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Author Topic: Examiner won't specifically state the problem  (Read 598 times)

Rheo

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Examiner won't specifically state the problem
« on: 03-14-18 at 11:22 am »

This is a situation involving a US application that was translated from a foreign language. The translation was a bit rocky.

The examiner named a couple of examples of things that had to be changed (under a 112 rejection) and then just used the boilerplate "they appear to be a literal translation from a foreign document and are replete with grammatical and idiomatic errors". So I changed the stuff she pointed out and also some other text that was shaky. Then I got a 112 rejection again because the claims still aren't to her liking, but she doesn't point out anything explicitly. I changed more things to pacify her, but the text is now getting to a reasonable point.

Now a third 112 rejection was issued. Once again, she doesn't name anything specific. A person skilled in the art can easily understand the claims. I am no longer sure about what she is looking for.

Is there any good case law to cite here? To me, the claims are easily understandable and do not sound that bad. At this point, changing a couple of things that maybe sound a bit stilted would involve a major rewrite of the claims - and a further rejection from her, I'm sure. She wants a Shakespeare sonnet.

I'm thinking of arguments/case law along the following lines:

(1) The examiner has to state specifically what the problem is
(2) If a person skilled in the art can readily and accurately determine the meaning of the claims, that should be enough
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smgsmc

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Re: Examiner won't specifically state the problem
« Reply #1 on: 03-14-18 at 01:21 pm »

A phone call to the Examiner would be warranted in this instance (you may need to request an Examiner's Interview).
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mersenne

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Re: Examiner won't specifically state the problem
« Reply #2 on: 03-14-18 at 01:25 pm »

Now a third 112 rejection was issued.

Are you still on the first round of prosecution (no FOA yet)?  The Examiner is probably out of time to work on the case and needs it to go away or RCE before she can afford to do any merits work.
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still_learnin

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Re: Examiner won't specifically state the problem
« Reply #3 on: 03-14-18 at 07:01 pm »

This is a situation involving a US application that was translated from a foreign language. The translation was a bit rocky.
...
Now a third 112 rejection was issued. Once again, she doesn't name anything specific. A person skilled in the art can easily understand the claims. I am no longer sure about what she is looking for.

Is there any good case law to cite here?
...
I'm thinking of arguments/case law along the following lines:

(1) The examiner has to state specifically what the problem is
(2) If a person skilled in the art can readily and accurately determine the meaning of the claims, that should be enough

MPEP 2173.01 has a lot of stuff related to your first point:
Quote
A decision on whether a claim is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350, 94 USPQ2d 1241, 1245 (Fed. Cir. 2010); Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1 USPQ2d 1081 (Fed. Cir. 1986).
...
II. THRESHOLD REQUIREMENTS OF CLARITY AND PRECISION
The examiner’s focus during examination of claims for compliance with the requirement for definiteness of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is whether the claim meets the threshold requirements of clarity and precision set forth in the statute, not whether more suitable language or modes of expression are available.
...
Examiners are encouraged to suggest claim language to applicants to improve the clarity or precision of the language used, but should not insist on their own preferences if other modes of expression selected by applicants satisfy the statutory requirement.

Your second point is really about how specific an definiteness rejection needs to be. I think In re Packard is the leading case on this. MPEP 2173.02.III.B agrees, and provides some helpful language for you:
Quote
Accordingly, when rejecting a claim as prima facie indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, the examiner should provide enough information in the Office action to permit applicant to make a meaningful response, as the indefiniteness rejection requires the applicant to explain or provide evidence as to why the claim language is not indefinite or amend the claim. For example, in making a prima facie case of indefiniteness, the examiner should point out the specific term or phrase that is indefinite, explain in detail why such term or phrase renders the metes and bounds of the claim scope unclear and, whenever practicable, indicate how the indefiniteness issues may be resolved to overcome the rejection. See MPEP § 707.07(d). If the applicant does not adequately respond to the prima facie case, the examiner may make the indefiniteness rejection final. Packard, 751 F.3d at 1312.

Have you thought about appeal yet? In my experience, Examiners are rarely persuaded by case law arguments (even ones rooted in the MPEP), but these sorts of arguments do fare better on appeal.
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The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.

PatentNugget

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Re: Examiner won't specifically state the problem
« Reply #4 on: 03-15-18 at 05:09 pm »

Which art unit or tech (if you don't mind)?

I usually point out to the Examiner that they're confusing breadth with indefiniteness.  Not having a lot of facts, this is usually the case in my experience with translated Specs.   

I say something like: Section 112 requires that “claims are . . . to be cast in clear—as opposed to ambiguous, vague, and indefinite—terms. It is the claims that notify the public of what is within the protections of the patent, and what is not.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014).  In determining whether a particular claim is definite, the claim’s language must be analyzed in light of the content of the particular application, the prior art’s teaching, and the interpretation that would be given to the claim’s language by a person of ordinary skill in the art at the time the invention was made. Id.

The Examiner does not identify a dispute over the clarity of the claims as understood by the skilled artisan. Rather, the Examiner’s concern that "_____"  goes to the breadth of the claims rather than the ambiguity, vagueness, or indefiniteness of the claim language. There is nothing ambiguous, vague, or indefinite about the recitation of "_______" in the claims.  Further, one having ordinary skill in the art would also understand that “___”. 

Also: “The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification. If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more.” Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (citation omitted)(emphasis added).

I also point out that there is no haec verba requirement (to address translation issues) for the claims. 

I would call the Examiner and ask her to explain.  If you're feeling snarky i would call to schedule the IV and ask for supervisor to attend.
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eighteighteight

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Re: Examiner won't specifically state the problem
« Reply #5 on: 03-19-18 at 11:59 am »

Given that (1) the standard for claim construction in litigation is different than during prosecution, and (2) the standard for "clarity" has arguably changed substantially in the past few years (and is still something of an open question), I would avoid citing a 1993 Fed Circuit case arising from a litigation.
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