“For the things we have to learn before we can do them, we learn by doing them.” – Aristotle
After stepping out of law school, passing your patent bar exam, and landing your first job as a patent attorney, the practicalities of the patent prosecution world can be overwhelming. The knowledge you gained during those years of rigorous study might suddenly seem inadequate as you discover just how much of the day-to-day work you are expected to perform relies on practical training.
Preparing office action responses is likely one of the major responsibilities you will take on as a new patent prosecutor. This work involves tremendous attention to detail, as well as time pressure, as responses must individually address each of the often lengthy rejections and objections raised by the examiner. Moreover, you must do so on a timeline dictated both by client schedules and strict USPTO deadlines. Having a systematic approach to analyzing the office action can keep you at the top of your game, making it quicker and easier to assemble responses, and laying the groundwork for more efficient prosecutions down the road. Read on for a technique that will help you do just that:
Efficiently Analyzing Office Actions:
If you are just starting out as a patent professional, going through numerous pages of what the examiner finds wrong with the application you drafted can be discouraging. Don’t get bogged down! Let me tell you about the method that I have developed to analyze office actions efficiently. This method works well for three reasons. It is:
It helps find the best arguments and responses and puts you in a better situation.
It’s repeatable, so it helps build your confidence and efficiency. It provides a framework within which you can make variations. You can optimize and modify your responses based on a particular situation.
- Well Documented
Documentation is underrated. If you write down your thought process, coming back to it is extremely helpful. It helps with future office actions.
Step By Step Analysis Of Office Actions:
By following a few simple steps to analyze the office actions effectively, you will be able to draft well-articulated arguments and responses.
#1. Getting An Overview:
When you receive an office action, start by getting its overview and create a basic structure. Briefly scroll through the document to see what kind of rejections you are dealing with. Check to see if there is any allowable subject matter. Make notes for the overview of the rejections as you go along. Spell the words correctly and format the document properly for better readability. For example:
When you do this exercise, you get your subconscious working. You get a big picture while going through the process, which will help you while drilling into the rejections and drafting responses.
#2. Use Headings & Subheadings:
Create the headings for your document with the help of the questions you’ll need answers for. For example, ‘What do we have here?’. Also, use subheadings like ‘101 rejections’ and jot down the reasons under it. For example:
These headings and subheadings help to give you clarity. You’ll be asking the same questions in subsequent office actions as you’ll be asking during this first analysis. Thus, it will be much easier to deal with the rejections for future office actions.
#3. Document the Reasons in Detail:
Once you’ve gotten your overarching view, start to drill into the office action. Start documenting the reasons recorded by the examiner in detail. At this point, assume that the examiner is right. Make note of what he says. Document the justifications which are given by the examiner. We are not going to check the rationale at this point. For example, if the examiner cites the MPEP 2106.05(f), we are not going to verify the citation at this step for the following reasons:
- Verifying the reasons at the end gives you thoroughness. You will be able to figure out if the examiner missed a step.
- It primes your mind. You will be thinking of your way forward for your responses.
The strategy that I apply to document the reasons for 101 rejections is different from that for 103 rejections.
For 101 Rejections:
Create a framework for your 101 rejections. Cite the reason for rejection as given by the examiner for each claim. For example:
For 103 Rejections:
Get into the claim language itself and not into an analytic framework. First, copy the claims from your application to the document. Notice how the claims are mapped to the prior art. Do it systematically. Add comments to each claim citing the limitation mapped to it from the office action. Also, look at the dependent claims and how they are mapped to limitations. For example:
When you go through limitation by limitation, you will start finding gaps and automatically know where to focus.
#4. Analyze the Reasons:
Now start scrutinizing the reasons given by the examiner. Check the prior art references as well as the legal references to see if what the examiner is saying is really true or not. Verify the legal reasoning given by the examiner from the case laws, rules, law, etc. cited in the office action. For example, if the examiner cites MPEP 2106.05(f), it is at this point that you open MPEP 2106.05(f) to check whether the examiner has made a true statement or misrepresented.
Look at what each paragraph actually says in the application and not just what the examiner says to verify. You will also be able to figure out which of the reasons given by the examiner are worth arguing about. Documentation is critical. Being thorough and systematic is important.
#5. How to Respond to Office Actions
This method is designed to help you analyze the office action and to make it easier for you to respond to the office rejections. The final step is to figure out your arguments and responses. When you go through the above process thoroughly, you will have laid a foundation. You will get an idea about where the examiner is wrong. Also, you’ll know how to make corrections in the claims where the examiner is right.
- Is there any way to amend the claims to foreclose the examiner’s interpretation?
- Is the examiner’s interpretation reasonable?
If the answer is yes to these two questions, think about how you can propose the amendment to get the examiner to withdraw the rejection. The above approach will give you an idea about whether you need to make any amendments. If so, what to amend as well. Also, check the language you want to use while making your arguments. You don’t want to sound aggressive.
While working on your response to the office action, also check what’s worked previously on similar rejections. Once you start getting into the habit of analyzing the office actions by structurally documenting them, you will create a database for future office actions, whether they be subsequent rejections on the same application, or other applications you are working on.
One of my favorite things about this method is that it saves me from wasting time repeating work that has already been done. Another way to increase your skill and efficiency in handling office actions can be to let the work other attorneys have done preparing their responses work for you. At IP Toolworks, we created the Arguminer software to allow you to easily search publicly available file wrappers to find responses prepared by other attorneys that are a match for your examiner, rejection type, or other criteria unique to the office action you are responding to. You can pull up form arguments to use in your response and discover which arguments have been successful in the past to help you respond more strategically.
I hope you found this approach to analyzing office actions helpful to your response preparation, as it has been for me. Wishing you great success in your practice. Good luck and good patents!
Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion. The examples provided were prepared using sample office actions from PAIR for demonstration purposes, and do not contain client data.”