During my time in patent prosecution, I have encountered many good patent examiners – those whose office actions are clear, persuasive, technically accurate, and consistent with law. I deeply appreciate these examiners’ efforts, because it reveals a clear course of action to recommend to my client – even if that recommendation is an abandonment.
On the other hand, occasional puzzlement and frustration arise from office actions that are, in various ways, unsatisfying. Over time, I have noticed consistent patterns of approaches to examination that evoke this reaction. Of these examination styles – the “dirty dozen” (edit: ended up being a baker’s dozen) – this article will cover the first three.
(Disclaimer: These observations are drawn generally from extensive interaction with the examining corps at large, and do not describe any particular examiner or application. If you’re an examiner and you suspect that a description is about you, it’s definitely not – it describes some other, lesser examiners.)
You’ve received a final office action for your invention, and you are baffled. Your invention is a new type of baseball bat, and the cited reference is a snow shovel. You politely pointed out the difference in your response, and the examiner just called your arguments “unpersuasive” without further comment.
What’s going on? The odds are good that you are facing an examiner who utilizes the “smell test” form of patent examination.
In baseball, the home plate umpire shouldn’t care about the outcome of the game, but should be singularly devoted to calling each pitch accurately, according to the rules of baseball. Similarly, a patent examiner should not care whether or not a particular patent application is allowed, but only whether the claims comply with the law and are technically distinguished over the closest references.
Some examiners seem not to understand this role. They are centrally concerned with exercising authority over which patents get issued. To these examiners, the rules of prosecution are mere formalities, requiring only a passing nod. The prior art does not inform their determinations – on the contrary, it is simply a tool or platform for the examiner’s personal judgment.
- The examiner’s central message about your application is: “I will only allow claims that…”, followed by instructions for amending the claims to conform with the examiner’s judgment. Any response except rigid compliance prompts an automatic final rejection.
- When asked about the current claims, the examiner does not present a logical rationale but expresses personal opinions, such as: “They’re just too broad.”
- The examiner isn’t interested in what the references teach, and responds to any such arguments with phrases like: “I just think that the reference teaches kind of the same thing.” Even if compelled that the cited references are irrelevant, the examiner seems unphased: “I can find a dozen other references teaching your invention.”
You submit your patent application with a careful, detailed description of a specific invention. You receive an office action suggesting that the examiner flipped through your specification, grabbed the angry red marker, and drew a big red “X” over your claims with the word: “NO.”
Some examiners don’t seem interested in the technology or the claims. Their office actions aren’t a point-by-point review of the claims, but a blanket dismissal. These examiners refuse to examine the application on its merits – they seem to want the application to just go away.
- The rejection doesn’t engage the body of the claim, but stops at the preamble. Claims involving computers may be rejected as “merely the operation of a general-purpose computer,” or as entirely falling within the “printed matter exception.”
- The office action rejects all of the claims under 35 USC 112, second paragraph, as “indefinite” – not identifying any particular term or phrase, but just rejecting the claim set in its entirety.
- The examiner seems uninterested in any explanation of the technology. The examiner might even make incorrect statements about the technology in the same interview, or after several office actions.
- The office action makes no attempt to correlate specific teachings in the references with claim elements. Rather, it wields references like a club to bludgeon the claims:
- A single paragraph of the reference – or even a single sentence! – is cited as teaching the subject matter of a dozen claims that present different subject matter.
- A claim is rejected citing huge swaths of the reference, such as “paragraphs 2, 5-8, 11-26, and 32-48.” This examiner doesn’t feel any need to be specific – surely, the claimed invention is somewhere in that 35-page block of text.
- A claim to a specific technique is rejected using an extremely basic teaching. A hyper-specific database query processing technique is rejected using a portion of a reference stating: “Computers are capable of processing data.”
- A simple claim is rejected using a sprawling combination of eight references, lashed together with generic obviousness language: “A practitioner would combine these references in order to make the technology better.”
Your patent application describes the world’s first coffee mug with a handle. Previously, all coffee mugs were simply tumblers without handles, and people constantly burned their hands and lost grip of their mugs.
The examiner rejects your claims citing an ordinary tumbler without a handle. You ask for an interview, which goes like this:
- You explain the advantages of putting a handle on a coffee mug. The examiner replies: “The claims don’t reflect that feature.”
- You point to the portion of the claims reading: “a handle attached to the body of the mug,” and a feature in a figure with a huge arrow pointing to the handle, and a label reading: HANDLE. The examiner replies: “The word ‘handle’ can mean anything. Lots of things have handles.”
- You point to the reference, and note that all of the figures show coffee mugs as a cylinder with smooth sides and no handle. The examiner replies: “Gripping the body of the mug is the same as gripping the handle. I don’t understand the difference.”
Return to step #1. Do not pass go. Do not collect patent.
Around and around the conversation goes, until the interview ends with the examiner saying: “We just don’t agree. You can take it up with the PTAB.”
This type of examination feels… slippery. It seems impossible to make the examiner acknowledge that the phrase:
- Has a specific meaning;
- Describes the technology in the specification; and
- Describes something different than the technology in the reference.
This type of examination is reminiscent of the classic Abbott and Costello baseball routine:
- What’s the guy’s name on first base?
No, what’s the guy’s name on second base.
I’m not asking you who’s on second!
No, who’s on first.
I don’t know.
No, I don’t know is on third.
This examiner pretends to have a blind spot: when looking at the relevant portion of a claim on paper, the examiner denies seeing any ink on the page.