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Author Topic: Office Action Response When Examiner is Wrong  (Read 266 times)

johnwire

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Office Action Response When Examiner is Wrong
« on: 11-07-17 at 06:07 pm »

I'm a Pro Se applicant and have an Office Action response due on Friday.  I'm in pretty good shape but would like an opinion or 2 on one thing.  When I received the Office Action in August, it was apparent that the Examiner didn't fully understand what I was  my device did.  I received 112, 102, and 103 rejections.  The 112 and the 103 were easily handled but the 102 is tricky for reasons that I explain below.  I had a Telephone Interview with the Examiner and sent an agenda prior wherein, rather than saying that he was wrong, I asked for direction on how I should address the rejections given that ... and I respectfully indicated areas of his misunderstanding with my device.  I made the Interview call and the Examiner was helpful, and wasn't offended by my approach in the agenda.

I think he was "on my side" after reading the agenda, then after we went over the 112 issue verbally, he was extremely helpful giving me advice on what to respond for the 103.  For the 102 he said that I should distinguish my Claim 1 against what he said about the Claim 1 of the "anticipated over" patent that he listed, but what he said in the Office Action makes no sense because (a) it was written when he didn't understand my device, and (b) after I read his "anticipated over" patent entirely, it was apparent to me that he misunderstood that patent as well.  So any reference that I make to what he said there, would have to correct him regarding his interpretation of the "anticipated over" patent AND correct him regarding my device.

I'm not sure that I want to do that much "correcting". 

I can give more detail if this is too vague but if there's any general advice to be given, I'd appreciate it.
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Tobmapsatonmi

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Re: Office Action Response When Examiner is Wrong
« Reply #1 on: 11-08-17 at 07:37 pm »

"I'm not sure that I want to do that much "correcting".  "

I know what you mean, but you pretty much have to do it - the record is supposed to be complete and you need to get on record why the art doesn't teach your claim.

  As to the 102, just politely explain why the person skilled in the art knows that the thingie the Office points to in the art as meeting a first element of your claim is not actually the same thing as that first element in your claim.  Use descriptive information from your specification or mundane technical materials to show what your element is, and use information from the cited art itself to show what the thingie actually is (or mundane tech materials), and then explain why they're not the same thing.

Then go to the second element of your claim that the Office mistakenly said had an equivalent in the cited art, repeat the process.

Then in the end, say that since the cited art does not teach each element of your claim in the manner in which they are arranged, the anticipation rejection should be withdrawn and request that it please be so withdrawn.

Sort of a side note to your question, but are you doing an examiner interview summary to submit with your response?  You'll need to do so unless the examiner said he would do so and you do not need to.
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bluerogue

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Re: Office Action Response When Examiner is Wrong
« Reply #2 on: 11-08-17 at 08:07 pm »

I think you pretty much have to do correcting.

From your description of things, it could be that your claims are significantly broader than your invention.  When you say:

For the 102 he said that I should distinguish my Claim 1 against what he said about the Claim 1 of the "anticipated over" patent that he listed, but what he said in the Office Action makes no sense because (a) it was written when he didn't understand my device, and (b) after I read his "anticipated over" patent entirely, it was apparent to me that he misunderstood that patent as well.  So any reference that I make to what he said there, would have to correct him regarding his interpretation of the "anticipated over" patent AND correct him regarding my device.

That sounds like you invented a hammer and the examiner rejected using a wrench.  However, you claimed "a device comprising a flat surface capable of pounding a nail." This has nothing to do with not understanding your invention, but that your claims are too broad because a wrench is "a device comprising flat surface capable of pounding a nail." 

In such a situation, you need to amend your claims to better define what you invented.  The examiner cannot generally rely on your description and say, oh the device has a handle and a forked end opposite the flat end to pull out nails too. It's only what's in your claims that matter. The examiner also cannot rely on your statements made in an interview as to the scope of the claims. In the end, the language of your claims is what counts and if it is too broad, you're going to have to more accurately describe what you mean in order to move prosecution along.
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The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.
 



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