Unwritten rule #1 of patent examination: If a reply to an office action includes no claim amendments, the examiner can simply copy-and-paste the last rejection.
This unwritten rule is applicable even if:
- The office action is plainly wrong about the references.
- The references are completely unrelated to your technology, and it’s difficult to understand why the examiner even cited them.
- The rejection cites references that do not qualify as prior art.
- The rejection totally disregards claim language, and perhaps even entire claims – neglecting even to acknowledge that some of the claims are pending.
No matter how brilliantly you assert these arguments, some examiners will not even consider them – the examiner will glance at the portion of the reply providing the claims, see no amendments, and blithely toss the reply aside. Then the examiner takes the previous office action, which reads:
Claim 1 is rejected because Reference A teaches (x) (y) (z).
…and prepares a final office action reading:
Claim 1 is rejected because Reference A teaches (x) (y) (z).
RESPONSE TO ARGUMENTS
Applicant’s arguments have been considered, but are unpersuasive because Reference A teaches (x) (y) (z).
Control-C, Control-V, Send. With those keystrokes, the examiner earns about 10 hours of productivity – at the expense of your client’s budget, and several months of wasted patent term. 1
Should examination be conducted this way? Not at all. Examiners are obligated to give due consideration to every one of the applicant’s arguments.
Is examination conducted this way? Yes, very often, because examiners usually aren’t held accountable for failing to consider the applicant’s arguments.
What are the options for responding?
- You can ask the examiner for help. More often than not, the examiner will glance at the claims, draw a big circle around the lengthiest ones, and state: “You should amend claims 2 through 8 into claim 1.” If you accept this proposal, your client gets a patent that is far narrower than the prior art reasonably requires.
- You can ask the examiner’s SPE to join you in an interview. Some SPEs will agree to participate, listen to your arguments, and then tell the examiner that they’re wrong. Some SPEs will agree to participate, sit in the interview with a glassy stare, and occasionally say, “I support the examiner.” And some SPEs will flat-out refuse to get involved.
- You can file an appeal. Go ahead, pay the expensive appeal brief costs, and spend a few days writing up your arguments with painstaking clarity. The PTAB will review it and issue an opinion explaining that you’re correct… four years from now. In the interim, the examiner has been promoted to primary, changed art units, or left the USPTO – i.e., there’s a good chance that the examiner will face no repercussions for having been wrong.
This is an ideal scenario for amendments that clarify the claims, without significantly limiting them. The purpose of a clarifying amendment is to add elements to the body of the claim that explicitly specify limitations that are already stated elsewhere in the claim or are necessarily implied, and that call out a point of novelty in a way that an examiner cannot reasonably dodge. 2
Example: Your client has invented a square Frisbee (perhaps with the corners slightly rounded to reduce liability a bit). The square shape provides a surprising improvement in aerodynamic stability. Claim 1 recites: “A toy comprising: a square frame…”
The examiner rejects it in view of Reference T, showing a triangular projectile. The examiner asserts a “broadest reasonable interpretation” of the claim term “square” as including a variety of equivalent geometric shapes, or that PHOSITA would interpret a triangular frame as functionally equivalent to a square frame in this context.
Of course, the examiner’s position is untenable for a variety of reasons. Your specification presents a lengthy and brilliant discussion about the unexpected aerodynamic benefits of square frames over triangular frames. Prophetic statements in Reference T teach away from a square frame as “incapable of flight.” Also, well, basic geometry.
Nevertheless, if your reply only presents these arguments and no claim amendments, you might receive a copy-and-paste final rejection. The office action might even explicitly dismiss your arguments as “attempting to import limitations from the specification into the claims.”
Instead, you could amend claim 1 to provide: “A toy comprising: a square frame having four sides, wherein respective sides form a 90-degree angle with an adjacent side…” (Dependent claims can further specify that the 90-degree angle can be rounded.)
Of course, this description is entirely redundant with the term: “a square frame.” However, this amendment adds distinguishing claim language that this examiner must explicitly address in the next office action. If your reply focuses on this amendment and the obvious difference of this claim language from Reference T, the odds are greatly improved that the next office action will explicitly state that, yes, Reference T does not teach these elements of claim 1.
In a perfect patent system, this type of clarifying amendment is never necessary and has no effect on prosecution. But in dealing with the organization on Dulany Street, clarifying amendments can advance prosecution by overcoming references while not meaningfully limiting the claim, and therefore are a useful tool in the patent practitioner’s toolkit.
- In fact, copy-and-paste office actions have even worse consequences:
- A reply to a final office action with no claim amendments can prompt a first-action final rejection to the RCE. This is even worse for the applicant – RCEs are expensive, and this tactic effectively robs the applicant of an entire round of prosecution – and even more tempting for the examiner, who earns a full 20 production hours with virtually no effort.
- By issuing a carbon-copy rejection, the examiner is digging in and doubling down on the stated rationale. Even if you later convince the examiner that the rationale is completely wrong, the examiner may be reluctant to change position and admit, after a string of identical office actions, that the claims are allowable over the references. Some examiners are so adamant about avoiding this that they will stand pat on an argument that they know to be specious, all the way up to the PTAB, rather than changing position in the absence of claim amendments. (Yes, this is a thing that happens.)
- Just to distinguish “clarifying” claim amendments from other types that are not as effective:
- Amendments to the preamble. The legal rule of whether the preamble is limiting is: “Does it ‘breathe and meaning into the claim?'” The examiner’s rule of whether the preamble is limiting is: “The preamble is never limiting.” Relying on any part of the preamble to distinguish a reference is a losing argument.
- “Wherein” clauses tacked onto the end of the claim, such as: “wherein the noble gas is xenon.” Examiners may or may not give due consideration to these amendments, so these clauses may add limitations (according to a court) while not improving the distinction of the claim over the prior art (according to the examiner).
- Characteristic / result clauses, such as: “the solar cell exhibiting an efficiency of at least 20%.” Examiners will typically ignore these elements as simply descriptivelangauge that does not “positively recite” any structure or function – even the odds that a court will find them essential limitations are approximately 1,000%.