October 16, 2009
2009, Michael E. Kondoudis
In my earlier post in this
series, I discussed a few sections of the MPEP that I have found
to be useful in some specific circumstances. This post discusses
a few more.
Some Help For When
Patentability Arguments Are Ignored
We have all received Office
actions in which the Office seems to have ignored patentability
arguments. In these situations, take a look at the following
sections of the MPEP:
707.07(f) Answer All
Material Traversed
In order to provide a complete application file history and to
enhance the clarity of the prosecution history record, an
examiner must provide clear explanations of all actions taken
by the examiner during prosecution of an
application….Where the applicant traverses any
rejection, the examiner should, if he or she repeats the
rejection, take note of the applicant’s argument and answer the
substance of it.
706 Rejection of
Claims
After the application has been read and the claimed invention
understood, a prior art search for the claimed invention is
made. With the results of the prior art search, including any
references provided by the applicant, the patent application
should be reviewed and analyzed in conjunction with the state
of the prior art to determine whether the claims define a
useful, novel, nonobvious, and enabled invention that has been
clearly described in the specification. The goal of
examination is to clearly articulate any rejection early in the
prosecution process so that the applicant has the opportunity
to provide evidence of patentability and otherwise reply
completely at the earliest opportunity. The examiner then
reviews all the evidence, including arguments and evidence
responsive to any rejection, before issuing the next Office
action. Where the examiner determines that information
reasonably necessary for the examination should be required
from the applicant under 37 CFR 1.105, such a requirement
should generally be made either prior to or with the first
Office action on the merits and should follow the procedures in
MPEP § 704.10 et seq.
*****
(emphasis added).
Some Help When There
Appears To Be A Policy of Rejecting All
Claims
I have been asked on more than
one occasion to offer suggestions on how to respond to Examiners
who appear to simply refuse to allow claims. This happens from
time to time in various art groups, for a variety of reasons.
While there is no “silver bullet” so to speak, the MPEP does
provide some help.
706 Rejection of
Claims
*****
Although this part of the Manual explains the procedure in
rejecting claims, the examiner should never overlook the
importance of his or her role in allowing claims which properly
define the invention.
Some Help For When Office
Actions Do Not Apply Cited Art
For any number of reasons, some
Office actions fail to apply cited art against the claims, except
to say that the cited patent teaches or suggests every feature of
the claims. In these situations, take a look at 37 CFR
1.104(c)(2), which is replicated in § 707 of the MPEP:
707 Examiner’s Letter
or Action
*****
(2) In rejecting claims for
want of novelty or for obviousness, the examiner must cite the
best references at his or her command. When a reference is
complex or shows or describes inventions other than that
claimed by the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence of each
reference, if not apparent, must be clearly explained and each
rejected claim specified.
(emphasis added).
Some Help for Pro Se
Applications
For all of you inventors out
there prosecuting your own cases, keep the following section of
the MPEP in mind:
707.07(j)(I) State When
Claims Are Allowable
I. INVENTOR FILED
APPLICATIONS
When, during the examination of a pro se application it becomes
apparent to the examiner that there is patentable subject
matter disclosed in the application, the examiner should draft
one or more claims for the applicant and indicate in his or her
action that such claims would be allowed if incorporated in the
application by amendment.
This practice will expedite prosecution and offer a service to
individual inventors not represented by a registered patent
attorney or agent. Although this practice may be desirable and
is permissible in any case deemed appropriate by the examiner,
it will be expected to be applied in all cases where it is
apparent that the applicant is unfamiliar with the proper
preparation and prosecution of patent applications.
The Law Office of Michael
E. Kondoudis, PC
Washington DC Patent Attorney
www.mekiplaw.com
