Intellectual Property Forum The Intellectual Property Forum

Please login or register.

Login with username, password and session length
Advanced search  

News:

We are looking for moderators.  Message the admin if interested.

Pages: 1 [2]

Author Topic: A good idea: ask Examiner to check subject matters only in independent claims?  (Read 1273 times)

Weng Tianxiang

  • Senior Member
  • ****
  • Posts: 350
  • wtxwtx@gmail.com, 626-552-9895
    • View Profile

Hi lazyexaminer,

Your comment is greatly appreciated and very valuable to me to fully understand why dependents are important to exist.

After knowing the merits of dependents I will not ask Examiner to do awful things.

My original question arises on my lacking the knowledge and merit you mentioned.

Thank you.

Weng
Logged
I am a pro se independent inventor, have no patent legal training, English is my second language, most of my replies may be wrong and I am learning from each of questions and replies on this website.

Patent lawyers, attorneys and Examiners, your comments are appreciated very much.

Weng Tianxiang

  • Senior Member
  • ****
  • Posts: 350
  • wtxwtx@gmail.com, 626-552-9895
    • View Profile

Hi,

Last time I said that

"From my 3 successful experiences with USPTO, I conclude:

"It should be a good idea to directly ask Examiner to check subject matters only in independent claims for an NPA, based on the principle that if the limitations in an independent claim are approved by Examiner to be not prior art, all dependent claims depending on the independent claim should be approved either.

"By doing so it would greatly reduce the working amount for both sides, Examiner and applicant."

Nobody support my idea! I accept everybody's idea.

OK, now I still have a new peculiar idea born from my previous idea:

I want to make some remarks only for independent claims, telling the Examiner which parts are considered as prior art by applicant, and which parts subject matters.

By doing so I still can let the Examiner put his/her emphasis on independent claims even though I don't directly ask him/her to ignore examination of dependent claims.

Doing so would at least let Examiners focus his/her attention on the subject matters of independent claims, not wasting time on prior art parts of independent claims.

My next NPA clearly has one part being prior art, setting up antecedence, and another part being new invention.

Two questions:

1. Is it still a bad idea?


2. I found that I couldn't do it, because the format of an NPA does not have "Remarks/Arguments" part as an amendment does.

Do an applicant have a place in an NPA to attach his comments?

Thank you.

Weng
Logged
I am a pro se independent inventor, have no patent legal training, English is my second language, most of my replies may be wrong and I am learning from each of questions and replies on this website.

Patent lawyers, attorneys and Examiners, your comments are appreciated very much.

mersenne

  • Senior Member
  • ****
  • Posts: 454
  • David H. Madden
    • View Profile
    • Mersenne Law
    • Email

Weng-

You may want to re-post this as a new thread.

1. Is it still a bad idea?

Anything you put in the "Background" section is admitted prior art.  I don't think it's a good idea to say even more about the prior art -- what if your examiner finds good art against something you thought was novel, but nothing against what you thought was prior art?  If you've admitted that part, then you'll have a harder time getting a patent.

I use "Background" to set the stage for an invention, but the whole invention (including parts that may be found in the prior art) is described together in the "Detailed Description."  I don't talk too much about the prior art unless the examiner starts the conversation, and then I only say as much as necessary to respond.  (Even so, I say more than a lot of people; I review plenty of cases where the argument is just "Reference doesn't show X.  Applicant claims X.  Therefore claim is patentable."  That can work if you can afford to spend time and money going around in circles, but many of my clients have less resources for that.  And for people who can't afford to go round in circles, the choice is "patent with more comments in file history" or "abandoned application.")

2. I found that I couldn't do it, because the format of an NPA does not have "Remarks/Arguments" part as an amendment does.
Do an applicant have a place in an NPA to attach his comments?

It sounds like you're wanting to anticipate the first round of rejections and respond to them in advance, which might sort-of get you some extra examination.  I understand the inclination to try to get as much work for your filing fee as possible, but I think comments like this would damage your claims more than the value of any extra work you get.
Logged
Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

Weng Tianxiang

  • Senior Member
  • ****
  • Posts: 350
  • wtxwtx@gmail.com, 626-552-9895
    • View Profile

Hi mersenne,

I accept your full advice and not try to do it any more.

Thank you.

Weng
Logged
I am a pro se independent inventor, have no patent legal training, English is my second language, most of my replies may be wrong and I am learning from each of questions and replies on this website.

Patent lawyers, attorneys and Examiners, your comments are appreciated very much.

Weng Tianxiang

  • Senior Member
  • ****
  • Posts: 350
  • wtxwtx@gmail.com, 626-552-9895
    • View Profile

Hi mersenne,

I finally find a method which doesn't write any text, doesn't violate your advice and should benefit prosecution for both the Examiner and applicant:

In the independent claims I underline and bold the text that I think is the subject matters for the claims: simple and plain!

During previous prosecutions,  I found that the Examiner always uses underlined and bold text to emphasize her opinion that is very effective way to emphasize something without any special text.

By doing so I want to transfer an idea to the Examiner:

Please search and determine if the underlined and bold text is not a prior art, is innovative and non-obvious.

If there is a violation for claims' font, I can still use a response to a non-final Office action to correct them.

Is it right?

Weng
Logged
I am a pro se independent inventor, have no patent legal training, English is my second language, most of my replies may be wrong and I am learning from each of questions and replies on this website.

Patent lawyers, attorneys and Examiners, your comments are appreciated very much.

mersenne

  • Senior Member
  • ****
  • Posts: 454
  • David H. Madden
    • View Profile
    • Mersenne Law
    • Email

In the independent claims I underline and bold the text that I think is the subject matters for the claims: simple and plain!

I don't know, I've never seen that done.  I would worry about two things: first, the document review people might reject the underlining because you're not amending the claim.  You'd probably have to submit an updated version without underlining.  Any interaction with those people is a complete waste of time, and they love to do it.  (I'd bet that doc-intake people at the USPTO are compensated based on how many abandonments they get after a "formalities"  action.  If they can get somebody to give up before an examiner even looks at the case, the USPTO makes money.)

Second, I think you're still calling attention to the part you think is new, so if the examiner rejects that successfully, problems in the rejection of other parts of the claim might be given more leeway.

If you were my client, I'd probably use the three claimsets to describe the invention three different ways, in hopes of forcing the examiner to make the best possible rejection of the part I thought was novel.  If the changes between the claimsets are in the "new" part, then that may force her to come up with more than one reference, and those might be a good selection of the closest prior art.  Then, after the first OA, amend your best claims and maybe even cancel the others.

As you know, prosecution usually takes at least 2-3 cycles.  Both sides want more than one (if you get a first-action allowance, you should have presented broader claims, and the examiner wants to get credit for first action and final action.)  The ideal prosecution (IMO) is an AFCP allowance.  The examiner gets all the credit she can, and (for you) it looks like the USPTO tried hard to find prior art, but couldn't do it.
Logged
Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

Weng Tianxiang

  • Senior Member
  • ****
  • Posts: 350
  • wtxwtx@gmail.com, 626-552-9895
    • View Profile

Hi ,

I like your advice, I fully accept your first part:
Quote
I don't know, I've never seen that done.  I would worry about two things: first, the document review people might reject the underlining because you're not amending the claim.  You'd probably have to submit an updated version without underlining.  Any interaction with those people is a complete waste of time, and they love to do it.  (I'd bet that doc-intake people at the USPTO are compensated based on how many abandonments they get after a "formalities"  action.  If they can get somebody to give up before an examiner even looks at the case, the USPTO makes money.)

After I posted my last post, I found underlining has an additional function: to add new part in a claim amendment. So your new worry is reasonable and correct.

But I don't agree with your 2nd part in some extent:
Quote
Second, I think you're still calling attention to the part you think is new, so if the examiner rejects that successfully, problems in the rejection of other parts of the claim might be given more leeway.

You, as a patent lawyer, would get the maximum chances to drive your clients' NPA through prosecution, but I am a pro se inventor, fully understand my invention before writing the spec and claims, and know clearly that what is an invention and what is a prior art. And in my cases either 100% chance, or 0% chance, if Examiner rejects my subject matters I accept it.

My standing before USPTO is that if Examiner finds prior art for my subject matters I would like to accept his/her decision to abandon the invention, no any more amendment is worth arguing except that any dependent claims are still valuable.

Anyway I will accept both your advises to do no special treatment on claim text fonts: the simpler, the better.

Thank you.

Weng
Logged
I am a pro se independent inventor, have no patent legal training, English is my second language, most of my replies may be wrong and I am learning from each of questions and replies on this website.

Patent lawyers, attorneys and Examiners, your comments are appreciated very much.

ExaminerBob

  • Newbie
  • *
  • Posts: 7
    • View Profile

Quote from: mersenne
As you know, prosecution usually takes at least 2-3 cycles.  Both sides want more than one (if you get a first-action allowance, you should have presented broader claims, and the examiner wants to get credit for first action and final action.)  The ideal prosecution (IMO) is an AFCP allowance.  The examiner gets all the credit she can, and (for you) it looks like the USPTO tried hard to find prior art, but couldn't do it.

FYI: At allowance, examiners get credit for whatever counts remain in an application.

Edit: So to be clear, a 1st action allowance gets 2 counts. And the sum of that 'ideal' non-final, final, and after final allowance is 2 counts.
« Last Edit: 07-17-17 at 05:29 pm by ExaminerBob »
Logged

mersenne

  • Senior Member
  • ****
  • Posts: 454
  • David H. Madden
    • View Profile
    • Mersenne Law
    • Email

FYI: At allowance, examiners get credit for whatever counts remain in an application.

I did not know that, or expect it!  So what you really want, if you're a point-conscious examiner, is one complete examination cycle ending in rejection, then RCE and a first-action allowance (to pick up the reduced points available the second time around?)  That might change my calculus -- if a case ought to be allowable, then I appeal after final -- I'm not going to recommend my guy spend money on an RCE unless we make significant progress during the first round.
Logged
Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

Weng Tianxiang

  • Senior Member
  • ****
  • Posts: 350
  • wtxwtx@gmail.com, 626-552-9895
    • View Profile

Here is a copy from
on: 05-06-17 at 06:41 pm by blueroger on http://www.intelproplaw.com/ip_forum/index.php/topic,29742.0.html

Demystifying the Count System
on: 05-06-17 at 06:41 pm
ReplyQuote
There seems to be some want to know how the count system works.  I'll try to explain the basics.

An application from start to finish is given 2, 1.75, or 1.5 counts.  2 counts are given for a new case.  1.75 counts for a case on a 1st RCE.  1.5 counts are given for any RCE after that.  There are ways to get the RCE counts back to 2 per application in a quarter, but that's not terribly relevant here. 

The counts are split up as follows:

1.25 (or 1, .75 respectively for RCEs) for a first action on the merits (1st OA)
.25 for a final action (2nd OA)
0 counts for a second or subsequent nonfinal
.5 counts for a disposal (allowance, RCE filing, abandonment, examiner's answer filed)

Together they make up what's called a balanced disposal or production unit (BD or PU).  I'll generally use BD going forward.
Even though RCEs give fewer counts, a BD is ALWAYS 2 counts.

An examiner is given X number of hours per BD. Hours per BD are based off of the hours for a GS12 examiner.  The highest hours per GS12 BD in the PTO is 31.6. I've heard the lowest is around 13. Most arts are between 16-24 horus.  An examiner's BD is modified by his experience level, Actual BD = (GS12 BD)/(experience):
GS14 (primary) 1.35
GS13 PSA (partial sig -- can sign nonfinals) 1.25
GS13 1.15
GS12 1
GS11 .9
GS9 .8 (This is generally where most new examiners are hired nowadays)
GS7 .7 (This is where the office used to hire new examiners and still does on occasion)
GS5 .6 (I think. Nobody's gets hired at GS5 for the most part)

As you can see, a GS7 has about 2x the time that a GS14 primary has to obtain a BD.

The number of counts an examiner must get in a biweek is determined by ((production hours)/hours per BD) * 2 [2 counts per bd].  So if a GS 7 examiner at 31.6 hours/BD worked 75 production hours the number of counts an examiner must get is (75/(31.6/.7)) *2 = 3.32 counts.  An examiner at GS14 would need (75/(31.6/1.35)) * 2 = 6.41 counts.  Thus, a primary needs to get about 2x as many counts as a junior examiner.
Non production time includes training time, vacation, 1 hour per interview, etc.  An examiner needs to account for 80 hours total between production and non-production time every biweek (pay period).

So you can see an examiner gets the most counts for a first action.  An examiner only gets .25 counts for a final and the .5 for a disposal is considered a bit of a "free" count as the examiner unless he's writing an examiner's answer gets it by doing nothing so I tend to count it with the final, even though we don't get credit for it until the disposal (RCE filed, abandoned at 6 months, examiner's answer is filed).  Basically, when you have what we refer to as a mature docket, the theory is that your amendments (final OAs) will equal your disposals and make up for the lost time you get writing that Final OA.  This does not always happen, and the weeks where all you work on are amendments is very painful from an examiner's production point of view. 

Note, this does not count the rework (2nd non-finals, etc.) where the examiner messed up somewhere.  An examiner gets 0 counts for rework.  This is why you see examiners dig their heels in a lot when it comes to rework, unfortunately.

It's also easy to work out how many hours .25 counts is equal to.  Again, here are the calculations for a gs7 and gs14 examiner ((31.6/.7) * (.125 [1/8 of 2 counts]) = 5.64 hours; ((31.6/1.35) * (.125) = 2.92 hours.  Multiply by 3 to include the disposal credit.  Thus, a GS7 has at most 16.6 hours at the most generous accounting, while a primary has 8.78 hours. 

Edit: No extra time is given for excess claims.  An examiner gets the same amount of time to examine 1, 20 or 100 claims. 

Hopefully this helps explain how the count system works.

Edit 2: Allowances added.
Last Edit: 05-06-17 at 08:31 pm by bluerogue Report to moderator     Logged
The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.
Logged
I am a pro se independent inventor, have no patent legal training, English is my second language, most of my replies may be wrong and I am learning from each of questions and replies on this website.

Patent lawyers, attorneys and Examiners, your comments are appreciated very much.
Pages: 1 [2]
 



Footer

www.intelproplaw.com

Terms of Use
Feel free to contact us:
Sorry, spam is killing us.

iKnight Technologies Inc.

www.intelproplaw.com

Page created in 0.2 seconds with 21 queries.