Chess, when played beyond a basic skill level, is not a game about pieces; it’s about reading your opponent.
Over time, I have reached a similar realization about patent prosecution.
The Code of Federal Regulations sets a high bar for the specificity of a typical office action:
37 CFR 1.104. Nature of Examination
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.
Even greater detail is required by various sections of the Manual of Patent Examining Procedure.
Despite those requirements, most office actions are surprisingly terse. A typical office action is laid out as follows:
Claims 1-20 are currently pending:
- Claims 1-4 and 10-20 are rejected under 35 USC 103 in view of the combination of references X and Y:
- Claim 1 provides elements: A, B, C. Reference X teaches A (see paragraph 35) and B (see paragraph 68). Reference Y teaches C (see paragraph 12).
- Claim 2 provides elements: A, B, C, D. In addition to the rejection of claim 1 above, reference X teaches D (see paragraph 14). …
- Obligatory 103 boilerplate: A person of ordinary skill in the art would have combined references X and Y because it would make the invention better.
- Claims 5-9 are rejected under 35 USC 103 in view of the combination of references X, Y, and Z:
- Claim 5 provides elements: A, B, C, D, E. References X and Y teach A, B, C, and D (see above), but do not teach E. However, Z teaches E (see paragraph 140).
- Response to Applicant’s Arguments: The arguments of the applicant have been considered, but (choose one):
- …are moot in view of the differently cited references.
- …are not persuasive. The examiner is entitled to the broadest reasonable interpretation of the claims, and still believes that the references cover the claims.
On its face, an office action is just a simple mapping of claim elements to snippets of the references, glued together with boilerplate. It looks like a rote, mechanical explanation – one that a text-matching algorithm could generate through lexical parsing.
However, the office action only states the basic conclusion of the examiner. It does not state why the examiner reached that conclusion.
Consider the following rationale on which the office action could be based:
- The examiner does not understand the technology.
- The examiner interprets the reference differently than the practitioner.
- The examiner has a problem with the claim language.
- The examiner is on the verge of allowing the application.
- The examiner is determined not to allow the application.
- The application may simply be a close call for the examiner.
- The examiner is under pressure from a superior who has a different opinion.
- The examiner is inexperienced, and just doesn’t understand how patent examination works.
- The examiner ran out of time while preparing the office action.
The invention may have been assigned to an examiner who doesn’t actually deal with this technology, and is totally unfamiliar with it. Or, the examiner may be generally familiar with the general field of the technology, but not the particular problem or technique involved in the invention. Or, the examiner may not have read the specification – only glanced at the abstract and the figures – and has reached incorrect conclusions about the claimed invention.
The examiner may understand this area of technology with high proficiency – sometimes better than the inventor or practitioner! – and may be reading the reference in the context of a rich, expert-level knowledge set. Or, the examiner may be reaching a different conclusion (reasonable or not) than the practitioner about the meaning of the language and figures of the reference.
The examiner may not understand the terminology or structure of the claim. Or, the examiner may not understand how the claim matches up with the disclosed invention. Or, the examiner may be using a peculiar interpretation for the mechanics of the claim: elements that the drafter considers limiting and critical may seem non-limiting and trivial to the examiner, thus dragging a vast, unintended swath of prior art into the scope of the claim.
The examiner may believe that the claims are allowable with only a few minor tweaks that tighten up perceived gaps of interpretation, or that move the case one inch further away from the closest reference. However, the examiner might not feel comfortable or permitted to state that consideration in the office action.
The examiner may have concluded that the entire invention is boring and old, and may not be allowable under any circumstances. Or, the examiner may just have a grudge against the applicant, the practitioner, or even the entire area of patenting. No arguments you provide will move the case toward an allowance – the examiner will simply ignore them, or tweak his or her position, until you give up, the SPE or PTAB forces the examiner to allow it, or the case is reassigned. (“The applicant’s argument is persuasive that the claimed invention is allowable in view of the combination of references 1 through 26. However, reference 27 teaches the element that’s missing from references 1 through 26. One of ordinary skill in the art…”)
The examiner may simply be having difficulty deciding what to do with the application. Some technologies, claims, and prior art references simply seem… weird, such that it’s difficult to pin down a specific meaning and make a clear determination. The examiner may actually want the applicant’s assistance in untangling a messy technology or field of art, but may be unable or unwilling to ask for help.
The examiner may be ready to allow the application, but may be receiving marching orders from a primary, SPE, art unit director, or QA specialist not to allow it. (“I know you haven’t found prior art that teaches the invention, but it’s got to be out there, so keep looking.” “Here’s my favorite pet article on this topic – I know it doesn’t squarely apply, but find some way to apply it.” etc.) Or, the supervisor may be micromanaging the examiner – “reject that case using my favorite pet reference” – and the examiner may not fully understand the supervisor’s decision.
Some examiners have even told me: “My primary won’t allow this case, but I expect to be receiving primary status in three months, and I’ll immediately allow it then – we just need to tread water until then.”
The application may have been assigned to a junior patent examiner who simply doesn’t understand how patent examination works, and can’t perform an adequate examination or articulate a clear rationale for rejection. The primary or supervisor may have been unavailable, or not thorough in assisting the examiner or reviewing the office action. So it may simply not meet the legal standards of prosecution or the practitioner’s standards.
The tight productivity constraints of examination can create problems when examination doesn’t go smoothly, and the penalties for missing examination deadlines can be steep. So the examiner might have simply… punted.
I’ve encountered a few instances of examiners who state outright: “I agree with the argument from your last reply, and I plan to change my position in my next office action. But for this office action, I simply couldn’t find anything better in time. If you just file the same claims again (and an RCE), I’ll update my search.”
That’s nine different types of rejection – and there are undoubtedly others. Each rejection type requires a different response (amend the claims, argue about the technology, negotiate, contact the SPE or the Ombudsman, file an appeal, refile the application, abandon the case, etc.)
However, the critical point is: All of these rejections present exactly the same office action. Every one will simply state: “Claim 1 is rejected under 35 USC 103 in view of the combination of references X and Y.”
In my experience, there is only one way to determine the rationale behind the office action: examiner interviews.
Interviews enable the practitioner to determine the temperament of the examiner, the prognosis of the case, and the effectiveness of various options. Also, interviews provide an opportunity for the examiner to state, confidentially, what’s happening behind the scenes, and whether or not certain options will move the case forward.
I have frequently walked into an examiner interview fully expecting one type of rejection, and been totally surprised to find myself facing a totally different situation. Office actions that seem dismissive and superficial may have inadequately expressed a thoughtful, nuanced perspective (sometimes due to language barriers, given the cultural diversity of the USPTO). Examiners who seem cooperative and persuadable on paper may be callous and dismissive in person. A more comprehensive understanding of the status of examination, achieved by an examiner interview, enables a more informed evaluation of the applicant’s options.