This final installment of patent examination types presents some examiner behaviors that are simply peculiar, and that interfere with or distort the examination process.
(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 a description is about you, it’s definitely not – it describes some other, lesser examiner.)
Examination Type #11: Silence Is Golden
The totality of the office action reads: “Claims 1 through 20 are rejected under 35 USC 103(a) in view of Reference X (see, e.g., paragraphs 12 and 19) and Reference Y (see, e.g., paragraphs 35 and 38).”
You contact the examiner and schedule an interview, during which you explain the technical field, and your client’s invention and its advantages. You review the language of the claims, and extensively explain how the references are different. The examiner sits silently through your presentation, and then says, “I will take it into consideration.”
The next office action reads: “Claims 1 through 20 are rejected under 35 USC 103(a) in view of Reference X (see, e.g., paragraphs 12 and 19) and Reference Y (see, e.g., paragraphs 35 and 38). Applicant’s arguments have been considered, but are unpersuasive.”
In contrast with the “Avalanche” examination tactic, this patent examiner’s goal is to reach a disposal of the application with the absolute minimum number of words. There may be many reasons behind this facade:
- The examiner may be extremely risk-averse, and may strive to avoid stating anything on the record that might be construed as incorrect.
- The examiner may not feel compelled to do more than the bare minimum of effort to complete examination. This may reflect latent animosity toward your application – or even toward your client. It may reflect time pressure, where the examiner only has thirty minutes to kick the next office action out the door (and may even admit as much – off the record, of course). Or, it may reflect the examiner’s general attitude toward patent examination.
- Given the (certainly praiseworthy) cultural diversity of the patent office, the examiner may be struggling with a language barrier, and may simply not be comfortable communicating at length.
Regardless of the cause, the examiner’s minimal communication is certainly not conducive to prosecution. In modern patent examination, a practitioner should never have to guess at the examiner’s interpretation of references or claim language. But as long as the office action is timely and specified in a proper form (i.e., uses the right boilerplate), it may be impossible to enlist anyone’s help – the SPE’s or the Ombudsman’s Office – in eliciting a more specific office action.
- Copy-and-paste rejections are this examiner’s bread and butter. If you do not amend your claims, even in some minimal way, it’s practically guaranteed that the final office action will be substantively identical to the non-final office action.
- This examiner also enjoys characterizing technical arguments as “moot” due to a “new grounds of rejection.” Yet, when you compare the current rejection with the previous one, you may find the differences to be extremely minor, such as citing paragraph 16 instead of 15 – or even nonexistent: the new rejection may be literally identical to the old one. (You can certainly ask for a new office action in these cases… but whether or not you’ll actually get one without filing an RCE is another story.)
- In some cases, the examiner might not want to explain why a reference corresponds to your claimed invention because the examiner doesn’t believe that it does. Rather, the examiner might only want an argument on the record about the difference between the reference and your claim. For example, the examiner’s SPE might have a favorite reference in the relevant area of technology, and may tell the examiner to make sure that the applicant distinguishes it prior to allowance.
- If you ask to interview the application with the examiner’s SPE, the examiner may sit silently through the interview. When you ask any questions, the examiner may look at the SPE for an answer. In a particularly frustrating scenario, the SPE will then express deference to the examiner’s judgment, saying that the examiner will take your arguments into account during prosecution. Responsibility for decisions in your case may be passed around like a hot potato.
“I’ll allow claims 5, 8, and 13 if you’ll cancel the rest.”
The principle of compact prosecution encourages an early resolution of easy decisions (openly acknowledging allowable claims, and quickly dispensing with claims that are clearly taught by the references), so that the applicant and examiner can focus on claims that are on the border of the prior art. In theory (and, occasionally, in practice), this process economizes the discussion and expedites the ultimate decision, for the benefit of the USPTO, the applicant, and the general public.
However, this discussion is still envisioned as a technical comparison of the claims to the references. Yet, some examiners approach the examination negotiation as a bargaining process over the total claim scope, with the goal of identifying a claim set that provides just enough claim scope to make the applicant happy, but not enough to get the examiner in trouble. Rather than a technical analysis, this examiner perceives patent examination and prosecution as a swap meet – a comparison of what each party wants, and some haggling resulting in an agreement in the middle.
It’s telling that these examiners are rarely interested in discussing the contents of each claim or the references. Rather, they seem to be judging the merit of each claim based on secondary considerations: Is the claim more than 3/4 of a page? Does it contain a mathematical formula? Does it recite a hyper-specific, intricate interrelationship of several parts?
But the most notable characteristic of this approach is the typical threat: “If we can’t reach an agreement, I’ll do some searching and then reject all of your claims under 103.” It’s disheartening that this threat is entirely consistent with 35 USC and 37 CFR, which provide very detailed instructions about whether a claim must be allowed or rejected in view of a particular set of references – but specify nothing at all about how much searching the examiner must conduct. An examiner is free to allow an application with absolutely no searching, or to conduct endless searching and issue an endless sequence of 103 rejections. Our patent law allows both tactics, and gives no indication of how much searching is too little (or too much!) As a result, examiners can and do use this discretion as a bargaining chip – which squarely conflicts with the spirit of our patent system, but totally in accordance with patent law.
- This examiner frequently cites time pressure as the reason for keeping the discussion non-technical: “I need to make a decision in the next two days.” An especially popular example is calling with a proposed allowance deal near the end of a by-week. On the other hand, particularly aggressive examiners may insist on receiving your agreement to an examiner’s amendment by the end of an interview or conversation, on penalty of having your application forevermore rejected. Responses like “I need to get my client’s consent to make such significant changes” only prompt the examiner’s irritation and skepticism.
- Unlike many other examiner types, this examiner is willing, and even eager, to discuss options for claim amendments – putting elements into the claim, taking elements out, making claim terms more terse or more specific, etc. It’s all part of the “wheeling and dealing” that this examiner enjoys: “I’ll allow the claim without this limitation, but only if you agree to make this definition more specific and state this specific condition.” Oddly, the claim amendments on which the examiner insists may have nothing to do with the cited references or the point of novelty: they simply adjust non-technical factors, like claim length and complexity, on which the examiner is basing the decision. (And on the other hand, haggling over the contents of claim language is more palatable to this examiner than discussing the technical content of the claims and references.)
- When asked why the broad independent claims aren’t allowable, this examiner will often say: “I need to consider those claims more closely, but I’m sure that I can allow these narrower claims. You should take an allowance of the narrower ones, and file a continuation for the independent claims.” If you accept, you’ll find yourself engaging in the same types of negotiations in the continuation – because the examiner’s objective isn’t to conduct a thorough evaluation of the broad claims, but to kick the can down the road.
Today’s office actions typically feature a standardized format and boilerplate language, which makes it easy to flip to the part of the office action that specifies the actual basis for the objection.
So it’s always, er, “interesting” to see an office action that widely deviates from the usual process by a wide margin:
- “The claims are rejected as they recite a ‘computer’ having a ‘processor.’ The term ‘processor’ can include the human mind, and activities occurring in the human mind are not patent-eligible subject matter.”
- “The claims are rejected as they utilize a negative limitation, which is not a valid claim limitation.”
- “The claims are rejected because they recite a computer executing specific instructions. However, the instructions could be provided as printed matter, and therefore have no limiting weight under the printed-matter doctrine.”
- “The claims recite a computer-implemented invention, but fail to provide either (1) a specific machine, or (2) a transformation of a physical article. Therefore, the claims fail to satisfy the machine-or-transformation test set forth in In re Bilski.”
- “The claims are rejected because they recite functional language, which is construed as an algorithm genus. However, the specification has not provided any species of this genus.”
- “A restriction requirement is being issued for all of the dependent claims. Applicant is requested to elect one dependent claim and to withdraw the rest.”
- “The title is objected to as not adequately ‘descriptive’.”
- “Dependent claims 2 through 18 are deemed not to present anything of additional value over parent claim 1, and are therefore rejected on the same basis as claim 1.”
- “The cited reference teaches features (X) and (Y), but not (Z). However, one of ordinary skill in the art would have thought to extend the reference by adding (Z) to (X) and (Y), and would have been motivated to do so because it would make the invention better.”
Some of these examiners are relying on long-outdated case law. Others are asserting peculiar views about claim requirements – often characterizing their claim style preferences as legal requirements. Still others are just “winging it” on highly creative pet legal theories.
These theories will rarely cite any portion of 35 USC, 37 CFR, or the MPEP as the basis for these novel rules of claim construction. That’s because there is no such basis – in fact, the rules of patent examination may explicitly prohibit some of these examination practices.
Invariably, these rejections pop like a bubble with minimal effort. A trip through FoundPersuasive or the MPEP discussion of the standards of patent examination will often yield a clear statement that addresses these quirky assertions. Simply asking the examiner for a legal basis for the principle will dispatch most of them, and a call to the SPE should resolve many others.