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Topic: Suggesting Interference Question (Read 1188 times) |
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datuk
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Posts: 37
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Suggesting Interference Question
« on: Sep 21st, 2006, 11:43pm » |
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Suggesting Interference under 37 CFR 41.202 Suggesting an interference or see MPEP 2304.02.
Recently I copied Claim 1 from US Pat 7040539 and got a response from the examiner rejecting it under Para 2 of 112 and 102(e). The para 2 relates to "if the merchant determines to accept the check, processing the check to complete the transaction. " The examiner states that this is indefinite because it does not provide what to do in alternative ? For 102(e), the examiner use Martin (US 6390362). I am unsure what to do next from here as this is given as a FINAL and I tried to ask for a telephone interview but so far no response from the examiner. Wondering anyone here can comment ?
CK
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Isaac
Senior Member
Posts: 3472
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Re: Suggesting Interference Question
« Reply #1 on: Sep 22nd, 2006, 9:05am » |
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Call the examiner to ask about the interview. If the examiner does not return your call in one business day, call the examiner's supervisor.
It might happen that the examiner won't grant the telephone interview.
My guess is that the 112 rejection can be overcome with a trivial amendment to your claims. Your real problem is the 102(e) rejection.
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Isaac
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datuk
Newbie
Posts: 37
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Re: Suggesting Interference Question
« Reply #2 on: Sep 22nd, 2006, 9:33am » |
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Thanks but in my reply can I merely quote the reasons given for allowance in US PAT 7040539, at claim 1. I am relunctant to make any changes even minor as the claim has to be copied even with typo mistake. If you look at Claim 1 in US Pat 7040539 there is no AND linking the last two elements. All this is a bit strange to me as now that in the eyes of my examiner Claim 1 is unpatentable then is the patent valid ? Shouldn't the examiner sought to sort the issues out with the previous examiners for PAT 7040539. According to MPEP 2304.02, the examiner will have to take this up with the inventor in US PAT 7040539 to determine who is entitled to this and NOT whether it is patentable or not ?
CK
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biopico
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Posts: 434
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Re: Suggesting Interference Question
« Reply #3 on: Sep 22nd, 2006, 9:54am » |
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To better understand the examiner's final response:
Rejection based on 112, it is not patentable.
Rejection based on 102(e), it is not entitled to be issued.
Are you considering an appeal?
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Registered Patent Agent Specializing in All Areas of Biotechnology
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Isaac
Senior Member
Posts: 3472
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Re: Suggesting Interference Question
« Reply #4 on: Sep 22nd, 2006, 2:15pm » |
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I have no experience with interferences, so take this as simply my personal opinion, but adding the missing "and" should not prevent provoking the interference.
It might be instructive to look at the file wrapper of the patent you copied the claim from. The Martin reference was included on an IDS by the applicant and was applied as a secondary reference in 103 rejections against the applicant.
The applicant found some difficulty in overcoming the teachings of Martin and evidence of the difficulty is seen in the file wrapper.
In my opinion based on only a few minutes of effort, the reasons for allowance cited in your opponent's patent are unlikely to be directly helpful in the way you suggest because they are given relative to Moore and not Martin. It is not explicitly stated how claim 1 is distinguishable over Martin.
It is also possible that claim 1 means something slightly different in your specification and with your prosecution history.
I'd highly recommend getting some professional help. I am personally not competent to handle an interference proceeding, but I do believe that applicants with junior in time filing dates face an uphill battle in an interference proceeding.
You have probably posted too much information in an open forum. I've frequently found my own posts here showing up as search hits.
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| « Last Edit: Sep 22nd, 2006, 2:42pm by Isaac » |
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Isaac
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