The Intellectual Property Forum

I took over 2 cases that were filed by another attorney in November 2006 - both cases pending.  The two cases are related inventions, and were filed on the same date in 2006.

Lets call them "case A" and "case B". Case A is currently under appeal to the BPAI - filed the reply brief about 3 months ago so probably some time until it gets reviewed.

Case B I received a first office action on November 5th of this year. In the office action, the examiner rejected all claims (properly) under 101 for statutory type double patenting. First time I've ever received one of those, and quite surprised.  The Examiner said the claims for case B were the same as the published claims for case A. When I looked at the as-filed applications that was clearly not the case - the claimed inventions were very distinct and different.

However, when I looked at the filed claims for case B, they were identical to the published claims for case A!!!! Furthermore, the filed claims for case A are identical to the published claims for case B. It appears the office of data management mixed up the two applications when they were published!

I sent a note to the office of data management requesting how to get the publication corrected.  They referred me to the procedure that states the publication must be corrected (for PTO error) within 2 months of the date of publication.  The only problem is the date of publication was in 2007 - long ago.

Does anyone have any idea on how to fix this? The Examiner referred me to the ODM to get it corrected, and their procedure doesn't provide a remedy here. Guessing there may possibly be no remedy if the publication can't be corrected at this point...

Thanks,
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

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

I wanted to see what other practitioners tend to do in the following situation:

Sometimes I file multiple related non-provisional applications on the same date. Each application lists the title of the related application, plus a placeholder for serial number ("12/xxx,xxx") in the "Cross reference to related applications" paragraph. The first application is filed without knowing what the serial number for the first application, the second application, etc is beforehand.

By the end of the date, you know what all the serial numbers are for all the now-filed applications. My usual practice is to file a same-day preliminary amendment that updates the "Cross reference to related applications" paragraph in each application to add actual serial numbers in place of the placeholder serial numbers, so the applications are now complete. Because this isn't new matter, I don't file new or supplementary declarations.

So my questions are if others tend to follow the same practice, not file the preliminary amendments, or file supplemental declarations that specifically list the preliminary amendment (just to be safe)?

Thanks!
Retarius

Reading the rules and MPEP 1205.02(v), it seems that the requirement is for "a concise explanation of the subject matter of each of the appealed claims". This seems to suggest the Appellant needs to paraphrase each claim - adding the required references to specification and drawings. Got it. My question is if it is acceptable to recite each of the appealed claims (i.e. not paraphrased) and add the required references?

Thanks,
Tar

Thanks guys. My thinking was along the lines of DogDay - that is, the background was really a teaching of the problem space, and the statement of "difficult if not impossible" would argue against combining the limited teaching in the background section with another reference to form the invention.

The background section was not the disclosure of the invention - the written description was. Just the same, I think I have my mind made up to amend and argue other rejections.

Thanks for the time/consideration. Obviousness rejections seem to pretty well dominate my time in amendments these days.

Retarius

Teaching away means joining the Peace Corps to teach in a foreign country. 

Thank you (very little). Any other serious answers?

I worked at a virtual firm the past 2 years, and I really recommend it if you are interested in patent prosecution. I disagree with some of the others who feel face time is required.  There were many times when I had fairly long calls with the other attorneys to discuss matters I was prosecuting - a bluetooth headset (hands free) and cell phone were a good start, but voice over IP (Skype, for example) is a lot less expensive if you want to do this for more than a single job.  If you are efficient, it can work as well as face to face (Ive done both). I left the v-firm in March when work started drying up, but had enough going on by then that I was able to seamlessly transition to my own thing. I do think there is a benefit of working face-to-face with inventors, but if you are local to them you can still work remotely most of the time. Good luck!

retarius