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Patent Examination

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  • Excellent presentation. Unveils the workings of the patent examiners and how to prepare and respond. Strategic outline and tactical points to keep in mind when dealing with rejections.
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  • 1. PATENT EXAMINATIONHow a Patent Examiner Handles Your Case Doc. # 431,847
  • 2. PATENTABILITY ISSUES Minor informalities Objections Rejections
  • 3. MINOR INFORMALITIES Content issues (i.e. headings, abstract, format) Spelling Figures – item numbers described, but not shown in the figures; item numbers shown in the figures, but not described in the specification
  • 4. OBJECTIONS Claim objections – informalities in the claims Description objections – subject matter in the original claims are not supported by the description
  • 5. REJECTIONS 112-1st paragraph 112-2nd paragraph 101 102 103 Double patenting
  • 6. 112-1st PARAGRAPH Enablement Lack of written description New matter – this it the main one. If you amend the claims, don’t just tell the examiner that it is supported by the specification as originally filed. Identify the support specifically (i.e. page and line number or Figure)
  • 7. 112-2nd PARAGRAPH Lack of antecedent basis – do not refer to a claim element as “said element” if the element has not been previously introduced Unclear claim – examiner doesn’t know what you are claiming
  • 8. 35 U.S.C. § 102 102(a) 102(b) 102(e)
  • 9. 102(a) “the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent” Generally, used for any publication (except US Patents) dated < 1 year before your effective filing date
  • 10. 102(b) “the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States” ANYTHING published > 1 year prior to your effective filing date
  • 11. 102(e) “the invention was described in –  (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the application for patent or Used for US patent publications having an earlier effective US filing date
  • 12. 102(e) (cont) (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language” Used for issued US patents and PCT publications having earlier effective US filing dates
  • 13. EFFECTIVE U.S. FILING DATE The effective U.S. filing date (EFD) of a reference is the date of the earliest U.S. Application or PCT application designating the U.S. that supports the disclosed subject matter used against your claims  For continuations or divisions, the EFD is the same as the parent case EFD  For CIP, EFD for claims supported in parent is the filing date of the parent
  • 14. EFFETIVE FILING DATE (cont) For an application claiming foreign priority, the EFD is the date the application was filed in the US (but the foreign filing date can be used to overcome certain rejections) For an application claiming priority to a provisional application, the EFD is the filing date of the provisional for all claims fully supported in the provisional application
  • 15. 35 U.S.C. § 103 Obviousness rejection  Very hard to quantify and explain, but basically neither Reference A nor Reference B individually teaches everything that you claim, but when Reference A and Reference B are combined, your invention is suggested. There must be some “motivation” to combine the references
  • 16. DOUBLE PATENTING 101 – Duplicate claims in granted patent or pending application (at least one common inventor or assignee); TD will NOT overcome the rejection; you must either amend, argue, cancel, or abandon In re Schneller – it is in MPEP, but you’ll never see it. It is essentially confined to its facts; rejection must be signed by TC director Obviousness type – generally just file TD unless the claims were restricted
  • 17. WHAT IS THE EXAMINER THINKING?!?!?!?! Is the examiner told to reject? Is the examiner only allowed to issue a certain number of patents? Why doesn’t the examiner explain the rejection better? Doesn’t the examiner realize that the reference is irrelevant?
  • 18. TYPES OF REJECTIONS Shotgun rejection – reject all claims in one very short, not well explained rejection; let the attorney/agent argue/amend Claim by claim – usually very detailed, directs you to column and line number within the prior art, examiner’s position usually pretty clear (even if incorrect) C.Y.A. – most dangerous rejection
  • 19. THEORY OF REJECTIONS “Throw it out there and see what they say” “This is too broad, it MUST be out there” “You’ll never get a patent” Good rejection
  • 20. HOW TO ARGUE A 102 REJECTION Find the missing claim element  You claim a widget comprising A, B, & C  Your “invention” is A, B, C, D, E  Reference 1 teaches A, B, C, G, H  That is a good rejection  Don’t argue that you have D and E because you haven’t claimed it (very common mistake)  Don’t argue that Reference 1 requires G & H because you have used “comprising” language
  • 21. HOW TO ARGUE A 102 REJECTION (cont) You claim a widget comprising A, B, C Reference 2 teaches A, B, D, E, F Your “invention” is A, B, C, D, E, F Bad rejection  Argue that Reference 2 does not teach C
  • 22. HOW TO ARGUE A 103 REJECTION Do NOT argue that the reference is for a different purpose Do NOT argue the number of references, it doesn’t matter if motivation is present Find missing elements in the references (i.e. you claim them, references don’t teach them) Attack the motivation Do NOT argue that similar claims were allowed in a different case pending before a different examiner
  • 23. INTENDED USE Do not argue intended use The intended use does not matter, it is not a limitation
  • 24. EXAMPLE Claim 1. A composition for coating a potato chip comprising polyvinylpyrrolidone. Claim 2. A potato chip coating comprising polyvinylpyrrolidone. Reference A teaches a carpet cleaning composition comprising polyvinylpyrrolidone. Can Reference A be used to reject either claim?
  • 25. ANSWER Reference A can reject claim 1, but not claim 2. For claim 1, “for coating a potato chip” is the intended use and does not provide patentable weight. For claim 2, a “potato chip coating” is not the intended use, it is the article claimed
  • 26. WHAT AN EXAMINER DOES Is the case a DOG? 1st thing – look at claims  number of claims and length of claims  If there are too many claims or long complicated claims, try to pass the case off on someone else or restrict 2nd thing – look at the specification and figures  Girth – how long is the specification, the shorter the better
  • 27. TIMING Patent examiners have to process a certain number of applications per quarter End of the fiscal year (i.e. September) or end of the quarter, an examiner might be easier to convince to allow the case Beginning of the fiscal year (i.e. October) or beginning of the quarter, an examiner is more likely to reject
  • 28. WHAT AN EXAMINER IS TOLD BEHIND THE SCENES Don’t allow too much, check historic ratio It’s OBVIOUS Don’t be the “1-click” examiner or “paper football” examiner
  • 29. WHAT HAPPENS BEHIND THE SCENES Quality Review – not every case 2nd pair of eyes – paranoia, primary can’t make decision, SPE determined How much time the examiner has Law doesn’t matter, only facts Special cases and order of examination The number of cases an examiner handles
  • 30. SUGGESTIONS Short application, 25 pages or less ideally Key to the invention – make sure it is in the claims, don’t try to claim junk If you are basing you invention upon selecting a number or range, have unexpected results or else it will be obvious Not too many claims – if you go over 20, ask yourself whether or not you really need it 3 independent claims – broad as you think the prior art will let you go; as narrow as you could commercially go; 1 “tweener” claim IDS – file what you need to file, but don’t file duplicates; most examiners do not like large IDS
  • 31. SUGGESTIONS Be concise in your arguments Don’t cite case law – the law doesn’t matter at this stage, just the facts Call or meet with the examiner – most final rejections are because the attorney does not understand the examiner’s position and vice versa Avoid the RCE – put forth your best claims in your ROA Know the difference between a restriction and an election of species – DO NOT CANCEL UNELECTED SPECIES!!!!!! If you amend the claims, direct the examiner to the specific location within the specification where support can be found
  • 32. SUGGESTIONS Argue the claims, not the invention Realize that you are not gaining anything by stating that you “disagree with the rejection, but in order to advance prosecution, you are amending the claims”
  • 33. FIRM REPUTATION Remember that you are representing the client and this firm Your actions reflect on all of us Patterson & Sheridan, LLP has a good reputation among the patent examiners

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