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[MrTracy]

Any advice on the following?

During a reexamination, in response to a first office action, I made an amendment to one of the claims to fix what I thought was an obvious typographical error.  Basically, the claim as issued recited:

1. A . . . . . , comprising:
     a . . . ;
     a pair of shaded poles . . .;
     a . . ., wherein said shaped poles . . ..

I amended the claim, changing "shaped" to "shaded" because I thought this was an obvios typographical error (e.g., "said shaped poles" does not agree with the antecedent bases "shaded poles" and there is no discussion of "shaped poles" in the patent). 

The Examiner issued a final rejection, alleging that the amendment described above is a broadening amendment (violating 35 USC 305).  All other claim rejections were withdrawn.

Any advice for the best way to handle this?  Can I traverse and then withdraw the amendment in order to expedite prosecution?  Or would that have a detrimental affect on claim interpretation when the patent owner attempts to enforce this patent?

I am hoping not to have to file an appeal on this issue.

Thanks!

[JimIvey]

Any advice for the best way to handle this?  Can I traverse and then withdraw the amendment in order to expedite prosecution?  Or would that have a detrimental affect on claim interpretation when the patent owner attempts to enforce this patent?

My inclination would be to traverse (the rejection is ridiculous), but I'd do whatever you can to get past the issue.  If you work in the arts I work in (not unlikely since the rejection is ridiculous), undo-ing the amendment will result in a rejection under 112p2 for lack of antecedent basis and 112p1 for lack of enablement since the spec doesn't mention shaped poles.  You'll have to traverse and likely appeal the rejection no matter what you do. 

If it helps, you might ask the examiner to identify even just a single embodiment that would reasonably be infringed by your new claim that wouldn't infringe your claim prior to amendment.  It will be a lengthy conversation since claim construction is complex and far from an exact science.  You'd have to delve into what the ordinary artisan would understand "the shaped poles" would mean given the context of the other claims and the prosecution history and the totality of the circumstances.  Usually, re-exam is higher stakes than ordinary examination, so you might have the budget to dig up authority on the basic framework of claim construction and then analyze many of the elements to show that the ordinary artisan would understand that "the shaped poles" is a clerical error and should be "the shaded poles."  At the very least, you could be raise the stakes in terms of effort if the examiner has to counter with similar analysis -- try to make rejection not the path of least resistance.

One positive is that what the claim should cover is now clear to anyone reviewing the prosecution history due to your attempted amendment.  So, the claim should be clear regardless of whether the claim comes out of re-exam amended or not.

If it helps, the magic incantation I use for amendments fixing things like that in the section supporting amendments is "the amendment to claim 1 corrects an obvious and inadvertent clerical error and is supported at least by claim 1 as originally filed."  I've never received a "nuh-uh" rejection like yours.

Regards.

[patentatt]

I don't see how the rejection can be broadening.  It is either:

1. narrowing (because the new claim requires the two elements to be the same)
2. identical-scope-preserving (because you are simply correcting a typo without affecting claim scope)

Either way, it is not broadening.

I would simply call the supervisor.  Most problems like these can simply be resolved by picking up the phone and dialing up the chain of command.

[NJ Patent1]

Mr.Tracy:  although I agree w/ JimIvey and Patentatt's point 2, they may have left out one nitpicking point that I hope is subsumed in ur post;  the PHOSITA would, reading  the spec, recognize that "shaped" not "shaded" was intended.  This is an appealable finding of fact, but no harm in trying to comvince the SPE. 

[lazyexaminer]

I work in reexams and in my personal opinion, on the facts given, the rejection isn't warranted. I would not personally issue broadening rejections for correction of clear typos. Of course this opinion is worth what you paid for it. This type of thing just doesn't get appealed that often so I don't know if there is any authority on it (i.e. on fixing typos being broadening) but it just doesn't seem right, to me. The intended scope of the claim is clear, and fixing a typo doesn't change it, again to me.

I don't know what group this is in, but I wouldn't advise to call the SPE first. Everyone in the CRU is a fairly experienced primary and the SPEs aren't all that interested in dealing with issues like this if you haven't even tried to resolve it with the examiner first. It doesn't seem that you said anything about calling the examiner. Since you say 305 this must be ex parte, so you can call the examiner. Why not do so and see if you can resolve it with them, or at least figure out what they are thinking? I know some that are unresponsive like (often) in the regular corps, but generally the CRU people are perfectly fine with discussing their case with you. Maybe they will suggest language they like...while such language might not be your ideal, maybe it would be good enough for you, I don't know. Or maybe you won't resolve it and then you talk to the SPE, but I'd try the examiner first if it were me. Sometimes things are as simple as saying "Come on, really?" and they might say, ok. Your mileage may vary, but the CRU doesn't deal with counts or generally have the reject vs. allow Dudas/Doll like bias so you may get somewhere with the examiner.

I do note that Mr. Ivey's first paragraph is wrong, where he said un-doing the amendment would likely result in 112 1st and 2nd par. rejections...it would seem that un-doing the amendment would lead to your original claims, and those cannot be rejected under 112 in reexam...this would appear to overcome the rejection and get your claims confirmed, on these facts, though that might not be great as the claims may have trouble during litigation, so it's hard to say if that's a good or bad idea. I pretty much agree with the rest of his post.

[patentatt]

I work in reexams and in my personal opinion, on the facts given, the rejection isn't warranted. I would not personally issue broadening rejections for correction of clear typos. Of course this opinion is worth what you paid for it. This type of thing just doesn't get appealed that often so I don't know if there is any authority on it (i.e. on fixing typos being broadening) but it just doesn't seem right, to me. The intended scope of the claim is clear, and fixing a typo doesn't change it, again to me.

I don't know what group this is in, but I wouldn't advise to call the SPE first. Everyone in the CRU is a fairly experienced primary and the SPEs aren't all that interested in dealing with issues like this if you haven't even tried to resolve it with the examiner first. It doesn't seem that you said anything about calling the examiner. Since you say 305 this must be ex parte, so you can call the examiner. Why not do so and see if you can resolve it with them, or at least figure out what they are thinking? I know some that are unresponsive like (often) in the regular corps, but generally the CRU people are perfectly fine with discussing their case with you. Maybe they will suggest language they like...while such language might not be your ideal, maybe it would be good enough for you, I don't know. Or maybe you won't resolve it and then you talk to the SPE, but I'd try the examiner first if it were me. Sometimes things are as simple as saying "Come on, really?" and they might say, ok. Your mileage may vary, but the CRU doesn't deal with counts or generally have the reject vs. allow Dudas/Doll like bias so you may get somewhere with the examiner.

I do note that Mr. Ivey's first paragraph is wrong, where he said un-doing the amendment would likely result in 112 1st and 2nd par. rejections...it would seem that un-doing the amendment would lead to your original claims, and those cannot be rejected under 112 in reexam...this would appear to overcome the rejection and get your claims confirmed, on these facts, though that might not be great as the claims may have trouble during litigation, so it's hard to say if that's a good or bad idea. I pretty much agree with the rest of his post.

Good points.  I have very little experience with reexam.

And I agree that it's good to call the examiner first.  I believe that a panel of examiners must approve every action in reexam, so somehow this lousy rejection was approved by multiple examiners?  That might make the examiner interview less effective.

[JimIvey]

I do note that Mr. Ivey's first paragraph is wrong, where he said un-doing the amendment would likely result in 112 1st and 2nd par. rejections...it would seem that un-doing the amendment would lead to your original claims, and those cannot be rejected under 112 in reexam...this would appear to overcome the rejection and get your claims confirmed, on these facts, though that might not be great as the claims may have trouble during litigation, so it's hard to say if that's a good or bad idea. I pretty much agree with the rest of his post.

Not to pick a nit, but I did qualify my first paragraph with "If you work in the arts I work in (not unlikely since the rejection is ridiculous), ...."  I should have written "could" or "would likely" rather than "will" result....

However, I wouldn't assume that the next action is reasonable and proper given that the first rejection appears to be pretty clearly ridiculous.  Welcome to my world -- class 705.  Though, given that "shaded poles" are in the claim (assuming it's not just an analogy), class 705 would be unlikely for the OP.

Regards.

[Isaac]

Not to pick a nit, but I did qualify my first paragraph with "If you work in the arts I work in (not unlikely since the rejection is ridiculous), ...."  I should have written "could" or "would likely" rather than "will" result....

I don't think it's a question of technology.  The PTO has no statutory authority to reject the original claims for 112 problems in a re-exam.

However, I wouldn't assume that the next action is reasonable and proper given that the first rejection appears to be pretty clearly ridiculous.  Welcome to my world -- class 705.  Though, given that "shaded poles" are in the claim (assuming it's not just an analogy), class 705 would be unlikely for the OP.

I agree with your assessment.  The rejection is inane.