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Strategy after Final / Examiner's counts / References don't teach
Posted by Anonymous . updated on 2/26/2009
History:
1) Examiner initially rejected claims over a first reference;
2) We slightly amended independent claims to clarify one limitation and argued that the first reference failed
to teach the claimed limitations;
3) Examiner stated our argument was persuasive, withdrew the rejection, and then rejected all claims over
second and third references - Examiner also stated that our amendments necessitated new grounds of
rejection - this is not true since the clarification in 2) was minor and new references were not directed
to that but there is no point in getting into that;
4) Upon thorough reading, we find that second and third references also fail to teach our claimed limitations.
Possible Approaches:
a) File RCE so that the Examiner gets his extra count - make no change in claims and show that second and
third references fail to teach claimed limitations;
b) Same as a) but make some minor amendment to make it easier for Examiner to back down; or
c) File a response to the final action (within first 2 months) which makes no amendment but presents
argument that second and third references fail to teach claimed limitations.
Question:
Do you feel there is any reason not to try c) before progressing to a) ?
Thanks for any comments and/or suggestions.
Answers (8)
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mk1023
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Quote from: jc4patents on 06-06-08 at 05:16 pm Possible Approaches:
a) File RCE so that the Examiner gets his extra count - make no change in claims and show that second and
third references fail to teach claimed limitations;
b) Same as a) but make some minor amendment to make it easier for Examiner to back down; or
c) File a response to the final action (within first 2 months) which makes no amendment but presents
argument that second and third references fail to teach claimed limitations.
If you're local why not request an interview with the examiner and his/her SPE.
I would try an interview first (if this is a new examiner they probably won't say no even after final). If you don't want to that I would go ahead and do c). If that doesn't work and you don't want to appeal I would go with b) (see MPEP 706.07(h) II).
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jc4pate...
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mk1023 ----
thanks - I remember that you know the subject of counts very well so let
me ask the following
if I go with c), would the Examiner be reluctant to seriously consider our arguments
because he will not get the extra count that he will by rejecting again and forcing
us to go with an RCE ?
On the different subject of interviews, I am reluctant to go with them where the claimed
material is complex (as it is in this application) because it is difficult to cover such ground
orally and I have found in the past that one side says the references don't teach, the other
side says they do and you are stuck because people don't generally back down and reconsider
orally - if it is well written, they feel more free to go over it and consider carefully.
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mk1023
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If the examiner thinks thinks they're right then arguments probably won't be seriously considered (especially if the examiner is a more senior employee). If the employee is junior and maybe legitimately missed something (not a question of interpretation) then they can be convinced especially if they meet you via an interview (I'm always more conscientious with cases I've interviewed). Primaries need more counts and would be more likely to game you by trying to force an RCE. If the examiner is a primary, maybe an RCE would be the easier option if you don't want to appeal.
If you can't clearly point out the errors in the OA to a SPE then I agree an interview wouldn't help you much. You'd also have to have a SPE that takes the process seriously.
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MacGyver
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I hate to be a hardass, but first of all, it's not really "a count" that the examiner would be getting. It's 2 counts. But that technicality might be better saved for another day. I would like to offer advice but maybe I shouldn't in this particular case.
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jc4pate...
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thanks, MK1023, for your thoughts
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horsech...
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Welcome to the world of patent prosecution.
If you file the RCE, it is likely the examiner will do a new search, with the hopes that he will either get narrower claims he can allow, or that he can use to somehow continue this process to get more RCE's, like a string of fish on a wire.
Any examiner who did (has done, etc.) this job a long time knows this is the fundamental game of patent prosecution, as there is almost alway better art to find, and counts to receive for doing so.
My view is that it is best to take your last response, if possible, and turn it into a pre-appeal brief. Now the examiner is responsible to other people, and the game is getting semi-serious. It should not cost your client much money to do this, either. If the examiner re-opens, then from that point on he will at least be giving you the best art and not playing games and you will probably be getting a stronger patent. If he allows it, then great. The vast, vast number of examiners allow cases when an appeal is lodged and it is obvious you are going to go the whole route. One other thing I have observed from watching the really great and experienced prosecution experts is that they like to get all the art in front of the examiner, and won't hesitate to appeal, since everyone knows it is very, very hard for examiners to win at the board.
This is just one mans opinion, but the nuts and bolts of patent prosecution (aside from interference practice) are really quite simple, even though the technology may not be. Sure there are some rules and dates to know, and if you practice in the area of chemistry/biotech you really need to some of the case law. But the back and forth between the applicant and the examiner is in reality adversarial and quite like a chess game, and I believe that what I said above is the best strategy.
HC
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jc4pate...
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horsechute - thanks for your strategic thoughts - I am going
with the RCE path but we will see if the Examiner plays
games as you predict
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horsech...
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Sure. It is like the examiner is playing the Queen's Gambit, and it is usually better not to accept the pawn (RCE). We'll see how much KSR shakes up my statement about examiners seldom winning at the board, but I doubt it will very much.
Best regards,
HC
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