A Few Ways To Get On The Bad Side Of Your Examiner

February 2, 2010

in After Final Practice,Prosecution Strategy

It is almost always in an Applicant’s best interest to maintain the best working relationship possible with an Examiner. After all, a happy Examiner is more likely to be a helpful Examiner. Also, despite the high turnover at the USPTO, you may very well be working with an Examiner again. So, staying on an Examiner’s “good side” is often good business.

There are many ways to get on the bad side of an Examiner. Some ways are obvious, while others may not be. An exhaustive list is impossible because just like every application, every Examiner is different. Nonetheless, from my many discussions with Examiners over the years, here are five sure-fire ways to get on your Examiner’s bad side.

The List

#5 – File multiple after final papers.

Remember – Examiners don’t get production credit for issuing Advisory Actions.

#4 – Present only a general argument with only generic citations to several pieces of art, without an explanation as to how the art supports the argument

Comment – It appears to me that leaving the grunt work to an Examiner is both unfair and a recipe for a poor Office action in response. Besides, specific citations of evidence tend to make an argument more persuasive. Also, keep in mind the requirements of 37 CFR 1.111(b):

In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.

Moreover, general arguments do not help a pre-appeal request for review because an Applicant cannot direct the panel back to the record when that record lacks specificity.

#3 – Submit a needlessly lengthy response inflated with numerous boilerplate paragraphs

Comment – No examiner needs a legal primer on the law of anticipation. Responses with paragraph after paragraph of boilerplate explanations of §§ 102 and/or 103 tend to lack clarity and can pose a challenge to even the most interested reader. Examiners are human and their natural inclination is to skip such paragraphs. This means that they may miss relevant, persuasive arguments, if they are embedded in or near these paragraphs. This also means that an Applicant is wasting resources writing paragraphs that will not be read by the Examiner.

Here, I would suggest taking a look at my earlier blog post on this subject.

#2 – Use uncommon terminology when there

are perfectly good and commonly acceptable terms of art

Comment – Under MPEP § 2111.01(IV) an applicant is entitled to be his or her own lexicographer. But, when an applicant chooses not to characterize an invention in terms that are consistent with commonly used and familiar terminology, he or she potentially impedes the examination of the application. For example, uncommon terminology makes an Examiner’s searching more difficult (i.e., time consuming). With limited time to examine an application, why force an Examiner to spend more time on the art search to the potential detriment of the Office action?

#1 – Attempting to bully an Examiner at an interview

With good fortune, you will be working in the patent profession for many years to come. With some misfortune, you will be back before that Examiner you just tried to bully. Enough said.

Honorable Mentions

1. Asserting that a rejection is somehow incorrect/deficient because claim features you just amended or added were not addressed in the rejections and/or are not found in the art. It seems both illogical and insulting to assert error based on claim features that were not present when the rejection was made. Instead, consider the following approach:

Without conceding the propriety of the Office’s characterization of the Smith widget, Applicant respectfully submits that Smith cannot teach the widget of claim 1, as presently amended.

2. Responding to a rejection by adding more claims with different combinations of previously presented limitations just to see if the new claims might be patentable, especially when (1) the original claims are left unchanged and/or (2) the applicant has argued that a rejection is traversed because the previously presented claims define over the cited art.

3. Reaching an agreement during an interview and then doing something completely different in the next response, without any explanation at all.

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© 2010, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney

{ 7 comments… read them below or add one }

Kip February 2, 2010 at 9:48 pm

What’s wrong with Honorable Mention #2?

As long as you provide reasonable arguments for the unchanged claims, I don’t see what is wrong with adding claims. In fact, adding claims seems like a good idea when your arguments for the unchanged claims are not slam dunks. Why add limitations to the independent claims unless you absolutely have to?

Patent Girl February 3, 2010 at 6:58 pm

I just discovered your website, which gives great practical advice.

Have you seen the latest guidelines on 101 from the Director of the PTO? The memo is dated 1-26-2010 and recommends amending ‘non-transitory’ to the claim, if the subject matter is covered by the specification.

Patent Girl

mike February 9, 2010 at 2:49 pm

Dear Kip, thanks for the comment. There is nothing “wrong” with doing this. Just keep in mind that you are creating more claims to examine, without new justifications. This takes time. Moreover, the Examiner may have to carefully study what you have submitted so nothing gets by him/her to be found in a quality review.

Babel Boy February 23, 2010 at 1:44 pm

I disagree with your premise that the best policy is to suck up to the examiners so they don’t dork you somewhere down the road. Although I do agree, as almost always, with most of the specific recommendations you make.

I would rather forgo the easy allowance and happy examiner and go to the CAFC with, or have my client litigate, a solid claim that wasn’t unnecessarily amended to appease the examiner.

Over and over you see the CAFC blaming the claim drafter for the poor claim, and we all know the reason was that the claim drafter was trying to save the client money by taking whatever the examiner threw out just to keep the examiner happy. My job is not to entertain or appease examiners.

I would suggest that practitioners treat examiners fairly within the rules and if the examiner fails to reciprocate and games the system, do what is right and forget about how the examiner feels about you.

mike February 26, 2010 at 3:00 pm

Dear Babel Boy, thank you for your thoughts. I’m not sure that I was advocating an approach as much as I was warning practitioners that they can easily and perhaps unknowingly upset an Examiner.

examiner jane doe March 1, 2010 at 1:28 am

Please add to the list: Canceling all the claims and adding all new claims. Or even just adding on a large number of new claims.

I would also bump up number 5 to number 1. But that is just my opinion. 😉

patty March 4, 2010 at 8:42 pm

Applicants are entitled to an AA if they file a Response within 60 days of a Final Office Action. A practitioner is remiss if he/she doesn’t try to file the Response within the 60 days so that an AA will be issued before a decision must be made whether or not to file an appeal without having to pay ext. of time fees. A practitioner should not weigh examiner count into the decision of filing the After Final Amendment within 2 months.

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