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[joseph_1970]

I just received my patent application first OA.

My three claims were rejected, but I did send in a MPEP 707.07(j) request for the patent officer to drafter one or more allowable claims for the applicant...me (pro se), and this examiner did NOT write any claims for me.

Is it not the law that the examiner does write a claim(s) for me?  

I wanted to check into this before I call this examiner up and have a little discussion about the issue.    

Any suggestions would be greatly appreciated.  

(I also don't think that the rejections where explicit in regard to the wording of claims in the one 'offending' prior art, stated by this examiner, but is based on implicit examination of the prior art drawings alone.  I will make a separte post for this after making a more thorough examination of the this 'offending' prior art, patent.)

TIA, guys and gals!

-joseph

[B. Halpern]

If you read MPEP 707.07(j) closely, it indicates that the examiner should draft claims for the applicant when "it becomes apparent to the examiner that there is patentable subject matter disclosed in the application."  In your case, the examiner probably didn't feel there was any patentable subject matter, or maybe the examiner just didn't feel like doing it.

Also, as a former examiner, I don't recall being taught to draft claims for applicants in any situation.  Speaking frankly, I don't know any examiners who would take the time to draft claims in the midst of trying to maintain their examining quota.  Although the MPEP mentions that examiners should draft claims in certain instances, as a practical matter, examiners are not really encouraged to do it.

[joseph_1970]

Thank you,  B. Halpern,

The application's claims are based on what seems like a very quick glace at a prior patent, which has no explicitly reference to my patent in the actual claims.  It looks like my object, but on any closer look, there are definitely different features.  This is very clear to me, but it seems this examiner might be a little busy, as you stated, because he/she didn't bother to actually read the prior art, because it quickly does show clear differences with my own object.

(These are all structural aspects, which is the way it is, but my object actually has similar and quite distinct/novel uses.)

Let me ask you this...

If the prior object has a similar shape, but does not come close to any explicit description within the claims of the other patent, and has significant, of course I will have to prove the 'significant', differences in shape and composition, can the examiner still rightfully reject based on the overall shape of an object?  

I realize you might have to look more closely at these differences, so let me state it differently.

The objected to claims based on the general shape of given prior art, and having nothing to do explicitly with claims of prior art, which are clearly not like my own claims.

Can the examiner rightfully extrapolate information from an object and say because there is a resemblance, the new object is not novel, which novel has to do with utility and not just shape?  There is clearly a novel use for this object, which was not considered.  Does it have to be considered?

Maybe simplify this:

The objections are based on an object.  There are clear differences my own and prior art.  

differences...
1.  
2.  
3.
…

The examiner basically took my wording and applied it to a similar looking, although distinctly different on closer inspection, object and rejects claims based on corresponding patent law 35 U.S.C. 102(b).

I am not sure how to approach this...

Again, thank you.

- joseph


Ps.  If the moderator would like for me to make this a different post, please feel free to let me know.  I have no problems separating this into two.

[JimIvey]

I honestly can't help too much without knowing the details, and you shouldn't share the details in a forum like this anyway.  However, I'll offer what I can in terms of general observations.  

It's all about your claims.  If your claim can be interpreted so as to describe something in the prior art, you're not going to get that claim.  I find that examiner's find some creative interpretations of terms that I hadn't considered.  Sometimes I think they're right.  Sometimes I disagree, e.g., think they're intrepretation is not reasonable.  But the essence of getting a claim allowed is understanding the examiner's rationale.  And that rationale is nearly always more rational once you understand than it appears on the office action.

Once you understand the examiner's rationale, the path you take is generally fairly clear.  But understanding the examiner is a necessary first step.

To get that understanding, you have to focus deeply on your claim language and look for new and far reaching interpretations that you might not have considered before.  See if that helps explain the examiner's argument(s).  

I hope that helps.  Personally, I think you may need professional help with your Office Action.  That probably sounds self-serving, but it's what I think.

Regards.

[joseph_1970]

I appreciate your feedback.

After a few hours, I think I started to feel I understood the examiner and process more.  Essentially, with the prior art the examiner finds germane, (s)he simply takes my claims and sees if (s)he can apply it to anything already out there.  

What I wonder now is, after I have been sent four patents I apparently missed to have potential relevance, will there be another search for potentially relevant prior art on the next submission or will the grouping of prior art in all probability stay the same?

There was only one of the four prior patents sent to me that was used to object to all three claims I made, which were made because I thought it wouldn't matter if I sent or not, because the examiner would be require to write a claim or claims for me by law, which apparently isn't the case.  It's funny actually, I think me sending in obviously too broad of claims was the basis for this examiner to claim the overall patent is not patentable, which would be the reasoning behind NOT writing a claim for me.  Including the claims in this case seems to have hurt me, and if I hadn't included them, the examiner, if (s)he couldn't find other reasons for rejection, would have to write one for me.  

Does this sound like a reasonable assumption?

Also, the grounds of rejection where based on this one patent, which I can easily claim around structurally, but I wonder since the specification or other aspects of my application where not mentioned, does this mean that there was nothing found 'wrong' or objectionable about those aspects?  Or do the examiner's simply find what they can quickly, mark what pops out at them, and does not do a comprehensive evaluation and response to the applicant?

Or, am I really down to wording the claims just right and the other aspects apparently have been met?

Seeing or consulting with counsel is something to consider without a doubt.  At this point, I believe my questions have been primarily process, and I am trying to keep this as objective as I can.  In the end, the content should follow methinks.  Please correct me if you think I am wrong though.

And, respectfully, Thank You!

-joseph

Ps.  Again, I actually feel pretty good about this after a few hours of reflection, but I am open to more seasoned advice.  

[eric stasik]

joseph_1970,

I don't think the meaning of MPEP 707.07(j) is that the examiner should write the claims for you from scratch, or be expected to make major amendments. This would not expedite prosecution in any way which would be favorable to an applicant.

In my opinion, the only reason why the examiner should suggest claims is to move the case quickly to issuance. It is fairly common for an examiner to say in effect "Look, if you add this, or combine these two claims, I'll allow the it."

If you are not close to allowance, you may not want the examiner making suggestions. Depending on what the examiner suggests, it could have and unfavorable impact on the prosecution history. Even if the examiner is willing to help you, it would probably be better for you if you were in control of this.

Regards,

Eric Stasik

[M. Arthur Auslander]

Dear Joseph_1970,

It is one thing to save money and another to waste time, money, worry and hope.

What was your objective when you filed? Was that objetive reasonable? What would a patent do for your needs?

Why didn't you consult an Intellectual Property practicioner that you could trust? Do you want a patent or something of value?

Are you willing to accept that JUST getting a patent can be a waste. A patent lawyer cannot fully evaluate an invention BUT there are some inventions that CANNOT get the protection that an inventor needs and that can be ascertained.

I'm not against the patent system. My concern is that the inventor should have the opportunity to understand the reality of the law and facts before an application is filed.

What I am saying it is more important to understand the big picture before you file than it is to be able to find a way to get an allowable claim.

THEN the question is WHAT CAN THAT CLAIM OR CLAIMS DO FOR YOU? The art can be so crowded that almost any variation on the theme may also acheive the same result without infringing your basic patent.

[Isaac]

I agree with Mr. Stasik

Even if the paragraph is read literally, I would not expect the examiner to attempt to draft any claims on the first office action.   It just isn't going to be clear what the patentable material you mean to claim is.  And maybe the examiner does not think there is any.

I could see the examiner drafting a claim for a pro se if the claims suggested an invention but were just so unprofessionally written that the examiner felt it would save his time to draft something.

But in a situation where all of the claims were rejected on 102 or 103 grounds I don't see that happening.

[joseph_1970]

M_Arthur_Auslander, thank you for your response, but you lost me there.  I don't know why you brought other global issues into the conversation.   With all due respect, I would rather discuss the issue(s) at hand.  Besides, those are issues for someone who is just beginning to think about attempting to get a patent, not someone who is in the process of filing one.  Again, thank you for your response though.

Mr. Clark,
Yes, I don't think the patent was written poorly and from the quality of many patents I have seen, it is on par or better, imo.

Again, let me be clear here.  I knew the claims would be rejected when I sent them.  What I didn't know is that the examiner would NOT write an example claim for me.  I was going to take the example claim(s) and use them as a base from which to write my own.  It was my understanding the examiner was required to write one, if I so requested.

Mr. Clark, are you saying that you think the patent application was written poorly or unprofessionally because the patent was rejected on the first OA on the basis of 102?  The claims were written poorly admittedly, although from my understanding that is very common, even if submitted by a lawyer.  Please correct me if you think this is not accurate.

Question from above that someone hasn't answered yet please:

Is the action taken on the first OA comprehensive or not?  

The reason I ask is to attempt to get a better grasp of process.  If I next submit non-objectionable claims, not discussing potential strength or any other issue here, should I look forward to other objections that were present during the first submittal and yet was nothing mentioned in the OA?  Expectation is a critical component in moving forward at this point.

I would guess that the first OA was sent and is not comprehensive.  

As a side note, I apologize if this forum is not what I had anticipated.  I thought we were here to discuss process issues devoid of content to the extent possible without details being given about any individual patent.  I did not go through all the prior posts to get a feel for this particular environment, which is something I would do in most cases.  If this forum is more of a jumping board for professionals to pick up business and not a community of folks who intrinsically benefit from helping others, then please inform me if this is the case.

I look forward to hearing responses.

-joseph

[JimIvey]

Even after 13 years of practicing patent law, I still get the kinds of examiner's proposed amendments that Mr. Stasik describes -- little modificiations here or there to suggest a path to allowability.  So, that particular feature isn't limited to pro se applicants.

I would be very wary of any substantial claim amendments suggested by the examiner.  Their function is that of a gatekeeper.  They don't want to allow broad claims.  Recently, I had an examiner suggest very significant amendments to the claims.  The resulting claims would have been useless to my client.  Even their own prototype would not have infringed.  

So, in short, I think the strategy of trying to get the examiner to write claims for you is a bad one.

Regards.

[joseph_1970]

Hello, Mr. Ivey.  

I appreciate your response greatly.  

My expectation was the examiner would do just that, give me something too narrow that would be of little practical use.  What I thought it would allow me to do is to understand the process and give me something from which to base my own, even if the outcome was vastly different than the claim(s) written for me.  

Thank you for your response.  

Do you know if I should expect be to have to deal with other issues other than the claim after this phase is complete, meaning claims are submitted and non-objectionable?  

I wonder if the first OA was comprehensive or did the examiner in all probability do his/her gate keeping and stop after finding something objectionable.  

I wonder if there is more, other than the claims about which I should be aware in moving forward at this point.  Heading off any other potential aspects of the overall patent, which might be objectionable other than the claims, is what I am considering.

-joseph

[Isaac]

Mr. Clark,
Yes, I don't think the patent was written poorly and from the quality of many patents I have seen, it is on par or better, imo.

Again, let me be clear here.  I knew the claims would be rejected when I sent them.  What I didn't know is that the examiner would NOT write an example claim for me.  I was going to take the example claim(s) and use them as a base from which to write my own.  It was my understanding the examiner was required to write one, if I so requested.

Mr. Clark, are you saying that you think the patent application was written poorly or unprofessionally because the patent was rejected on the first OA on the basis of 102?  

I didn't say that the patent application was poorly written.    In fact I did not comment on the quality of your application at all.

I suggested that a patent examiner might help someone who had a poorly drafted claim that indicated the need for professional help but did point to a patentable application.

The implication would be that your application *did not* meet that description, but rather that you were rejected because your claims were clear enough for the examiner to examine and to reject on substantive grounds.  

I'm sorry if I implied something negative about your work.    The implication was unintentional.   Getting a rejection on the first OA is the expected result.

[JimIvey]

Hello, Mr. Ivey.  

I appreciate your response greatly.  

My expectation was the examiner would do just that, give me something too narrow that would be of little practical use.  What I thought it would allow me to do is to understand the process and give me something from which to base my own, even if the outcome was vastly different than the claim(s) written for me.  

Thank you for your response.  

You're welcome!  :-D

Do you know if I should expect be to have to deal with other issues other than the claim after this phase is complete, meaning claims are submitted and non-objectionable?  

I wonder if the first OA was comprehensive or did the examiner in all probability do his/her gate keeping and stop after finding something objectionable.  

I wonder if there is more, other than the claims about which I should be aware in moving forward at this point.  Heading off any other potential aspects of the overall patent, which might be objectionable other than the claims, is what I am considering.

-joseph

Typically, the first Office Action is rather comprehensive.  New issues aren't supposed to crop up in later Office Actions.  For example, if you argue/amend to overcome Section 112 rejections (typically due to informalities) and you don't hear anything about it in the second Office Action, I wouldn't expect to hear anything about those issues in the 3rd and later communications from the Office either.

Of course, there are exceptions.  I've received a restriction requirement which first appeared on the third Office Action.  I've had a claim allowed and then re-rejected 4 times by 3 different examiners in one case.  So there are some very significant exceptions, but most often, resolved issues stay resolved.

Regards.

[joseph_1970]

Mr. Clark, I surely didn't take it personally.  It’s best my ego stays clear of this one.    I didn't quite understand your post.  If something typically comes back rejected in a certain way because of the way something is written primarily poorly, I surely want to know.    If I sounded defensive, it surely wasn't intended.  In fact, thank you for your response and letting me know if there might have been any misunderstanding.  I clearly understood your last response.  

Mr. Ivey, again, thank you for your response!  You answered my question and then some, which I find very helpful in allowing me to know more about the process.  Hearing you have gone several rounds in the past with examiners allows me to realize things can be done to extend the process beyond a second OA.  Having said that, I will do my best regardless.  The information is good to know!

Thank you, gentlemen.  You have helped clear some things up for me.  Having clearer expectations gives me greater psychological and intellectual comfort when moving forward.  Your help in these matters have done exactly that, and I am appreciative.

-joseph

[M. Arthur Auslander]

Dear joseph_1970,

My thesis, is to ask, "..what is the hope of getting a patent, that is not only technically good but that has a chance of rewarding the inventor."

Years ago I had a brilliant inventor with a brilliant patent for automobiles. He discovered that the industry had a fixed basic cost for the auto and would not add anything to the basic cost that was even only pennys more.