] it [was] impossible for [him] to work as much unpaid overtime as [he] usually did at the end of the quarter."
DISCUSSION
*11 Each individual applying for registration to practice before the PTO in patent cases must establish to the satisfaction of the Director of the Office of Enrollment and Discipline that he or she possesses good moral character and repute. 35 U.S.C. 31; 37 CFR 10.7(a)(2)(i). The burden of proof is upon the applicant. 37 CFR 10.7(b). The applicant must exhibit candor throughout the process. It is important for those practicing before the PTO to be of good moral character so that the PTO can reasonably rely on representations made on behalf of their clients during the prosecution of patent applications.
Good moral character and repute is the absence of acts and conduct which would cause a reasonable person to have substantial doubts about an individual's honesty, integrity, trustworthiness, reliability, and professional commitment to the administrative and judicial process. Florida Board of Bar Examiners: In re G.W.L., 364 S.2d 454 (Fl.1987); In re Mathews, 462 A.2d 165 (N.J.1983); Matter of Scavone, 524 A.2d 813 (N.J.1987). This standard is reasonable and rational with respect to practice before the PTO in patent cases inasmuch as the relationship of a practitioner to the PTO requires the practitioner to exercise the highest degree of candor and good faith. Kingsland v. Dorsey, 83 USPQ 330 (Sup.Ct.1949).
The record before OED contains several instances of applicant's acts and conduct during and after his employment at the PTO which would cause a reasonable person to have reasonable doubt about applicant's moral character and repute. His conduct shows a lack of candor and good faith, as well as a pattern of deceit and misrepresentation to officials of the PTO.
Misrepresentations In The File Wrappers Of Patent Applications
On the file wrapper jackets of Application Nos. '003 and '006, applicant misrepresented the search as conducted and recorded in the "Searched" notes. As for the '003 application, there is clear evidence (Exhibit JS [pseudonym letters] 40 in the Declaration of John Spe, OED Exhibit 1) that when the original typed action was turned in to be counted, only one class and three subclasses were alleged to have been "Searched" as of "Grey/04/X3." Sometime after "Grey/04/X3," applicant changed the file wrapper jacket to indicate that two additional classes and eight additional subclasses had been "Searched" as of "Grey/04/X3."
Regarding the '006 application, there is clear evidence (Exhibits JS 33 and 34 in the Declaration of John Spe, OED Exhibit 1) that when the original typed action for the '006 application was turned in to be counted, only one class and subclass was alleged to have been "Searched" as of "Grey/18/X3," and only two prior art references were cited in the action. Sometime after "Grey/18/X3," applicant changed the file wrapper jacket to indicate that one additional class and seventeen additional subclasses had been "Searched" as of "Grey/18/X3." In the '006 application, applicant replaced the original Notice of References Cited dated "Grey/18/X3" with a new Notice also dated "Grey/18/X3" citing eleven new art references, but none of the art references cited in the original Notice. By citing new art references in the new Notice as of the "Grey/18/X3" date of the original Notice as opposed to the later date of the new Notice, applicant misrepresented in the second Notice the date as of when the search was conducted in the '006 application. In the '006 application, the retyped action (Exhibit JS 35 of the Declaration of John Spe, OED Exhibit 1) bears a date "Grey/18/X3" under applicant's signature block despite the fact that the retyped action relies on art references which were cited after Grey/18/X3. By including the typewritten "Grey/18/X3" date on the retyped action, applicant misrepresented the date when the retyped action was prepared and taken.
*12 On the file wrapper jacket of the '005 application, applicant misrepresented the date as of when classes and subclasses were searched, the date when the prior art was cited, and the date of the action. When the original typed action was submitted for counting, no class or subclass had been indicated as having been "Searched". When the retyped action was submitted to Mr. Spe, the file wrapper jacket indicated that class 1A, subclass 1 and nine other subclasses had been "Searched" as of "Grey/04/X3." The original Notice of References was dated Grey/04/X3 and cited three patents, one to Walter et al and two to Bud. The retyped Office action which was mailed was submitted with a new Notice of References Cited, also dated "Grey/04/X3," which differed from the original Notice by not citing the Bud patents, though it cited three other references. The Walter and Bud patents cited in the original Notice were classified class 1A, subclass 1. None of the references cited in the new Notice and used in the retyped Office action were classified in class 1A, subclass 1, but the new references were classified in a subclass other than 1. Moreover, in the retyped action, applicant did not rely on the Walter patent to reject any claim. Not only is the "Grey/04/X3" date on the new Notice a misrepresentation of the date the art was cited, the representation on the file wrapper that ten subclasses were allegedly "Searched" as of "Grey/04/X3" is clearly deceptive.
By continuing to use the date the original typed actions were submitted to be counted, applicant avoided disclosing any incompleteness of his work. The excuses applicant gave in his Statement [FN3] about updated searches and researches are unacceptable. In view of the previous warning applicant received in Orange, 19X2 for submitting incomplete actions, it is reasonable to expect that applicant would reflect the date of the updated search in the "Searched" information and on the new Notice of References Cited if the original typed actions had been complete and the researches were, in actuality, merely updates when they were performed. Instead, applicant's intent to avoid disclosing the incompleteness of his work is clearly shown by his submission of new Notices of References Cited with the old dates. By not disclosing the incompleteness of his work, applicant continued to rely on the court date for the actions. By misrepresenting the "Searched" dates and the class and subclasses searched as of those dates, and by misrepresenting the date as of when references were cited on the new Notices, applicant attempted to have sufficient counts to qualify or remain qualified to work paid overtime.
Applicant said in his Statement that he did not appreciate the claims in the '003 application, [FN4] that he did not appreciate a difference between the written specification and drawings in the '004 application, [FN5] or that he thought of an additional area of search which he had not previously searched for the '001 application. [FN6] These statements are clearly intended to imply that applicant believed his searches and analysis of the prior art were complete when he submitted the Office actions to be counted. The arguments are contradicted by his statement in the Response that he was unable to conduct a complete search of the prior art and thoroughly analyze the art. [FN7] Consequently, the statements are not credible. If applicant was unaware of the differences between the claims and cited references when he submitted the actions to be counted, he was grossly negligent. Mr. Chief's analysis of the claims and references indicates that there was no way that the references, even after a cursory review, could have been considered to anticipate the claims of the respective applications. Inasmuch as applicant had not thoroughly analyzed the references before he wrote the actions, he could not have reasonably believed his actions to be proper.
*13 Applicant's failure to follow the established modified procedures suggests that he knew before he submitted the actions to Ms. Ott that they were incomplete. As discussed above, for the '003 and '006 applications, there are discrepancies about the scope of the search conducted as of the recorded dates between the "Searched" notes in the file wrappers on the date applicant submitted the original typed actions to Ms. Ott for counting and when applicant submitted the retyped actions to Mr. Spe for review and signature. Applicant did not explain in the Statement why these discrepancies exist. Regarding the ' 005 application, he did not cite any area of search when he submitted the original action on Grey 4, 19X3 to be counted, but he did represent that ten subclasses in class 1A had been searched as of Grey 4, 19X3 when he submitted the retyped action to Mr. Spe. Applicant acknowledges that he "thoroughly analyzed" the art "after the actions were counted." See page 3 of the Response, OED Exhibit 10. He should have thoroughly analyzed the art before he prepared the original Office action. Thus, he "researched" [FN8] the '003, '006 and '005 applications and found new art for the '006 and '005 applications only after the actions were counted. Clearly, applicant must have understood that he had "researched" after the dates recorded under the "Searched" notes in the file wrapper jacket. He also knew that he had not cited the new art references in the '006 and '005 applications, respectively, as of "Grey/04/X3" and "Grey/18/X3." In the Response, [FN9] applicant disputes that the procedure for submitting Office actions for counting was modified to require him to submit the actions to his SPE for signature before they were to be handed in for counting, and he denies that he was informed of the modified procedure. Applicant presents no evidence in support of his denial. Mr. Spe states that he orally proposed and applicant agreed to use the procedure without objection. It is clear from paragraph 4 of the Declaration of Amy Ott (OED Exhibit 4) that the modified procedure was adopted for examiners using computers or word processors to prepare their Office actions. It is further clear from paragraph 5 of the Declaration of Amy Ott that she understood that applicant was supposed to be following the modified procedure, and noticed in Grey, 19X3 that applicant did not do so. Further, applicant's denial of awareness of the modified procedure is contradicted by another statement in his Response [FN10] that he placed
notes on other applications which [he] worked on over the last weekend of the biweek which [he] normally would have turned in for review and signature prior to counting, but which [he] turned in for counting prior to review and signature so that Mr. Spe or a primary examiner would not be rushed to review and sign the Office actions before the 9:30 AM [day deleted] morning deadline for counting (underlining emphasis added).
Inasmuch as applicant placed notes on the '001, '004, '007, '003, '006 and '005 applications, and the latter five applications were submitted prior to review for a [day deleted] morning deadline for counting following the last weekend of a biweek pay period, it is clear that applicant knew of and avoided the modified procedure.
*14 Applicant was clearly motivated for financial reasons to misrepresent incomplete work as completed work by misrepresenting the completeness of the Office actions submitted to be counted before they were signed, by misrepresenting when classes and subclasses were searched, by misrepresenting when references were cited, and by misrepresenting when a search was completed. He needed to maintain his productivity level above 95% in order to qualify for and continue to be authorized to work overtime.
Misrepresentations By Submission Of Incomplete Office Actions And Worksheets
For Counting
It is clear that the original typed actions in the '005, '006 and '007 applications were incomplete. As is made clear by Mr. Chief, the anticipation rejections in the original typed actions in the '005, '006 and '007 applications were spurious. In the Response, applicant does not contest Mr. Chief's evaluation of four of the Office actions. In his Statement, applicant does not state, though he implies, that he believed the original Office actions were complete. Applicant's explanations are not acceptable. Applicant's Office actions were normally very detailed with numerous reasons for rejecting claims under 35 U.S.C. 112. Mr. Spe criticized applicant's penchant for making more rejections under 35 U.S.C. 112 than necessary and concern for correcting every minor detail. See exhibit JS 9 in the Declaration of John Spe, OED Exhibit 1. Five of the original typed actions contained no rejection of any claim under 35 U.S.C. 112. See Appendices 2 through 6 to the Declaration of John Spe, OED Exhibit 1. This was very uncharacteristic of applicant's examination of applications. Four of the retyped Office actions contain extensive rejections under 35 U.S.C. 112, and the fifth contains an examiner's amendment of claims "solely to bring the claims into compliance with 35 U.S.C. 112, second paragraph, and to improve their form."
Mr. Spe also had confidence in applicant's technical competence. Given applicant's need to qualify for and work paid overtime, and the detailed rejections over entirely different art references in the retyped actions, I can only conclude that when he typed the original typed actions, applicant knew the claims were not anticipated by the references he cited in application Nos. ' 005, '006 and '007. I also conclude that applicant knew when he typed the original typed actions that he wanted these actions counted so as to get credit for the actions even though they were incomplete.
By submitting a typed action containing a short rejection for anticipation and no rejection under 35 U.S.C. 112 with notes to return the cases to applicant before mailing, etc., applicant postponed until after the actions were counted taking the time necessary to conduct a complete search and a complete action on the merits. He thereby acquired a counted action and qualified for or maintained his qualification to work paid overtime. Nowhere is this clearer than in the '005, '006 and '007 applications where the anticipation rejections were completely spurious and applicant, at least figuratively, trashed the contents of the original typed actions. Inasmuch as the actions were submitted with Worksheets representing completed work, the submissions were misrepresentations of completed work.
*15 It is also clear that the original typed actions in the '004, '003 and '216 applications were incomplete. With regard to the '004 and '003 applications, applicant, at least figuratively, trashed the contents of the original typed action, in favor of actions which discarded the prior art rejections he initially made and added rejections under § 112. Again, applicant bypassed Mr. Spe and submitted the original typed actions with a Worksheet to Ms. Ott. The submission of the original typed action and Worksheet to Ms. Ott constituted a representation that the work was completed, but the work was not complete. The submissions were misrepresentations of completed work.
In his Response, applicant described the events leading to his preparation of the original Office actions in the six applications, in pertinent part, as follows:
At the time I examined the six applications in question, I was trying to meet my production goals. My desire to do the best possible job had caused me to spend an excessive amount of time on other applications earlier in the quarter, and as a result I did not have enough time to do my usual thorough job on the six applications.
***
I looked over the six applications, pulled the best art that I could find which looked relevant to the claims, and wrote the best Office actions I could using that art. [FN11]
There is no objective evidence corroborating applicant's assertion that he believed at the time he submitted the original actions to be counted that they were "proper." Applicant may well have written the "best possible action;" but only for getting the action counted as opposed to the best possible complete action on the merits which could be counted and mailed.
It appears that applicant would have this office believe that he did not appreciate that the original typed Office actions were bogus and otherwise incomplete at the time he submitted the actions to be counted. There is no convincing evidence that he first discovered their shortcomings or deficiencies after they were counted. Applicant's description of preparing the Office actions after he merely "looked over" the application and finding the best art which "looked relevant" clearly indicates they were hurriedly prepared with little, as opposed to reasonable, care. Taken together with his admission that he thoroughly analyzed the art after the actions were counted (Response, page 3, OED Exhibit 10), it is clearly apparent that applicant intended to obtain credit for the original typed actions without regard to the merits of the actions. The uncharacteristic omission from the original typed Office actions of a rejection of claims under 35 U.S.C. 112 together with the inclusion of notes not to mail the actions after they were counted clearly indicate that applicant appreciated the incompleteness and bogus nature of the original typed Office actions. The indication is reinforced not only by changes applicant made to the file wrappers, but also by the extent of the revisions in the retyped Office actions he prepared, including not even citing in the '006 application as relevant the prior art references he had relied on in the original Office action to reject claims under 35 U.S.C. 102. Neither applicant's desire to meet production goals nor the "time constraints" imposed by the PTO required or authorized applicant to do less than a complete action on each application.
*16 Comparison of the claims with the applied prior art references in the original Office actions for the '005, '006 and '007 applications shows the anticipation rejections to have been completely spurious. Given the spurious nature of the content of the Office actions and applicant's technical competence, it is incredulous that applicant believed at the time his original Office actions were proper. Applicant admits that the actions were typed after neither a complete search of the prior art nor thorough analysis of the art vis-a-vis the claims. [FN12] In these circumstances, applicant could not have reasonably believed the actions he submitted for counting were complete. Finally, there are the yellow notes not to mail the actions, but return them to applicant after counting. Together, the objective circumstantial evidence inescapably shows that applicant was aware that the actions were incomplete when he handed them in to be counted.
Under the circumstances, applicant's explanations that he "did nothing wrong in writing the original actions ...", that he "believed the original actions were ready for review by his SPE at the time he wrote the actions ...", and that he did not hesitate to revise the actions "[w]hen [he] discovered that the original actions needed to be revised" [FN13] are not believable in view of the facts.
Applicant's failure to conduct a complete search before preparing the original typed action is demonstrated in the '001 application. In this case, applicant had not updated the prior art search or conducted a new prior art search in conjunction with the original typed action submitted on Indigo 11, 19X3 to Ms. Ott with a note not to mail the action. Unlike the actions which were trashed, the original typed action in the '001 application contained a rejection under § 112, and the action was not trashed. Instead, applicant added an anticipation rejection to the original rejection and greatly expanded on the original rejection under § 112. The file wrapper indicates that no prior art search was conducted about the time the original typed action was submitted on Indigo 11, 19X3. The file wrapper indicates that a prior art search was conducted as of Pink 15, 19X3, the date a retyped action was mailed. The submission of the original typed action with a Worksheet representing completed work was a misrepresentation.
Applicant states that he began placing notes on actions he typed when he discovered that one or more of his actions had been mailed without being signed by Mr. Spe or a primary examiner. [FN14] Applicant does not identify the discovered unsigned actions, and the record does not otherwise support his statement. Mr. Spe states that he knows that Office actions of some examiners were occasionally mailed without the signature of an SPE or primary examiner when examiners in Group 450 first began typing their own actions. However, Mr. Spe is unaware of any of applicant's actions being mailed without being signed by him or a primary examiner. See the Second Declaration of John Spe (OED Exhibit 9). Even assuming applicant has correctly identified when and reason for beginning to place notes on the actions, it does not follow that the notes were always used for the same purpose.
*17 Applicant suggests that he had completely innocent motives for placing notes on applications, e.g., to check references copied, and hand in cases for counting prior to review to provide Mr. Spe or a primary examiner with time to review the Office actions he had worked on over the last weekend of a biweek pay period before the 9:30 AM [day deleted] morning deadline for counting. [FN15] However, the notes provided him with the opportunity, which he used, to submit incomplete actions to be counted as complete actions. Moreover, as Mr. Spe explains in the Second Declaration of John Spe (OED Exhibit 9), it was not applicant's responsibility to verify that the references cited in his Office actions had been copied or to diminish Mr. Spe's rush to review the Office actions before the biweekly 9:30 AM [day deleted] morning deadline for counting Office actions.
Applicant's repeated explanations in his Statement that he misinterpreted the references or the claims, and that he "researched" the cases are simply too trite and not believable under the circumstances. These events occurred when applicant did not follow the modified procedure he had been instructed by Mr. Spe to follow to have typed actions counted. This is most clearly demonstrated by his intentional submission of the actions for counting on the [day deleted] mornings of Grey 4, and Grey 18, 19X3, with instructions to count the action, but not mail the action, and return the case to him after copying the references. See exhibits JS 15, JS 21, JS 28, JS 35, and JS 42 in the Declaration of John Spe (OED Exhibit 1). The events occurred when applicant had both motive and opportunity to become or remain qualified to work paid overtime, and when he was seeking to qualify for full signatory authority. The events in Grey, 19X3 occurred when applicant was in the middle of final examinations in law school. Indeed, there is no satisfactory explanation for repeatedly not following the modified procedures for having a typed action reviewed, signed and counted. By submitting spurious and otherwise incomplete actions to his docket clerk to be counted without submitting them to his SPE for review, applicant ostensibly met production goals for paid overtime while simultaneously postponing until a later date and time completion of the work at his convenience.
Even assuming, as applicant argues, that he believed it to be morally wrong to take advantage of Mr. Spe by mailing the original actions without revision, he nevertheless did so by misrepresenting the completeness of his original work, the dates when the prior art was "researched", and/or the dates when the new Notices of References Cited were prepared. Applicant took further advantage of Mr. Spe by misrepresenting on more than one occasion that retyped actions were typed the day the original typed actions were counted. For instance, the retyped actions for the '004 and '006 applications are respectively dated Grey 4, 19X3 (exhibit JS 24 to the Declaration of John Spe, OED Exhibit 1) and Grey 18, 19X3 (exhibit JS 38 to the Declaration of John Spe, OED Exhibit 1), which are the respective dates appearing on the original typed actions for the respective applications (exhibits JS 20 and JS 34 to the Declaration of John Spe, OED Exhibit 1).
*18 No single factor or combination of factors can always require an inference be drawn of intent to mislead. Nevertheless, a person seeking registration and facing a level of conduct involving dishonesty, deceit, or misrepresentation and clear proof that he knew or should have known of the nature of nature of the conduct, can expect to find it difficult to establish "subjective good faith" sufficient to prevent drawing an inference of intent to mislead. A mere denial of intent to mislead or claim of good moral character is insufficient in such circumstances. Compare FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415, 5 USPQ2d 112, 1115 (Fed.Cir.1987).
Attempted Suppression Of The Facts And Lack of Candor
Under 37 CFR 10.7(b), applicants for registration have the burden of making a satisfactory showing to the Director as a condition for registration that they possess good moral character and repute. The burden and necessity for disclosure was not newly introduced with the new application for registration form which applicant became aware of in 19X4. Accordingly, even if applicant did not become aware of the new application form in 19X4, or had he applied for registration before the new forms were first used, his burden to show he is of good moral character and repute would have required him to disclose the events which led to the oral warning later confirmed in writing on Red 14, 19X4.
Prior to becoming aware of the new registration application form, applicant signed a proposed settlement agreement dated Brown 8, 19X4 whereby he sought to have the Office (P.T.O.)
destroy all papers directly or indirectly relating to the oral warning confirmed on Red 14, 19X4 and the Red 13, 19X4 handwritten letter from SPE Jim Spe concerning performance. All papers relating to the six cases (serial nos. 000,003, 000,004, 000,007, 000,005, 000,006 and 000,001) brought to [applicant's] attention will be destroyed and no action relating to handling of the cases will be taken. The [PTO] and its personnel shall not submit these papers nor disclose the contents of these papers to the Office of Enrollment and Discipline.
The proposed settlement agreement had not been withdrawn when, on Brown 15, 19X4, he first applied for registration.
By seeking the destruction of all papers and the silence of Government officials, applicant sought to destroy and cover up the evidence of his conduct, conduct which he was obligated by § 10.7(b) to reveal. Registered practitioners are prohibited from suppressing evidence the practitioner or the practitioner's client has a legal obligation to reveal or produce. 37 CFR 10.92(a). Applicant's effort to have the papers destroyed and silence officials was a clear effort to suppress and conceal the facts from the Director of the Office of Enrollment and Discipline (OED), the person to whom he was legally obligated to reveal the facts.
*19 Applicant argues that he believed the settlement negotiations were proper because he understood that the PTO and a union representing patent examiners had previously reached such settlement agreements in the past. He also asserts that he understood that a contract between the PTO and union provides for the PTO to destroy all papers relating to an uncompleted adverse or disciplinary action when the employee resigns prior to receiving written notice of a proposed adverse or disciplinary action, and that the provision prevented the PTO from taking any further action whatsoever, including action by OED. [FN16] Whatever the source of his understandings, applicant did not seek confirmation or denial from OED. Consequently, applicant's understandings neither excuse nor justify his attempt to suppress the facts from OED. The provisions of the contract pertain to official documents proposing or imposing an adverse action or disciplinary action which would be entered into an employee's official personnel file. The agreement does not reach documents containing evidence of misrepresentation, such as PALM data base reports, notes, spurious office actions, and the contents of application file wrappers. Likewise, the contract does not reach such testimony.
While describing settlement negotiations in his Statement, applicant brought the proposed settlement agreement dated Brown 8, 19X4 to the attention of OED. The fact that applicant did disclose the proposed settlement agreement is a mitigating circumstance with regard to the settlement negotiations.
Applicant provided no suggestion in his Statement (i) that information in the "Contents" list of the applications had been changed, (ii) that notes to return the cases without mailing had ever existed, and (iii) that the original Notice of References Cited were replaced with different Notices having the same dates as the original Notices. Applicant does not dispute that the changed information in the "Contents" list was a misrepresentation. The Statement referred to a revision of the Office actions, but did not contain any information remotely describing the wholesale replacement of rejections under 35 U.S.C. 102(b) with entirely different rejections which not infrequently relied on different prior art. In his Statement, applicant was clearly less than fully candid about the transpired events.
Applicant acknowledges that the explanation in his Statement was very general and apologizes for not being more specific. In the [number deleted] months between the filing of his Statement and the issuance of the Order to Show Cause, applicant has had time to reflect on the sufficiency of his candor in his Statement. Applicant did not submit any further information while he waited to hear from OED. He now acknowledges the need for complete candor in dealings with OED. The instructions on the registration application clearly require complete candor:
BACKGROUND INFORMATION: Candor and truthfulness are significant elements of fitness relevant to practice before the United States Patent and Trademark Office. You should, therefore, provide the Office of Enrollment and Discipline with all available information, however unfavorable, even if its relevance is in doubt, with regard to the questions asked below. For each question answered "YES", provide a detailed statement setting forth all relevant facts and dates along with verified copies of relevant documents. Failure to disclose the requested information may result in denial of registration or in disciplinary proceedings under 37 CFR 10.22 should you become registered (original bold).
*20 Applicant answered "YES" to Question 10 below the instructions and submitted the Statement. Despite the fact that applicant's character and fitness were at issue, his Statement was less than completely candid, and he dealt with the matter as though honesty, reliability and trustworthiness are irrelevant traits to his fitness to practice.
The submission of incomplete Office actions to be counted as completed actions lacked honesty, reliability and trustworthiness. There is clear evidence that applicant did not intend to mail the original typed actions. Each action was accompanied by at least one note containing instructions not to mail the action, and to return the case to the examiner, e.g., after copying the references (see exhibits JS 17, JS 20, JS 21, JS 27, JS 28, JS 32, JS 39, JS 44, and JS 45 of the Declaration of John Spe, OED Exhibit 1). Applicant explains in his Response that he did not refer to the notes in his Statement because the notes were part of his "routine procedure." Nevertheless, the notes were intended to and did prevent the mailing of Office actions. The failure to mail typed, signed and counted Office actions was material to applicant's conduct because (i) it provided him with the opportunity to change or revise the action which had already been counted, and (ii) it provided applicant with the opportunity to delay preparation and mailing of actually complete Office actions.
The anticipation rejections in the '006, '005, and '007 applications were clearly bogus. There is no issue regarding applicant's technical competence. He acknowledges that in the available time he "pulled the best art that ... looked relevant" and that only after the actions were counted did he discover that the actions were deficient, and was "surprised at how bad they were." See page 3 of the Response. Inasmuch as applicant was surprised at how bad the original Office actions were, and he had pulled references which only "looked relevant," applicant clearly did not use any reasonable care in preparing the original actions. Therefore, he had reasonable cause to know before he submitted the actions to Ms. Ott for counting that the anticipation rejections in the original Office actions in the '006, '005, and '007 applications were without merit, and that he was avoiding his SPE's review of the actions by submitting the actions to Ms. Ott with notes to return the actions without mailing them. Applicant admits he was "almost obsessed with achieving perfection in the examining process." [FN17] Thus, he knew or must have known when he submitted the actions to Ms. Ott with the notes, and before he reviewed the actions prior to submitting them to his SPE, that the actions were incomplete and were not to be mailed. In effect, the need for revising the actions was premeditated. Applicant's explanations in his Statement concealed the existence of the notes and their significance.
Mr. Chief found the rejections for anticipation under 35 U.S.C. 102(b) in the original typed actions of claims in the '005, '006, and '007 applications to be clear error and spurious. Applicant does not dispute the finding and the record supports the finding. Applicant admits the Office actions in the '005, ' 006, and '007 applications as well as the '003, '004 and '001 applications needed revision. [FN18] Inasmuch as the anticipation rejections in the original typed actions for the '005, the '006, and the '007 applications were without foundation and were spurious, the original typed actions were incomplete, bogus actions, and their submission with the corresponding application file and Worksheet to Ms. Ott was a misrepresentation that the work was completed. Further, the information contained in the Worksheet representing completion of work was a misrepresentation and falsification of records.
*21 In the retyped action for the '001 application, applicant added a rejection of the only claim as being anticipated by a reference, and he added another reason for the rejection under 35 U.S.C. 112. In the retyped action for the '004 application, applicant dropped the art reference used to reject claims as being anticipated, he used different reference material to reject claims as being anticipated, and he added two rejections of claims under 35 U.S.C. 112. In the retyped action for the '003 application, applicant dropped his rejection of claims as being rendered obvious by a combination of references, he issued a notice of allowability with an examiner's amendment wherein he extensively amended the claims "solely to bring the claims into compliance with 35 U.S.C. 112, second paragraph, and to improve their form" whereas the original typed action did not contain any rejection of claims for not being in compliance with 35 U.S.C. 112, and he did not revise the title of the application although he had required the same in the original typed action.
Mr. Spe noted applicant's inclination to make rejections under 35 U.S.C. 112, and his attention to detail, including an inclination to correct every minor error. Applicant acknowledges his obsession with achieving perfection. The fact that the retyped actions for the '004 and '003 applications included rejections under § 112 which were omitted from the original typed actions not only reflects applicant's penchant for perfection, but also clearly shows that applicant had not completed his examination when he submitted the actions to Ms. Ott. Thus, the actions were incomplete, and applicant did not intend to permit the original typed actions to be mailed inasmuch as he had not addressed the § 112 issues in the actions. Moreover, the fact that applicant did not revise the title in the '003 application in the retyped action though he suggested the change in the original typed action shows the original action was bogus, at least to the extent of requiring the change. For the '001 application, he added to the § 112 rejection which was present in the original typed action. Individually or cumulatively, applicant's conduct in connection with the '001, the '004 and the '003 applications, including their submission to Ms. Ott, avoiding review by his SPE, with notes to return the actions without mailing them, clearly shows the original typed actions were incomplete and that applicant knew or must have known that they were incomplete when he submitted them to Ms. Ott. The need for revision was clearly premeditated.
On Orange 15, 19X5, applicant first became aware that there was a question regarding his good moral character and repute. The same day, applicant told Messrs. ADD, KLS and DNJ about the situation, and subsequently discussed it with other members of the firm. [FN19] Supporting declarations by Messrs. ADD, KLS, ASW, EDS, DNJ, and BIC (OED Exhibits 11-16) were submitted for consideration. All of the Declarants stated applicant's desire to do the best job possible irrespective of time constraints. The declarants, while praising his conscientious work habits, indicated that applicant was unable to determine when, within time constraints, further revision of his work product became unnecessary and non-productive. The declarants indicated that they were aware of the contents of the Order to Show Cause. They also indicated that applicant had made enormous progress in dealing with time constraints, and that the firm is prepared to provide him with increased responsibility including signing papers filed in the PTO as soon as he is registered. They are all convinced that applicant possesses good moral character and repute.
*22 At no time prior to Blue 3, 19X5, when applicant received the Order to Show Cause, was applicant fully candid with OED about his actions in handling the six applications. Except for his explanation of the attempted suppression through settlement negotiations, OED has been required to ferret out every bit of information concerning applicant's handling of the six applications, as well as his previous conduct which had prompted warnings about misconduct. Applicant believes that he did nothing wrong in writing the original actions and revising the actions prior to submitting them to Mr. Spe for review. Whether applicant believed he did nothing wrong, the submission of Office actions to be counted for credit containing spurious rejections does not demonstrate honesty and integrity required of professionals in the PTO. The examiners are on an honesty system, and are expected to be trustworthy, truthful and reasonably accurate in accounting for their completed work. The extent to which the original typed Office actions were changed or "revised" after receiving credit, the changes to the content of the "Contents" list on the application file to suggest that the searches had been conducted prior to the date credit was given for the counted Office actions, the presentation of new Notices of References Cited with old dates, and the presentation of applications for counting with notes that the applications were to be returned to applicant without mailing the Office actions were activities involving dishonesty, misrepresentation, and deceit which have a bearing upon applicant's moral character.
Applicant asserts that his problems with the PTO were caused by (i) stress due to his discomfort in talking with Mr. Spe about help and his perception that an adversarial situation existed after he filed [number deleted] grievances against Mr. Spe, (ii) stress in Grey, 19X3 when he was working 40 hours of regular time and 20 hours of paid overtime each week, going to law school at night and taking final examinations: and (iii) inability to reconcile his desire to do the best job as a patent examiner within imposed time constraints. Individually or cumulatively, these facts do not justify or mitigate the conduct involving dishonesty, deceit, and misrepresentation.
About the same time applicant filed his Response, he issued letters to PTO employees apologizing for the problems his actions caused. In the Response, applicant acknowledges the need for complete candor in dealings with OED, and states that he now recognizes that his actions in handling the six applications was wrong. He expresses remorse for the actions which led to this situation and the consequences of his actions. He states that the experience has taught him the desirability of avoiding even the slightest appearance of impropriety. Not until about the time applicant filed the Response to the Order to Show Cause did he first acknowledge that his "actions in handling the six applications were wrong." Even then, he has not acknowledged what was wrong. Until confronted by evidence, applicant refrained from admitting any wrongdoing. The apologies and remorse expressed in his Response represent a first step of rehabilitation by applicant to show his good moral character. However, the Response did not and applicant will have to present clear and convincing evidence to demonstrate present possession of candor and good faith before he can be considered for registration.
*23 The Supreme Court has held that:
By reason of the nature of an application for patent, the relationship of attorneys to the Patent Office requires the highest degree of candor and good faith. In its relation to applicants, the Office must rely upon their integrity and deal with them in a spirit of trust. Kingsland v. Dorsey, 338 U.S. 318, 319 (1949) (ellipses deleted). Applicant's preparation and submission of bogus, spurious Office actions for credit was conduct involving dishonesty, deceit and misrepresentation which does not meet the high standards of candor and good faith required of patent practitioners.
During the investigation, applicant continued to be evasive by representing that he believed at the time that the Office actions were proper and represented his best effort within the time constraints imposed by the Office. His explanations in the Statement for revising the original Office actions would have one believe that the changes were brought about by oversights or minor errors, and that the revisions involved insignificant changes. However, it is clear that the necessity for revisions was not due to minor errors or oversights, and that the changes in the retyped actions represented major changes which were material. He chose to produce and submit those original Office actions for counting, and to misrepresent facts in the file wrappers. Time constraints did not cause applicant to produce spurious, bogus Office actions, or engage in conduct involving dishonesty, deceit or misrepresentations. It is clear that he knew what he was doing. Applicant's attempt in a proposed settlement agreement to obtain agreement with PTO officials to destroy records and suppress the facts of his mortgaging activities from OED show his willingness to be less than fully candid when it is to his advantage. At this time, applicant has failed to meet the high standards of candor and good faith required of patent practitioners.
Applicant apparently now recognizes the need to rehabilitate himself inasmuch as he revealed his registration problems and the Order to Show Cause to members of the firm, and he has apologized for problems he caused and admitted that his handling of the patent applications was wrong. See OED Exhibit 17. Applicant's character and fitness to practice have not been established by the mere passage of time since the initial events occurred. In re Bellino, No. C9-91-632 (MinnSupCt1991). Likewise, weaknesses in character are not resolved simply by recognizing the need for rehabilitation, apologizing for causing problems, and admitting his handling of applications was wrong. Applicant must prove that his weaknesses have been fully overcome. He must produce evidence of positive acts that demonstrate that he has become fit to practice. Evidence relating to his business and personal dealings with others and to the responsibilities he has undertaken as an employee of the firm and as a member of the community can be relevant to his ultimate fitness to be registered. He must show through such evidence that he acts with complete candor, honesty, truthfulness, trustworthiness and reliability when given a position of responsibility. Further, the evidence must show that he understands and is committed to the proper administration of justice that may transcend his personal interests as well as the interests of particular clients. He must demonstrate an unquestioned and continuing capacity to comport himself properly as a practitioner in full conformity with the PTO's Code of Professional Responsibility. In re Mathews, supra.
*24 Accordingly, applicant's application for registration at this time is DENIED. Any subsequent application for registration by applicant must be accompanied by a showing containing objective evidence of complete rehabilitation.
APPEAL RIGHTS
This is a final decision by the Director which may be reviewed by petition to the Commissioner upon payment of the fee set forth in 37 CFR § 1.21(a)(5). Any petition for review of this final decision must be filed pursuant to 37 CFR 10.2(c) within thirty (30) days after the date of this decision. The petition will be decided on the basis of the record made before the Director, and no new evidence will be considered by the Commissioner in deciding the petition. Copies of documents already of record before Director shall not submitted with the petition. 37 CFR 10.2(c). Any request for reconsideration or review must be mailed to the following address:
Commissioner of Patents and Trademarks
U.S. Patent and Trademark Office (P.T.O.)
Box OED
Washington, D.C. 20231
FN1. The Declaration of John Spe (OED Exhibit 1) refers to a retyped Office action (exhibit JS 33), to "Searched" notes (exhibit JS 31), and to a new Notice of References Cited (exhibit JS 32) submitted with the retyped Office action in connection with the '005 application. The Affidavit of Examiner In Chief [a pseudonym] (OED Exhibit 7) refers to the specification, claims and drawing present in the '005 application and identifies these materials as exhibit EIC [pseudonym letters] 3. The Declaration and the Affidavit state that no copy of these materials have been furnished because the materials are subject to the provisions of 35 U.S.C. 122. Accordingly, copies of these materials were not furnished to applicant with the Order to Show Cause. By a letter dated Pink 30, 19X5 [pseudonym alphanumeral year] which accompanied the Order to Show Cause, and which was addressed to the attorney who represented applicant at that time, applicant's attorney was informed that upon signing a confidentiality agreement, he and/or applicant may review, copy and use the material in connection with applicant's application for registration. Neither the attorney nor applicant responded to the letter, and applicant is no longer represented by the attorney. The foregoing referenced materials are attached to this Decision as the following OED Exhibits: the retyped Office action in the '005 application referenced in the Declaration of John Spe is OED Exhibit 18, the "Searched" notes in the '005 application referenced in the Declaration of John Spe is OED Exhibit 19, the new Notice of References Cited in the '005 application referenced in the Declaration of John Spe is OED Exhibit 20, and the specification, claims and drawing present in the '005 application referenced in the Affidavit of Examiner In Chief is OED Exhibit 21. Again no copy of these exhibits is furnished to applicant at this time. However, upon signing a confidentiality agreement, applicant may review, copy and use the material in connection with his application for registration.
FN2. Mr. MM is an employee of the PTO. The record is devoid of any evidence that Mr. MM was authorized pursuant to 37 CFR §§ 15a.4 or 15a.5 to give any opinion or fact testimony on behalf of applicant. Accordingly, his letter will not be further considered.
FN3. Applicant states, "I updated my searches or researched when I considered it to be necessary." Page 9, OED Exhibit 8.
FN4. At page 8 in his Statement (OED Exhibit 8), applicant said with regard to the '095 application:
The original action rejected the application for obviousness. When I reviewed the action prior to submitting it to my SPE for his review, I realized I had failed to appreciate the significance of [information deleted]. Accordingly, I revised the action to allow the application.
FN5. At page 9 in his Statement (OED Exhibit 8), applicant said with regard to the '004 application:
In writing the original action, I failed to appreciate the very subtle point that, although the specification was enabling under 35 USC 112, first paragraph, [information deleted].
FN6. See page 9 of applicant's Statement (OED Exhibit 8) for the '001 application.
FN7. Applicant states in the second complete paragraph on page 3 of his Response (OED Exhibit 10) that he was "unable conduct a complete search of the prior art and thoroughly analyze the art [he] found with respect to the claims at the time [he] wrote the Office actions."
FN8. On page 9 in his Statement (OED Exhibit 8), applicant said with regard to the '006 and '005 applications:
In writing the original actions, I misinterpreted the references I originally relied upon. I discovered this when I reviewed the actions prior to submitting them to my SPE for his review. Accordingly, I researched the cases, found better references, and revised the actions.
FN9. In the penultimate paragraph on page 5 of his Response (OED Exhibit 10), applicant said:
No such modification ever occurred, or if it occurred, I was never informed of it. Nor would I have agreed to such a modification since it would have amounted to a de facto demotion from GS-XX [pseudonym grade] to GS-YY [pseudonym grade]. Also, the modification would have prevented me from verifying that the references I had cited in my Office actions had been copied properly, and would have made it difficult for me to ensure that the Office actions were mailed on time.
FN10. See the last complete paragraph on page 6 of the Response (OED Exhibit 10).
FN11. See the last two paragraphs on page 2 of the Response (OED Exhibit 10).
FN12. See footnote 6, supra.
FN13. See the second and third paragraphs on page 10 of applicant's Statement (OED Exhibit 8).
FN14. Applicant states on page 6 of his Response (OED Exhibit 10), "I began placing such notes on many of my applications shortly after I began typing my own Office actions in Yellow 19X3 when I discovered that one or more of my Office actions had been mailed without being signed by Mr. Spe or a primary examiner."
FN15. See last paragraph on page 6 of his Response (OED Exhibit 10).
FN16. See the first complete paragraph on page 7 of applicant's Response (OED Exhibit 10).
FN17. See page 10 of applicant's Statement (OED Exhibit 8).
FN18. See the discussion of the '003, '004, '007, '005, '006, and '001 applications on pages 8 and 9 of applicant's Statement and the third paragraph on page 10 of the Statement (OED Exhibit 8).
FN19. See the first paragraph on page 9 of the Response (OED Exhibit 10).
September 25, 1992
Cameron Weiffenbach
Director, Office of Enrollment & Discipline
DECISION ON REQUEST FOR RECONSIDERATION
*25 On September 16, 1992, Bertram Boe [a pseudonym] (applicant) filed a REQUEST FOR RECONSIDERATION (Request) of the Decision on Application for Registration dated August 17, 1992 (Decision).
Applicant seeks a decision on applicant's petition dated Red [pseudonym month] 9, 19X5 [pseudonym alphanumerical year] wherein applicant sought waiver of his undertaking under 37 CFR 10.10(b). Applicant will be notified in due course under separate cover as to any decision regarding his petition to waive the undertaking.
Applicant also requests reconsideration of his application for registration in light of (i) the standard for rehabilitation set in the Decision, (ii) the lack of a meeting with personnel to learn what the Office of Enrollment and Discipline (OED) expects of applicant, (iii) the weight given to the declarations by six partners of applicant's employer, (iv) the new declaration given by one of the partners, (v) the lack of balance between the "harm" to applicant and the patent system resulting from applicant being or not being registered, and (vi) applicant's perception of being excluded from practice.
The crux of this case is the fitness to practice before the Patent and Trademark Office (PTO) of applicant who, during the registration process, displayed lack of candor to the Director. The Patent Statute entrusts the Commissioner of Patents and Trademarks with the power to determine the standards for registration. 35 U.S.C. 31. A requirement for registration of all individuals is that they demonstrate they possess good moral character and repute. 37 CFR 10.7(a)(2)(i).
This good moral character requirement is a universal standard among the States of this country, and has been affirmed by the Supreme Court in Kingsland v. Dorsey, 338 U.S. 318.
Applicant's contentions that the standard for rehabilitation is too high and very vague are without merit. The Decision states:
Applicant apparently now recognizes the need to rehabilitate himself inasmuch as he revealed his registration problems and the Order to Show Cause to members of the firm, and he has apologized for problems he caused and admitted that his handling of the patent applications was wrong. See OED Exhibit 17. Applicant's character and fitness to practice have not been established by the mere passage of time since the initial events occurred. In re Bellino, No. C9-91-632 (MinnSupCt1991). Likewise, weaknesses in character are not resolved simply by recognizing the need for rehabilitation, apologizing for causing problems, and admitting his handling of applications was wrong. Applicant must prove that his weaknesses have been fully overcome. He must produce evidence of positive acts that demonstrate that he has become fit to practice. Evidence relating to his business and personal dealings with others and to the responsibilities he has undertaken as an employee of the firm and as a member of the community can be relevant to his ultimate fitness to be registered. He must show through such evidence that he acts with complete candor, honesty, truthfulness, trustworthiness and reliability when given a position of responsibility. Further, the evidence must show that he understands and is committed to the proper administration of justice that may transcend his personal interests as well as the interests of particular clients. He must demonstrate an unquestioned and continuing capacity to comport himself properly as a practitioner in full conformity with the PTO's Code of Professional Responsibility. In re Mathews, [462 A.2d 165 (N.J.1983) ].
*26 As to the burden of proof, applicant stands in the position of one whose character has been in question. It is reasonable to require convincing proof of full and complete rehabilitation. In re David H., 392 A.2d 83 (Md1978); In re Belsher, 689 P.2d 1078 (Wash.1984).
The standard for rehabilitation in the Decision is consistent with the types of evidence that have been found probative of rehabilitation. In re Mathews, supra; In re Jenkins, 467 A.2d 1084 (NJ1983). Rehabilitation is not an exact science based on performance of specified acts. To the extent applicant requests identification of positive acts which are "necessary for [him to do] to be registered," it is inappropriate to suggest that specific acts will necessarily result in applicant becoming registered.
A variety of evidence is probative of rehabilitation. For example, applicant must display complete candor in all filings and proceedings to become registered. The Director will weigh heavily applicant's attitude for candor in the future registration proceedings. Another factor is the absence of misconduct during the intervening years. Another factor is the trust of employers and coworkers, e.g., for accurate and proper billing by applicant for costs and professional services. Another factor is service to the community.
As for the duration of the period of rehabilitation, the period must be at least commensurate with the duration of the period of conduct which placed and kept his character in question. Compare, In re Polin, 596 A.2d 50 (D.C.App.1991). In this case, the conduct involves events prior to and during registration process. The conduct began prior to the registration process began with misrepresentations to the PTO in Indigo [pseudonym month], 19X3 and continued with evasions and attempted suppression at the PTO until [day deleted], Brown [pseudonym month] 10, 19X4, when applicant's resignation became effective. The conduct continued during the registration process with lack of candor to OED during the period from [day deleted], Brown 15, 19X4 to Yellow [pseudonym month] 11, 19X4, while applicant's first application for registration was pending, and thereafter with lack of candor and equivocal explanations to OED from Orange [pseudonym month], 19X5, when applicant reapplied for registration until the Decision in August, 1992.
Applicant's request for a meeting with OED to learn what is expected of him has been considered, but is deemed unnecessary. Complete candor has been and always will be expected of applicant. The registration application which applicant filed in January, 1991, contained the following statement:
Candor and truthfulness are significant elements of fitness relevant to practice before the United States Patent and Trademark Office. You should, therefore, provide the Office of Enrollment and Discipline with all available information, however unfavorable, even if its relevance is in doubt, with regard to the questions asked below. For each question answered "YES", provide a detailed statement setting forth all relevant facts and dates along with verified copies of relevant documents. Any documents, evidence or proofs previously filed in a prior application need not be resubmitted unless your response to a question must be changed. Failure to disclose the requested information may result in denial of registration or in disciplinary proceedings under 37 CFR 10.22 should you become registered (original bolding).
*27 Applicant's contention that essentially no weight was given to the declarations by six partners of applicant's employer is without merit. Applicant showed the Order to Show Cause (Order) to members of the firm where he is employed. Three of the six declarants (Messrs. KLS [pseudonym letters], DNJ [pseudonym letters], and BIC [pseudonym letters] ) indicated in their declarations that the Order was shown to them. Each of the six declarants attest to applicant's good work ethic, and express their opinion that based on their experience working with applicant that applicant possesses the moral character and repute required for registration.
Even assuming that all six declarants were fully aware of the contents of the Order, applicant's display of lack of candor with OED during the registration process stands in stark contrast to the opinions expressed by the declarants. Applicant's equivocations, such as he "misinterpreted" references and then first "discovered this when [he] reviewed the actions prior to submitting them to [his] SPE;" his failure to disclose the changes on the file wrappers, such as obliterations of search notes; and his failure to disclose notes directing the application be returned to him before mailing all reveal the same design. For each case, he denied adverse implications. Confronted in the Order with evidence to the contrary, including evidence as to the bogus nature of the original office actions he submitted for counting credit, applicant offered an inadequate and implausible explanation in the Response To Order to Show Cause of doing the "best job I could do in the time remaining." Simultaneously, he displays contrition for the problems he caused. The record shows a clear, unequivocal pattern for dealing with the PTO, including OED. The Director has rejected applicant's explanation of doing the best job in the available time as not believable. The pattern undermined the weight to be given to the declarations of the six partners of applicant's employer.
A new declaration given by Mr. KLS has been carefully considered. Mr. KLS refers applicant's conduct and work in assisting Mr. KLS during applicant's employment with the law firm of Smith & Jones. In doing so, Mr. KLS expresses his opinion that each time applicant has assisted Mr. KLS, applicant has acted with complete candor, honesty, truthfulness, trustworthiness, and reliability; that applicant's quality of work is excellent; and that applicant has demonstrated commitment to the proper administration of justice transcending his personal interests,
for example, by working long hours and weekends and postponing or cancelling [sic] planned vacations to assist [Mr. KLS] when necessary, and assuring that information of which [applicant] is aware which may be material to the examination of an application is provided to the PTO.
If applicant continues on the course described by Mr. KLS, it is probable that he will be able to establish rehabilitation. I my view, however, it is premature to draw that conclusion at this time on the present record. The Decision does not preclude applicant from again applying for registration after the appropriate period has passed for rehabilitation to occur.
*28 Applicant's argument that there should be a "balance between the harm to me and the patent system resulting from me not being registered against the potential risk to the patent system if I were to be registered" is not persuasive. There is no necessity to look for a balance. In Cupples v. Marzall, 101 F.Supp. 579, 583, 92 USPQ 169, 172 (D.D.C.1952) the District Court said that "the primary responsibility for protection of the public from unqualified practitioners before the Patent Office rests with the Commissioner of Patents." OED sympathizes with applicant regarding the "harm" he perceives. However, the protection of the public and the image of those registered to practice must have meaning. Therefore, cases such as this must be viewed in the cold light of objectivity without regard to sympathy. In re Jahn, 559 So.2d 1089 (Fla.19X4).
Lastly, applicant's perception of the Decision having the effect of the most severe disciplinary action of all, exclusion, is not well founded. The Decision did not state or imply that applicant is precluded from sometime in the future applying for registration.
I recognize that more than [number deleted] years have passed since applicant resigned from the PTO, and that he would have been registered shortly after is resignation if he had not engaged in misconduct while employed at the PTO. Nevertheless, this case involves not only past misconduct preceding the registration process, but continuing misconduct during the registration process. There is nothing in the record showing that applicant will be more truthful in the future to the PTO than at present. There is no evidence that he recognizes the wrongfulness of his conduct. He does not yet "stand free from all suspicions" as is required of attorneys and agents. In re Mathews, supra; In re Jenkins, supra.
APPEAL RIGHTS
This decision and the decision on applicant's application for registration may be reviewed by petition to the Commissioner upon payment of the fee set forth in 37 CFR § 1.21(a)(5). Any petition for review of this final decision must be filed pursuant to 37 CFR 10.2(c) within thirty (30) days after the date of this decision. The petition will be decided on the basis of the record made before the Director, and no new evidence will be considered by the Commissioner in deciding the petition. Copies of documents already of record before Director shall not be resubmitted with the petition. 37 CFR 10.2(c). Any petition for review must be mailed to the following address:
Commissioner of Patents and Trademarks
U.S. Patent and Trademark Office (P.T.O.)
Box OED
Washington, D.C. 20231
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