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 on: 01-10-17 at 03:02 pm 
Started by Patent Curious - Last post by lazyexaminer
We will initiate a reexam during the period of enforceability, i.e. within the 6 year statute of limitations mentioned in the OP. So up to 6 years after a patent expires. We would even do it later so long as the patent is still enforceable against someone, i.e. if a suit was filed within the 6 year period and remains pending.

So I have no idea what the statement from the website possibly means. Probably a poorly worded extremely laymens terms intention that ended up wrong.

 on: 01-10-17 at 02:31 pm 
Started by pygsys - Last post by pygsys
Can't remember any questions that dealt with properly drafted claims.  I believe there might have been one or two where I had to pick a claim that avoided the prior art but had support in the spec.
Just bear in mind that your specific exam might be different from mine - each batch of 100 questions is selected from a large USPTO database, so YMMV

 on: 01-10-17 at 02:17 pm 
Started by Robert K S - Last post by lazyexaminer
Much of the answer to that question is probably examiner specific. Being "made" to write a final wouldn't affect me, but I don't care about counts and it is a reality that many go fishing for RCEs of course.

It may depend on if there are other dependent claims. I'm sure you've seen the argument that you've changed the scope of all of those other dependent claims and we don't know if they are allowable without additional searching or there are some sort of new issues, even if the independent claim now includes the allowable subject matter. That argument is frankly just silly a lot of the time, though sometimes it can be reasonable (dependent claims might contradict each other leading to confusion, or combining them might be new matter, etc.).

 on: 01-10-17 at 02:14 pm 
Started by Robert K S - Last post by smgsmc
Following an amendment after non-final rejection in an application with foreign inventors, an examiner has proposed rolling up some dependent claims into the independent claims to place the application in condition for allowance.  The foreign associate is worried that the inventors will not be able to be timely reached to approve the amendments, and wonders whether it would be better to:

a. Tell the examiner, okay, enter the amendments, but then later reneg on that approval if the client later does not accept the narrowed scope of the amended claims, or
b. Just tell the examiner, sorry, we can't approve the amendments at this time, you're going to have to write up a final rejection or allow the claims as presented.

Would appreciate some feedback, especially from examiners, as to the effect on the examiner as well as the procedural mechanics of (a).

I've been in this situation mucho times.  The scenario typically arises when the examiner is short on counts for the biweek or quarter and offers a K-Mart blue light special.  If the client specifically requires that in-house counsel or the inventors review and approve amendments, and if I do not have time for the client to do that before the blue light goes out, I will decline the offer.  I would never intentionally put myself in the position in which I might have to reneg.

Of course, some Examiners will exact revenge. I had several in which the next OA threw in 101 Alice rejections for the hell of it. 

 on: 01-10-17 at 02:01 pm 
Started by ProSeGuy - Last post by ProSeGuy
Thanks mersenne, Robert K S and Tobmapsatonmi for your extensive thoughts. I'm hoping to have an interview with the examiner early next week and since having my independent claim rejected as well, was looking to possibly combine the dependent claim. The argument about a thing veruses a feature, characteristic or effect is helpful. Motivation seems also a big factor. Thanks again.

 on: 01-10-17 at 01:31 pm 
Started by ProSeGuy - Last post by mersenne
You're right (as usual), Robert.  My "no motivation" in #3 is the way I think about it when the references (under BRI) show the features, and could combined (mechanically, operationally, etc.) but the Examiner's motivation is the typical "it would be better" -- there's no teaching or suggestion in any of the prior art that there is a problem to be solved.  I don't like making that argument -- it hasn't often been persuasive for me -- and it feels more like a technicality that would color subsequent enforcement activities.

I didn't notice that OP's situation is a dependent claim...I spend much less effort on 103s against those, unless I'm planning to roll the dependent up and use it to establish patentability.  If the independent claim is patentable, then I don't care about the dependent-claim 103s.  And if I need the dependent claim to get around references, I'll roll it up into the independent.  I guess the main place I'd argue extensively about a dependent is if I had some possibly-persuasive arguments about the independent, but also wanted to signal that the inventor would be willing to take an objection to the dependent (without also guaranteeing a final OA by actually amending to roll up the dependent).

It's all a game of little advantages: how to get as much useful work as possible out of the examiner before you have to pay the next set of filing fees!

On the actual dependent claim (which we don't have, but which Tobmapsatonmi suggests requires a mechanism), I think if the claim requires a thing, and the prior art uses some feature, characteristic or effect of the material under processing to accomplish a similar result, that's a difference that should be claimable.  But it would require a careful and sharp-witted analysis of the actual claim language (including the broadest reasonable interpretation thereof).

 on: 01-10-17 at 01:09 pm 
Started by Robert K S - Last post by Robert K S
If we make the examiner write up a final rejection, do you think the examiner will be less inclined to enter the currently proposed amendment as an after-final amendment?

 on: 01-10-17 at 01:08 pm 
Started by ProSeGuy - Last post by Tobmapsatonmi
I think the OP's specific question (correct me if wrong) is the following:

The prior art popper does not have any physical mechanism or means for pushing the product. Instead, expansion of the kernels provides the motive force.

Is it proper for the examiner to equate this to OP's claim which apparently requires an actual mechanism/means to push the product up?

 on: 01-10-17 at 12:51 pm 
Started by Robert K S - Last post by lazyexaminer
Agree with the above. If you agree to an examiner's amendment I assume you are going to get a Notice of Allowance fairly quickly. So then the amendment is entered. If you want to reneg on that you would need another amendment to go back to the prior form I guess. Now you're under rule 312, and no way the examiner will enter it. So you can file an RCE if you haven't paid the issue fee yet. You're probably then risking a first action final if you just go back to the prior form (though I haven't thought about that issue at all and could be wrong).

If you can get in touch with the examiner to reneg before the allowance actually goes out then I assume then you are just moving to case b and he'll send a final.

 on: 01-10-17 at 12:47 pm 
Started by Robert K S - Last post by Tobmapsatonmi
Not an examiner, but I'd say go with (a) and then from a mechanics standpoint you'd need to file RCE if the narrowed claims presented in the notice of allowance are unacceptable to the client.  (Or convince the client to take them as-are, and file con to claim other embodiments?)

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