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[Retarius]

I have a case where upon a first office action rejecting all claims I submitted a very thorough amendment traversing all rejections - where in my opinion the rejection quality I would probably give a grade of "C" or "D" - not very good.  I recently received a second office action, again rejecting all claims.  This time, the rejections were word-for-word identical to the rejections made in the first office action.  There was a response to arguments section in the second office action where the examiner tried to boil down in 2-3 pages all of the arguments to seven high-level arguments - where no specific claims or arguments were referenced.  The perhaps greater problem, though, was the seven arguments mischaracterized my traversed rejections, and conveniently left out key language so that the seven arguments do not at all accurately represent what I stated in the initial amendment.

I have an interview scheduled with the Examiner next week, and have a very detailed agenda prepared where I discuss the mischaracterized arguments as well as many traversed rejections I made that were not included in the most recent "response to arguments" section. While I don't expect any success in the interview, I am thinking it is probably a good idea to go through the motions since this smells to me like an appeal.  I see no reason whatsoever to amend any claims. I'm thinking appeal since the way this has gone I don't believe I can make any headway with an unreasonable examiner who is motivated to put minimal time in furthering prosecution, or so it appears.

So my questions is if you would recommend the same course of action, or something different?

Thanks,
Retarius

[khazzah]

I'm thinking appeal since the way this has gone I don't believe I can make any headway with an unreasonable examiner

Absolutely. Impasse with the Examiner is my basic criteria for appeal.

If you have a few simple strong arguments, consider a Pre-Appeal Brief in conjunction with the Notice of Appeal. Much less work than an Appeal Brief.

[Retarius]

Absolutely Karen. PABCR is my usual approach rather than going straight for the appeal brief.  I guess my question is really twofold:

1. With the circumstances as I have described them, do you think an interview is a waste of time, and shouldn't be done? Or is it a necessary evil prior to filing the appeal just to show you made the effort?

2. Is it helpful, etc in furthering prosecution to involve the SPE at this stage? In my experience, most SPEs cover for their Examiner - especially early in prosecution - pretty much regardless of the poor effort made by the Examiner.

Thanks,
Retarius

[JimIvey]

1. With the circumstances as I have described them, do you think an interview is a waste of time, and shouldn't be done? Or is it a necessary evil prior to filing the appeal just to show you made the effort?

You've described my typical experience in prosecution.  Personally, I find interviews to be a huge waste of time and effort, but I'm on the West Coast.  If you're local, you might find it interesting.  For example, you might learn that the SPE won't allow your case no matter what you do.

2. Is it helpful, etc in furthering prosecution to involve the SPE at this stage? In my experience, most SPEs cover for their Examiner - especially early in prosecution - pretty much regardless of the poor effort made by the Examiner.

It hasn't helped me in any way.  In my last trip to Alexandria, I had 4 interviews and 3 resulted in agreement.  All 3 agreements were reneged when I submitted papers.  In one, the SPE was there and supported the reneging of the agreement.  In the one in which no agreement was reached, I learned that the SPE would not allow the case no matter what I did.  He believed that there was prior art "out there somewhere" and the examiner couldn't find it, so no allowance until the art was found -- i.e., never.

In all fairness, this was under Dudas.  My general sense is that things are getting better under Kappos.

I've given up on interviews altogether.  It's my understanding that examiners no longer have authority to allow cases.  Until you can interview someone with authority to allow a case, interviews are useless.

My typical prosecution goes OA, response, fOA, NoA/PABR, OA (non-final), NoA/PABR, OA, call the group director.  So much for "compact prosecution", huh?

Best of luck to you....

Regards.

[Retarius]

Jim,

Thats pretty darn grim. I find that I can generally be successful even with bad rejections/references with good arguments and amended claims when warranted - and the occasional PABR. What bothers me in this case is what really appears to be a shoddy job by the examiner and pretty blatantly misquoting and mischaracterizing my arguments in the previous amendment - that just seems so wrong and personally dishonest. I think I'll cancel the interview and just file NoA and PABR since I can't see this examiner doing a 180 because of the interview.

Thanks,
Retarius

[khazzah]

With the circumstances as I have described them, do you think an interview is a waste of time,

Ah, sorry, I didn't read your post carefully enough -- your real question was about the interview.

I would have an interview in this situation only if my client insisted, or if my client would be pleased by the idea that I left no stone unturned.

Personally, I haven't found interviews useful -- but I know other colleagues who swear by them. However, I believe most of the pro-interview folks routinely discuss *amendments* in the interview, ie, their clients are typically willing to amend to keep the case moving forward. I don't recall anyone saying they routinely persuade Examiners about an argument through an Interview.

If you want to see what a few Examiners and practitioners have to say about Interviews (and PABC), check out the comment thread to this post in the just-n-examiner blog:
http://just-n-examiner.livejournal.com/45721.html

Don't have any experience -- personal or anectdotal -- with involving the SPE.

you might learn that the SPE won't allow your case no matter what you do.

I talked to one inhouse counsel who said this was his main reason for doing Interviews: finding out that "nothing will make this allowable" was very valuable information to him.

I have an interview scheduled with the Examiner next week, and have a very detailed agenda prepared

I think very detailed agenda is a *bad* idea. Examiners simply don't have the time to go over all that. You need to stick to a few key points. Save the details for your Appeal Brief. 

[Robert K S]

I've been relatively successful with interviews, when I do them.  In two recent cases I got the examiners to admit that their rejections weren't very good and they promised either allowances or new rejections, which they came through with.  In one case I was surprised to find that my examiner had signatory authority and didn't need her supervisor on the phone in order to reach an agreement with me.

I've never done a pre-appeal conference request.  On balance over all the dockets I handle it seems to me like it would be more work to put those together than just to write the appeal briefs in every case.

[khazzah]

I've never done a pre-appeal conference request.  On balance over all the dockets I handle it seems to me like it would be more work to put those together than just to write the appeal briefs in every case.

I find the Summary of Claims to be a time-consuming part of the appeal brief. So a PABC saves me lots of time because I don't have to do that section.

I find PABC needs less time to prepare when I have one or two short arguments. And if those arguments have been made previously, PABC is a a no-brainer choice, since it amounts to a cut-and-paste. OTOH, if I have to spend time to make my argument short and sweet, PABC is not a clear best choice.

Another scenario when PABC might need less time than Appeal Brief is when there are lots of rejections. PABC takes less time because I don't have to address all the rejections.

[JimIvey]

"I've given up on interviews altogether.  It's my understanding that examiners no longer have authority to allow cases.  Until you can interview someone with authority to allow a case, interviews are useless."

Can you elaborate on that?  Do you mean all examiners, or just asst.?  Do you mean in general examiner-allowances are skimpy and examiners are letting the BPAI allow cases?

Well, like I said, I have some hope that things will slowly change under the Kappos administration back to where they were prior to the Dudas administration, but here are two anecdote to illustrate what I mean.

Here's one I've posted about a few times already.

Here's another.

The former pertained to a "second pair of eyes" review for some types of computer-related inventions.  The "second pair of eyes" was the second group of 3 superiors.  From what I understand, the first group of 3 superiors was much more widely implemented (perhaps universally).  For those counting at home, that's 12 extra eyes on the application that I can't talk to, and no patent of mine gets allowed except through them.

I have no idea if either of those 6-eyed hurdles remain in any groups.  To the extent they continue to exist, examiners under those groups have no authority to allow claims and, to a large extent, working with them is a waste of time, albeit a prerequisite for even getting your claims to those groups.

The latter experience linked above is an example of an SPE that won't allow a case no matter what you do.  From what I hear, that's still going on, though not universally and I don't know if it's any more or less widespread than it was a couple years ago.

So, in many instances, the examiner with whom you're negotiating has no real authority to allow a single claim of yours. 

Regards.

[JustAnotherExaminer]

In one case I was surprised to find that my examiner had signatorynegotiation authority and didn't need her supervisor on the phone in order to reach an agreement with me.

A separate authority.  Officially granted when you hit gs13.  Unofficially granted (generally) for telephone interviews when you walk out of the academy.  When I say unofficially, I mean the examiner can perform the interview by themselves but can never "reach an agreement" with you. Wink wink nudge nudge.  Aka, they can't check the agreement box on the interview summary or say make of record "allowable subject matter was agreed upon".  Instead, they have to use glossy phrases like "I will have an extremely hard time finding this", "This would be really close to allowable", or "I probably wouldn't be able to reject this".

P.S. Call me, I like to talk.

[PatentDave]

My experience is pretty much just as that described by JustAnotherExaminer.  It's a pipe-dream to think you could get a Notice of Allowance out of an interview, but seems like all previous posters agree on that point.  That said, I believe there's definitely value in interviews in particular instances. 

For one, getting the examiner (and hopefully the SPE) on the phone will help you assess how deeply entrenched they are and whether appeal is really the way to go - especially considering the appeal backlog these days.

In another instance, if you have a new (to the case) examiner who is dealing with a final rejection that was issued by someone now on the unemployment line, I think it's crucial to discuss the rejections with the new examiner to best gauge how to move forward.

There certainly isn't a whole lot of value in interviews these days.  Jim's comment above regarding the 3 out of 4 success rate makes me laugh because you know those examiners just eventually started nodding yes to get him out of their office knowing that they would later reject the amendment.  But I think to categorically pass on the interview every time is maybe not the best approach because there are situations where it has some value.

[Robert K S]

In one case I was surprised to find that my examiner had signatorynegotiation authority and didn't need her supervisor on the phone in order to reach an agreement with me.

A separate authority.

In my case, she said she had signatory authority, and I wouldn't have spent any time talking to her without her supervisor if she didn't assure me of that fact in the clearest terms.