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Law Educator, Esq.
Law Educator, Esq., Attorney
Category: Legal
Satisfied Customers: 111679
Experience:  JA Mentor -Attorney Labor/employment, corporate, sports law, admiralty/maritime and civil rights law
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How to deal with patent examiner (purposely) ignoring claim

Customer Question

How to deal with patent examiner (purposely) ignoring claim limitations when citing prior art in a rejection?
Details: utility patent prosecution reached a point where examiner made up mind to reject unless I'd concede on a claim of very narrow scope, which I didn't take. In response to the rejection, I added strong limitations not found in prior art to the claim and was confident that would fend off 102/103 rejections, which appeared to be the case. However, examiner picked on the meaning of a common word (in an absolutely absurd fashion) from the added limitations and issued a 112 rejection on it. Further, examiner used it as the reason/excuse not to even consider the merits of the added limitations although examiner had no problem understanding what's claimed based on interview discussions and response illustrations etc. Interviewing this examiner has become a waste of time as the examiner didn't even want to spend time considering my arguments. I have no problem filing the appeal but would like to know: (a) is this kind of "shady" practice (raising a ridiculour 112 to avoid considering merits of claim) NOT against the laws and rules governing the prosecution practices? I haven't encountered this before in my own experience; (b) what's the best course of action to deal with this, particularly in formal appeal filing (don't think filing some complaints would go anywhere). Would highly appreciate an answer from an experienced patent attorney who has dealt with the same issue or has high certainty about the best approach.
Submitted: 11 months ago.
Category: Legal
Expert:  Law Educator, Esq. replied 11 months ago.
Thank you for your question. I look forward to working with you to provide you the information you are seeking for educational purposes only.
If you are not getting anywhere with the examiner and they are still rejecting your patent, then the only way to get the examiner to change their mind if they have not accepted your new submissions is by pursuing an appeal to the patent trial and appeal board and present your case to them, since they can overturn the examiner's decision. See: http://www.uspto.gov/patents-application-process/appealing-patent-decisions/patent-trial-and-appeal-board-ptab-faqs
IF you are at an impasse with the examiner, since they are generally not going to back down on their decisions and will stick to their guns even if you are presenting them your revised applications and proofs. The board of appeals is a bit more open minded and in the appeal you need to state each the examiner's reasons for rejection and then take them apart piece by piece with your proof that his grounds for limitation or rejection are baseless based on the proof you submitted to him previously. This is where the appeal board comes in, because they will look at each of your arguments and have no personal ego involved like many examiners do when they refuse to admit they are wrong.
Customer: replied 11 months ago.
Thank you for the fast response and the general info on appeal. I was hoping to get specific advice on whether the examiner's practice of using a 112 argument to avoid examining on the merits was legit by the book (I am aware of MPEP guideline on this as to minimize trivial, technical rejections and concentrate on the essential matters) or the examiner should have examined the claim on the merits. If the latter is true, how to best deal with it in an appeal, e.g., arguing that the rejection has omitted claim limitations? I hope this clarifies my question, originally asked as:(a) is this kind of "shady" practice (raising a ridiculous 112 to avoid considering merits of claim) NOT against the laws and rules governing the prosecution practices? I haven't encountered this before in my own experience; (b) what's the best course of action to deal with this, particularly in formal appeal filing (don't think filing some complaints would go anywhere).I am looking for advice based on IP prosecution experience dealing with this kind of perhaps less-than-common situations and pointing out specific rules and guidelines I can rely upon for my course of action. As always, if you think it's worthwhile for me to get a second opinion, please kindly release the question and without a doubt what you have kindly answered so far will still be highly appreciated.
Expert:  Law Educator, Esq. replied 11 months ago.
Thank you for your reply.
There is nothing illegal for him to make the 112 argument. He has to make some argument to justify his decision. Even though it is what you consider to be ridiculous, it is something he will have to justify to the appeals board. It is not illegal though.
We get examiners who come up with all sorts of excuses on denials, which is more frequent when they do not fully understand the patent and have too big of an ego to admit it. However, these examiners do not back down, if he is making the the rejection with the 112 justification for doing so. Changing their mind is not something that happens frequently if he has not done so based on your subsequent submissions and we find to save the client money and time the appeal route with that type of examiner is the most economical and expedient.
Customer: replied 11 months ago.
Thank you indeed for your additional comments. I agree that the appeal is the path to pursue which I already indicated in original question. I acknowledge your opinion that there's nothing against the rules for what these examiners do as mentioned above. However, I am aware that at least the MPEP briefly discusses this problem and discourages this kind of conduct, and I was looking forward to more specific advice with citing MPEP/CFR/CaseLaw on this and/or examples of actual arguments used in appeal for attacking this kind of conduct by those examiners.I would like to have this question released for a second opinion and apologize for not being able to give reviews for more than one answerer as restricted by the rules of JustAnswer.com
Expert:  Law Educator, Esq. replied 11 months ago.
Thank you for your reply.
These patent examiners many times have large egos, so you really are not going to change their minds if they are not accepting the supporting documents you are presenting them to change their decision. Anything myself or any other attorney will tell you regarding attacking the examiner to get them to change their mind is purely speculation and opinion of what may work but it ultimately will come down in most cases to your appeal and you proving your case in appeal.
I will opt out because this is not a case law research service and we do not provide in depth case law research due to cost of access of those sites borne by the experts. I wish you all the best. Good luck.