A Few More Useful Sections Of The Manual Of Patent Examining Procedure

October 16, 2009

in Prosecution Strategy,The MPEP,Useful Information

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

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.

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney

{ 1 comment… read it below or add one }

David Boundy October 16, 2009 at 1:48 pm

Sounds great. I’ve been using all these for years.

The result? Retaliation. I have two cases where I petitioned these issues (or rather the premature final rejection arising from them). In one case, the Technology Center director held that my act of filing papers to seek corrections of the examiner’s error was an abandonment of the application.

In other cases, the same T.C. Director –

(a) reframed my petition. T.C. Directors and the Petitions Office almost never decide the issue presented. Both consistently rewrite petitions into different issues, and then deny the rewritten issue.

(b) In another case, the same T.C. Director quoted back the Federal Circuit case I had cited, and said “It cannot be seen why…” and just overrode both precedent of the Director and the Federal Circuit to make up the law for himself. In a follow-up telephone call, he confirmed that he would not even look at the law, he would make it up for himself.

I used these papers by this T.C. Director in my presentations at OMB to kill the Continuations, Claims, and Appeal rules – this clown has given the PTO a bad black eye.

The law means nothing if it won’t be enforced. Granted, these events occurred during the depths of the Dudas/Doll years. One hopes that Director Kappos will make absolutely clear to T.C. Directors that they serve at his pleasure, and only for so long as he perceives them as helpful in carrying out his oath to “see that the laws are faithfully executed.”

If anyone from the PTO reads this and cares to root out a really bad apple who has already caused the agency considerable embarrassment and harm, you know where to find me. I’ll give it to you all on papers with the T.C. Director’s signature on the bottom.

David Boundy

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