Request for Continued Examination | Get Off The RCE Merry-Go-Round

“It’s annoying to hear – your arguments are not persuasive or they are considered moot in the view of new grounds of rejection”

Source: Patent Law Memes

Negotiating a Patent with the Examiner

Patent prosecution begins with filing a patent application before the USPTO. The examiner then sends an office action detailing the rejections based on prior art references, ineligible subject matter, etc.. In response to the rejections, you will be required to document your arguments and amend your claims as needed. These are tasks that require great attention to detail, and can be particularly daunting during the nascent stages of your career, when you are still learning to effectively analyze office actions and prepare winning responses. 

Once you have responded, it is of course possible that the examiner might not find your arguments persuasive, or might come up with new prior art references, and send you another rejection. Sometimes, this may lead to a rejection being denominated as a new ground of rejection, despite the core of the rejection not having been changed.  Despite all your efforts, after going back and forth on office actions, you land up with a final rejection. Then what do you do? You request for continued examination.

Request for Continued Examination (RCE)

Isn’t it ridiculously frustrating when the examiner says that either your arguments are not persuasive or they are moot in view of a new ground of rejection, particularly one that, at its core, was the same thing that you’d been fighting? After your final rejection, you might decide to file a Request for Continued Examination (RCE) under Title 37 of the Code of Federal Regulations (CFR) § 1.114. You will need to again make arguments and amend your claims in the RCE, but even this might be futile. 

In my early years as a patent prosecutor, the most exasperating part of the process for me was what I call the ‘RCE merry-go-round’. As per the USPTO patents pendency data in May, 2021, the average total pendency time of an application without RCE is 22.8 months. The pendency of applications which include at least one RCE is more than twice that, at 46.2 months. With an RCE, you can feel like you are going around in circles most of the time, without moving ahead in the prosecution process. This was one of the most frustrating aspects of my early career as a patent prosecutor, and discovering how to avoid it has made my patent prosecution substantially more rewarding.

Alternatives to RCE

In order to understand how I got off the RCE merry go round, I think it makes sense to start by looking at the alternatives.  To my mind, there are two: (1) abandon the application, or (2) appealing the rejection.  When I started my career, these seemed like false alternatives.  Abandoning the application obviously means that (absent continuations or other related cases) there will be no patent, while appeals are both long and expensive.  Additionally, abandonment and appeals both have a certain finality to them, while RCEs are like a siren song whispering that an allowance might be right around the corner.  However, one of the defining characteristics of a merry-go-round is that you can go around forever.  Accordingly, to get off the RCE merry go round, it is necessary to accept the alternatives, and I have found that the most palatable way to do this is to plan for them from the beginning and set your goal as having no RCEs.

Laying the Groundwork for an Off Ramp

To understand how to avoid the RCE merry go round, let’s work backwards from the point where you have received a final rejection.  If you are going to abandon the case, it would mean that whatever protection may be available is not significant enough to be worth fighting for.  For example, the examiner may have found a prior art reference that is so close that any innovative features that aren’t described in that reference aren’t commercially relevant in any case.  If you are going to appeal, it would mean that you have made all of the arguments that are worth making but still reached an impasse with the examiner.  The question then, is how do you get to the point where there are no arguments worth making on any commercially significant feature after only the second office action? I have developed two guidelines which have served me well, and which I believe are generally applicable to prosecuting cases while avoiding RCEs.

#1. Include All Your Points of Novelty in Your Claims

By including all of the features you may want to use to distinguish the prior art at the outset, you can avoid a scenario in which you end up having to file an RCE to add a limitation distinguishing a newly cited reference.  The result of this is that my claim sets generally look like trees, with broad independent claims and then multiple, relatively deeply nested sets of dependent claims.  For example, if there are multiple innovative ways of implementing a commercially significant feature, I will generally have a branch of dependent claims for each.  This way, if the potential to protect one branch is pruned off by the prior art, I can still point to another branch as innovative without having to make an amendment that could trigger a final rejection.  Similarly, if the claims recite all of the commercially meaningful novel features from the outset, then if I reach an impasse I can be confident that any additional tweaks will, at best, result in a patent directed to something that isn’t commercially significant.  In that situation it is easy to recommend an appeal, and to avoid getting on the RCE merry go round in the first place.

#2. Be Very Concrete

There’s a phrase in patent drafting called “picture claim.” This term is often used as a pejorative, but in actuality, it can be quite helpful to have a picture claim or two included in your claim set.  As they say, a picture is worth a thousand words but the real concept is not to have a lot of words but to have words that are very concrete. It means that your claims are going to very concretely focus on something that is

a.  Of value to your client (e.g., the preferred embodiment of their commercial product);

b.  Unlikely to be covered in a generic reference written by someone who didn’t actually implement your technology.  

Having this type of picture claim is useful because it can avoid getting trapped in multiple rejection-response cycles (and therefore RCEs) due to disputes over wording.  This is particularly critical because the broadest reasonable interpretation rule means that examiners are almost certain to prevail if there is a dispute on how a claim can be interpreted.  However, if you have a concrete claim at the end of your dependency tree, then you will be much less likely to be in a position where there’s a misinterpretation, and so you can be confident that any impasse is likely to reflect a substantive disagreement with the examiner which can’t be resolved by any amount of RCE-enabled tweaking.  Once again, you can straightaway head to the appeal route without getting on the merry-go-round.

Takeaway

That’s how I avoid getting on the RCE merry-go-round. I know, it absolutely increased my quality of life as a patent attorney. I used to feel that there must be something wrong with me that I could not seem to get my case allowed. I would make changes an examiner seemed to be comfortable with in an interview, just to have him or her issue another rejection and avoid addressing the changes I just made by saying they are moot in view of a new ground of rejection I felt didn’t change anything.  This was annoying and felt awful.  However, by using a logical approach that plans for appeals from the outset, if you reach an impasse you can be confident you did your best and not feel any temptation to continue to futz around. You can even reduce the number of appeals by avoiding certain obvious mistakes while responding to office actions.

You can also check out our tool, Arguminer, which analyzes your office action and matches it with responses most likely to put you on track for success. It’ll help you reduce the frustration of patent prosecution by providing proven arguments, which experienced attorneys have used to overcome their toughest rejections. I have been able to get past this unpleasant chapter of being trapped on the RCE merry-go-round during my career and I hope with the above guidelines, you are able to get off it too.

IP Toolworks Demo

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.”

How to Write a Winning Patent Office Action Response | USPTO

Prosecution is the bread and butter of the patent lawyer’s practice. Because you will likely spend most of your time during the workday reading and responding to office actions, honing skills specific to this aspect of your practice can have a major impact on how efficiently and effectively you are able to manage your practice overall.

Office action responses are where patent prosecutors get to “be lawyers.” Patent applications are very focused on the technology and, aside from the claims, could be written by a technical writer. But office action responses are where you will put your legal skills to work including:

  • Analyzing the legal and technical merits of the examiner’s grounds for rejection
  • Developing a strategy for responding to the rejections
  • Researching cases, regulations, and MPEP sections that support your strategy
  • Writing persuasive arguments that are supported by the law
  • Negotiating with examiners to overcome the rejection

Your prosecution work will lay the foundation for the road you are to face with clients and examiners. Successful prosecution means issued patents. Unsuccessful prosecution will land you, your client, and the examiner in a never-ending cycle of rejections and responses.

Here is a crash course in drafting a winning office action response:

Appearance Matters

Many attorneys find it helpful to begin by reviewing an office action response example which can serve as a template for the office action response being prepared. Doing this will:

  • Help you meet the expectations of examiners and clients about what an office action response should look like.
  • Ensure you do not leave anything out that might trigger a technical office action saying your document was non-responsive.
  • Improve your efficiency.

Developing a template for use now can save time with future office action responses as well. This means you can spend your clients’ time researching and writing effective arguments instead of formatting your document.

Reading is Fundamental

Perhaps you remember the slogan from children’s literacy campaigns that “reading is fundamental.” It is nowhere more true than patent prosecution.

The examiner wrote an office action laying out the reasons for rejection. You must read the office action carefully. If you miss, misread, or misinterpret a ground for rejection, you will needlessly extend prosecution by submitting an incomplete response.

Keep in mind that the easiest office action responses to write are those where the examiner has made a factual error. Examiners make mistakes, and they will occasionally misread your claims or the prior art. If you carefully read the office action and cited references, you can catch these mistakes and correct the examiner with a quick response.

Think Before You Write

You might be tempted to jump right into writing the office action response. But before you start writing, you have a few important decisions to make and some research to conduct.

IP Toolworks Demo

Interviewing the Case

Nearly all experienced attorneys we have talked to recommend examiner interviews as among the most important tools at a prosecutor’s disposal. If you’re lucky, you might have a simple rejection, in which case, interviewing might allow you to overcome the rejection by examiner’s amendment without filing a response. More often, you will be dealing with a more complex rejection, in which case, interviewing can help you narrow down or eliminate some issues. Even if you are not able to get the examiner to agree on allowance during the interview, this will help you submit a more focused response.

Many aspects of how you approach the interview are a matter of personal style and preference, that you will refine over the course of practice. However, to get the most out of this important resource, we recommend that you are are: 

  • Early: some examiners are more forthcoming than others when it comes to what they are looking for to succeed. At minimum, conducting the interview early on in the prosecution will ensure that you don’t waste time pursuing a strategy that is far off track
  • Well-prepared: make sure you have planned the discussion thoroughly in advance. You may want to consider preparing an agenda to share with the examiner.
  • Non-confrontational: At minimum make sure you have checked your frustrations at the door, and counseled any inventors who will be attending to do the same. You may even wish to think of the interview as an opportunity to collaborate with the examiner.

We’ve compiled a list of tips to help you master your next examiner interview, which you can read in greater detail here.

Amending the Claims

There are important tradeoffs to be considered when it comes to amending the claims. Amending the claims, particularly in a way that reflects guidance offered by the examiner during an interview,  can demonstrate that you take his or her concerns seriously and that you are willing to compromise to secure allowance.

However, it is best to proceed with some caution, as amending the claims can limit the scope of protection you are able to secure. If you can overcome a rejection without amending the claims, you and your client are almost always better off doing so.

There is no quick and easy way to make this decision. You will make this judgment on a case-by-case basis. However, it can be helpful to look at the examiner’s history to gain insight into what strategies have or have not, been successful in overcoming this rejection in the past. Using a tool like Arguminer, you can research the examiner’s past behavior to help you chart your path forward.

Developing Your Arguments

Many new patent attorneys are unsure about how long an office action response should be. More important than length is how well-thought-out your argument is. A succinct, well-composed argument may well be more successful than a response that is lengthy, but less focused, and may better capture and hold the examiner’s attention.

Remember, examiners have a limited amount of time to devote to each case on their docket. Burdening an examiner with a long, flowery argument will force the examiner to skim your office action response. A punchy argument will keep the examiner’s attention and allow the examiner to identify what you are arguing and how to respond.

At the same time, complex arguments can require more than a few paragraphs to develop. For example, a rejection under §101 will probably need to apply the Alice test and the examination guidelines to the case.

You have many sources for finding and developing arguments. A quote from a case or the MPEP can provide compelling arguments in some cases. However, it is important to remember that because the MPEP is designed for examiners not patent prosecutors, the support you can derive from this source may be limited in scope and is often inefficient to locate.  Colleagues with prior experience with your examiner or issue are an excellent resource and can often provide additional guidance. Finally, tools like Arguminer can help you conduct pin-pointed research to identify which arguments have worked or failed in the past.

Variance in Examiner Behavior

This last point is critical. Examiner variance accounts for much of the outcome in a case. For example, in U.S. Application Serial No. 15/108,712, “Methods, Apparatus, Systems and Mechanisms for Secure Attribute Based Friend Find and Proximity Discovery’” an examiner issued a “mental steps” rejection under §101. In response, the applicant argued:

There is a fundamental difference between the types of claims that the courts have deemed to be ineligible under this exception and the present claims. Specifically, in the cases discussed in MPEP 2106.04(a)(2), subsection Ill.B, the allegedly inventive steps or elements of the claims (i.e., what the claims were directed to) were mental steps that could be performed in the human mind…. However, unlike the cases discussed in MPEP 2106.04(a)(2), … the steps in the pending claims that cannot be performed in the human mind are not ancillary steps to the invention to which the claims are directed. Rather, they are the crux of the invention.

In U.S. Application Serial No.15/610,596, “Method for Predicting Business Income from User Transaction Data,” a different examiner issued the same rejection and the applicant responded with:

… the claims recite operations that are advantageously performed by components of a communication network (a processor [e.g., of a server] deployed in the communication network) and cannot be performed as mental steps in a human’s mind. Moreover, the claims include significant features that go well beyond simply “using an index to search for and retrieve data” and “collecting information, analyzing it, and displaying certain results of the collection and analysis” within a particular technological environment, and therefore do not seek to tie up a judicial exception.

These responses are very similar in both quality and substance. But the first argument succeeded and the second failed. By doing a bit of research into an examiner’s history with a particular issue, you can hit the right points in your argument to persuade an examiner to allow your case.

Successful Patent Prosecution is Not a Gamble

For clients, it can sometimes seem as if their success rate with patent applications is dictated by chance. Although many aspects of prosecution cannot be controlled, with proper preparation and execution, patent prosecution can be guided in the direction of your desired outcome. By reading the office action carefully, and planning your response before you begin writing, and researching what has worked in the past using tools like Arguminer from IP Toolworks, you can give your clients the best possible chances at success. 

Here is how you can use Arguminer to draw inspiration for the case at hand:

Step 1 – Drag & Drop or click to upload a copy of your Office Action

Step 2 – Get results from our database of millions of responses showing what worked for other people facing rejections like yours.

Step 3 – Customize searching to pinpoint the best options by filtering for examiner, date, keywords and more.

Step 4 – Take what you’ve found to apply a strategy you know was successful in almost no time at all.

Office Action Responses | MPEP VS Arguminer | Book VS Practical Guide

“If MPEP is the rule book, Arguminer is the practical guide to how patent prosecutors have applied those rules (and more) to overcome patent rejections.” 

Area of help (Broad)Area of Help (Narrow)USPTO MPEPArguminer
Foundational KnowledgeTeaches legal Rules & ProceduresYesNo
Sample Prosecution ArgumentsYesYes
ApplicationFile Wrapper SearchNoYes
Rejection Specific ArgumentsNoYes
Identifies Successful ResponsesNoYes
StrategyExamples of Examiner BehaviorNoYes

MPEP is Designed for Examiners | Arguminer is Designed for Prosecutors

In general, the MPEP is designed to help examiners examine applications which, in practice, means helping examiners make and maintain rejections. The result of this is that, while the MPEP is broadly accurate, its discussion will often lack nuance and omit information that applicants are likely to find important in responding to rejections. This is not the case with the Arguminer software, since it is designed to help applicants overcome rejections, not to help examiners make them.

For example, if someone had a case where they thought the examiner erred by treating a single prior art structure as covering separate claim elements, they could simply use the Arguminer software to perform a keyword search for “separate elements” to identify a plethora of arguments (with supporting citations) on that precise issue (e.g., running this search quickly, I pulled up the response of 4-28-2017 on application 14/450,321, which provides an extensive list of cases on this issue). Doing the same search in the MPEP would only turn up a single brief mention in the context of functional language as part of a string citation regarding means plus function claims (a type of claim that most applicants try to avoid using in any event).

IP Toolworks Demo

Where is MPEP Guidance Lacking?

Because the MPEP is written from the perspective of an examiner rather than an applicant, its guidance is not directed to overcoming rejections. Here are some (but by no means all) areas where the MPEP is lacking:

  • Obviousness
  • Negative Limitations
  • Broadest Reasonable Interpretation

Obviousness

The MPEP downplays the importance of avoiding hindsight, and the rules that are in place to prevent a hindsight reconstruction of the applicant’s invention. Indeed, MPEP 2145(X)(A) specifically provides the following guidance for responding to an applicant who asserts that a conclusion of obviousness is based on impermissible hindsight:

Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Applicants may also argue that the combination of two or more references is “hindsight” because “express” motivation to combine the references is lacking. However, there is no requirement that an “express, written motivation to combine must appear in prior art references before a finding of obviousness.” See Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004).

While it is true that there is no requirement for an express, written motivation to combine references, the patent trial and appeal board has explained that “[t]o preclude hindsight in an obviousness analysis, the Examiner must identify evidence ‘in the form of some teaching, suggestion, or even mere motivation (conceivably found within the knowledge of an ordinarily skilled artisan) to make the variation or combination.’”  Ex Parte Kageyama, Appeal No. 2020-002742 on application 15/810,275 (PTAB, 2021), quoting Rolls-Royce, PLC v. United Techs Corp., 603 F.3d 1325, 1338 (Fed. Cir. 2010).

Similarly, while the MPEP lists various arguments an applicant may make with respect to obviousness (often for the purpose of providing guidance on rejecting those arguments), the listing provided by the MPEP is by no means comprehensive. For example, the MPEP does not mention that when a primary reference teaches a solution to a problem, solving that problem cannot be relied on as the reason for modifying the primary reference using the teachings of a secondary reference, something the PTAB made clear in Ex Parte Allen, Appeal No. 2018-008208 on application 14/712,101 (PTAB, 2020).

Negative limitations 

The MPEP (section 2175.05(i)) correctly notes that “Any negative limitation or exclusionary proviso must have basis in the original disclosure.” However, the only example given in the MPEP of how a disclosure can support a negative limitation is that “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” While it is not inaccurate to say that disclosure of alternative elements can provide support for a negative limitation, someone relying on the MPEP would be unlikely to realize that it is possible to support a negative limitation even without disclosure of alternative elements.  E.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”). 

Broadest Reasonable Interpretation

The MPEP accurately states the rule that during patent examination, the pending claims must be given their broadest reasonable interpretation consistent with the specification. However, while it does provide some examples of scenarios where interpretive issues may arise (e.g., effect of various transitional phrases, wherein clauses), like the examples of arguments that can be made in response to an obviousness rejection, the information in the MPEP is in no way complete.

For example, one issue which an applicant may want to be aware of is whether it is proper to treat separate limitations in the claim as being physically separate structures. However, the MPEP’s treatment of the broadest reasonable interpretation rule does not include any indication that interpreting separate elements as not requiring separate structures is something examiners have repeatedly been reversed for.  E.g., Ex Parte Moore, Appeal No. 2020-004805 on Application 15/423,780 (PTAB 2021) (“We agree with Appellant. We find that under the broadest reasonable interpretation of the claim, one of ordinary skill in the art would not consider the telescoping rod 34b to be part of the base.”); Ex Parte Denison, Appeal No. 2009-004110 on application 10/158,362 (BPAI, 2010) (“we note that it is not reasonable to rely on the same structure depicted at the interconnection of Berry’s stent segments to meet both of the limitations requiring a ‘double-curved shaped portion’ and a ‘Y-shaped portion.’”).

Conclusion

Using arguments from the MPEP to respond to office actions may be an effective strategy for some rejections. But determining whether the MPEP contains effective arguments for any given grounds  of rejection is highly inefficient. This inefficiency is not accidental. Rather, it comes from the nature of the MPEP. The MPEP was not written from the perspective of a patent prosecutor responding to office actions. As a result, MPEP provides only a few effective arguments and no effective way to find them.

This is not the case with a tool like Arguminer which was specifically developed to assist in identifying effective and, more importantly, successful arguments for responding to office actions. To learn more about the power of Arguminer to help you find and make effective arguments, contact us.

IP Toolworks Demo

5 Tips to Having a Good Patent Examiner Interview

Interviewing with the patent examiner can provide many benefits to your clients. Oral communication is much more efficient than written communication. As a result, you can often cover more ground in a 30-minute interview than you can in months of prosecution.

Moreover, during a patent examiner interview, you get immediate feedback from the examiner. Listening to this feedback will help you hone your arguments on the fly. You can throw out arguments that have no traction with examiners while focusing on those that appeal to them.

You can also get a better feel for the examiner’s concerns. The MPEP gives examiners form paragraphs to use in office actions. These often do not illuminate the examiner’s specific problems with the invention or the claim language. Through careful questioning and active listening, you and the examiner can focus on the exact problems at issue in the office action.

Your conversation with the examiner might also yield information you might not otherwise obtain. For example, you might discover that the examiner misunderstood your claims or misinterpreted the prior art, which you could then work to clarify. Alternatively , the interview might reveal that the examiner had  a clear understanding of your claims and the prior art, but is unwilling to budge from his or her position no matter what arguments you present. You would go on to address these different outcomes through two very different courses of action. You can determine whether further prosecution before the examiner is worthwhile or appeal is necessary simply by talking to the examiner.

Every patent attorney uses a different strategy for conducting examiner interviews. Here is a countdown of five tips to consider as you develop your interview strategy.

Tip #5: Figure Out What You’re Going to Say

When you draft an office action response, you spend time sharpening your amendments and arguments. You should take the same approach when you prepare for a patent examiner interview.

Examiners will usually only grant one interview, so you should not waste your opportunity. More importantly, under the MPEP, interviews for “sounding out” the examiner are prohibited. When you and your client discuss the possibility of interviewing the case, you should have specific issues you want to discuss with the examiner and a clear goal.

You may have heard or read anecdotes about patent lawyers who get good outcomes while improvising during interviews. This strategy is probably not the best use of your time, the examiner’s time, and your client’s resources. Instead, have a game plan for what you will say and how you will say it.

Tip #4: Get the Right People in the Interview

There is nothing more frustrating than preparing your amendments, arguing your case to the patent examiner during an interview and reaching an agreement with the patent examiner about the amendments, only to have the examiner pull the rug from under you with another office action. Or, worse yet, to come out of an interview agreeing with the examiner, only to have your client overrule it.

Such misunderstandings happen because the interview lacked the people critical to the decision-making process.

On the patent office side, the necessity of on-the-job training for new examiners results in layers of checks. At a minimum, you should politely inquire if a primary examiner should attend the interview when you schedule it. Just beware that some examiners might take offense, so approach delicately.

On your side, you must make a prudent and deliberate decision whether to include the inventor and a representative for your client (if the inventor is not your client). Some advantages of having the inventor and client include:

  • Someone on your side can immediately approve the examiner’s amendments
  • Your client hears what happened rather than receiving a summary from you
  • The inventor can explain the invention and the prior art
  • Your client feels involved

Conversely, having your client in the interview poses some risks, including:

  • Your client can inadvertently make admissions adverse to your case
  • The inventor might take the examiner’s rejections personally, and tensions may rise
  • The client might waste your interview time talking about irrelevant issues

Having the right people in the interview on both sides can facilitate an agreement, but only if they can work collaboratively and not start a confrontation. Remember that a patent examiner interview is not an adversarial process. If the inventor and client attend, make sure they understand that persuasion, not confrontation, during the interview will likely be the easiest path to allowance.

Tip #3: Make an Agenda

The interview request form and patent examiner interview best practices suggest that you identify the issues you want to discuss during the interview. You should consider going beyond this by creating an agenda to will lay out each topic you wish to discuss with the examiner.

Many examiners ask for an agenda when you schedule the interview. You could share your complete agenda with the examiner, or keep your detailed agenda for yourself and instead provide an outline.

In either case, providing the patent examiner with an agenda will help you in a few ways:

  • The examiner has a roadmap, so you can move from issue to issue efficiently
  • You make sure you cover all the points you want to raise without leaving anything out
  • The examiner has a preview of your interview topics, allowing them to  prepare to respond to, or even concede specific points, so that the interview proceeds more smoothly

When you create your agenda, you should also consider including proposed amendments, as this will give the examiner something concrete to consider. Rather than talking in abstractions about the claims, you can point to specific proposed language for discussion. Providing the examiner with your proposed revisions further demonstrates your willingness to work with him or her to reach allowance, and invites the examiner to propose language as well.

The last two points on your agenda can then consist of:

  1. A discussion about whether the proposed amendments will result in an allowance of the case. This is also an opportunity to record proposed amendments that could lead to allowance.
  2. A discussion of whether there are any additional issues, arguments, or amendments to be addressed 

Remember, examiners work with hundreds of cases and thousands of claims every year. Diligent examiners often have suggestions that not only help you secure allowance, but improve your patent application.

You should approach the interview as a two-way communication rather than simply your opportunity to present your case to the examiner. In at least some cases, the examiner will help you on your path to allowance. Most importantly, when an examiner makes a suggestion, and you incorporate it into the claims, the examiner is much more likely to agree that your amendment moves the case forward.

Tip #2: Begin Conceptually

At the beginning of your patent examiner interview, try to identify the broad issues in the office action. One way to do this is to have a conceptual discussion about the prior art and the invention.

Summarize your understanding of the prior art and see if the examiner’s understanding matches. If the examiner has a different interpretation of the prior art, you may be able to address at least some grounds for rejection by persuading the examiner of your interpretation.

Keep in mind that because examiners have an enormous workload, they may not always have your client’s invention clear in their heads when you start an interview. Discussing the concept behind the invention can help get the examiner in the right mindset for the rest of the interview.

Tip #1: Close Concretely

Have a goal in mind before you start the interview. Try to close in a way that makes clear whether you reached your goal. Remember, closing concretely does not necessarily mean that you always win. Rather, it means that when you close, you know whether you reached an agreement and, which direction you and your client should go, if you have not.

For example, imagine  you have a prior art rejection under §102 that you believe your proposed amendments should successfully overcome. Several outcomes are in fact possible at the end of the interview:

  • The examiner agrees that your amendments overcome the rejection.
  • The examiner agrees the invention is distinguishable but disagrees that your amended claims distinguish over the reference.
  • The examiner agrees your amendments overcome a §102 rejection but switches to a §103 rejection.
  • The examiner believes the invention is not novel given the prior art. No claim amendments can overcome the rejection.

Each of these outcomes is acceptable. You know where you stand with the examiner, and you can advise your client about what to do next.

What you want to avoid is ending the interview without a clear understanding of where the case stands. It may take some cajoling to pin the examiner down, but try to reach a concrete conclusion.

A “Good” Patent Examiner Interview

A good interview moves your case forward. That movement could be an agreement or just a better understanding of where your case stands. You can use interviews to benefit your clients and keep their cases progressing by:

  • having a plan 
  • getting the right people in the interview 
  • following an agenda
  • opening conceptually
  • closing concretely 

Keep leveling up your patent prosecution practice! Take a look at 3 Obvious Mistakes to Avoid when Responding to Office Actions!

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.”

How To Effectively Analyze Office Actions

“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:

  • Thorough

It helps find the best arguments and responses and puts you in a better situation.

  • Structured  

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.

IP Toolworks Demo

#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.

Ask yourself:

  •  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.

Arguminer:

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.

IP Toolworks Demo

Conclusion:

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!

Read next: 3 Obvious Mistakes to Avoid when Responding to Office Actions

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.”

3 Obvious Mistakes to Avoid when Responding to Office Actions

It’s natural to trust the examiner and approach things like a lawyer while prosecuting patent applications. However, it may not always be the right course of action to get the patent granted.  

Greetings, my name is William Morriss. I am a patent attorney. I have been practicing for over 15 years now. Today, I will walk you through three mistakes to avoid when responding to office actions. The first two are mistakes that I’ve seen people make while training them on drafting responses. The last one is one that I made when I was first learning. Fortunately,  my mentor taught me how to avoid that mistake for the future.

3. Trusting the Patent Examiner

2.  Focussing on just the independent claims

  1. Approaching things too much like a lawyer

So, let’s begin with mistake number 3.

3. Trusting the Patent Examiner

I am not saying don’t cooperate or collaborate with your patent examiner. You really should, because, ultimately, you both need to reach an agreement. If you go in with a mindset of conflict:

  • I’m going to beat this person, 
  • I’m going to destroy this person, 
  • this person is an idiot, and 
  • they have nothing to say; 

it’s going to be hard to get to an agreement with them. So it’s not about you being aggressive or being confrontational with the examiner. 

It’s more about recognizing that you and the examiner are different people. 

When you prepare the patent application, it has claims that you thought were reasonable and should be supported. However, the examiner is a different person reading with different eyes. The examiner spends much less time reviewing the patent application than you did writing it. They have less understanding of the invention, and they may very well get things wrong.

I remember an example where an associate that I was training nearly got into trouble by trusting the examiner. In this case, the examiner said, “Oh, you know, this term in your claims, I’m going to interpret it this way.” The result of that interpretation was that the invention became treated as non-patentable subject matter, which the examiner rejected under S.101. 

As it happened, I had written this case and knew about this issue. I had included an explicit definition of the term the examiner was interpreting that made it very clear the invention was not subject matter ineligible. The examiner had overlooked it. The associate  took the examiner’s reading at face value and concluded that we needed to amend the claims. This is a very common mistake, as it is quite natural to attach a certain authority to the interpretation made by the examiner. But in fact, it turned out that we managed to overcome the rejection without needing to make an amendment.

In general, it is good if you can respond to rejection without amending your claims, that means:

  • You are not giving up on the scope, and
  • You are not potentially causing a change on the grounds of rejection

It is essential to know that the examiner may be wrong. When you wrote the claim, you did not write it thinking it’s not eligible or supported. You wrote claims that you thought were eligible, supported, and innovative. 

2. Focusing Only on the Independent Claims

Another common mistake that I’ve seen in practice is focusing just on the independent claims and not looking at dependent claims.

Focusing on independent claims seems rational because, to get a patent, you have to reach an agreement on at least one of them. The independent claims are probably the broadest and most commercially viable. However, dependent claims have a purpose too. Dependent claims are built-in fallbacks. There is a reason you wrote them and put them in there. 

When claims get rejected, you must try to get the rejection withdrawn. You can probably do this by inserting the dependent claim’s limitations into the independent claim. Then, the examiner would either have to allow it or give you another non-final action. This is good because you don’t have to request for continued examination (RCE), which will delay things and cost your client money.

You won’t get this result if you focus only on the independent claims and try to make minor changes and clarification while still going for basically the same things as you had before. The problem is that when you make that change, you might not get anything at all, or, based on your change, a new ground of rejection may come up that can be made final. You will then need to:

  • Do a new RCE
  • Pay money
  • Lose patent term
  • Get delayed

Sometimes that is the right thing to do. However, it’s better to avoid it if you can. Working with the dependent claims is a good way to avoid that happening.

1. Approaching Things too Much like a Lawyer

This is a mistake I made when I was being trained. Fortunately, my mentor caught the error and removed it, so it did not go out in the office action response. I was freshly out of law school, at the time, where they teach you all these cases; you learn about claim construction, prosecution history, disclaimers, pleadings and pleadings in the alternatives. These may all make sense in litigation but may not really work in patent prosecution. 

For example, you might have a rejection where the prior art says it has features A, B, and C. The examiner states that a paragraph touches element X with features A, B, and C. You might be confused about which of the features the examiners are relying on. 

In response to the rejection, you could write a very logical, intricate, precise, and sophisticated argument about how the examiner is wrong regarding the features. But it does not help you in any way. 

First of all, it would be very confusing and won’t help you move forward with your case. Secondly, you have to write a lot. Some of this writing would be unnecessary and irrelevant, and worse, could potentially be used against you in prosecution. 

Another example is arguing about the inconsistencies in the patent examiner’s interpretation of the claims based on your training about claim construction from law school. This will not help your case either, as under the broadest reasonable interpretation rule (BRI), examiners have a great deal of discretion and leeway while interpreting claims. 

The better approach

Treat prosecution differently. Rather than responding with a lawyer’s mindset you can:

  • amend claims
  • have an interview with the examiner to understand the differences in interpretation

By the end of the conversation, you won’t have to go through the rabbit hole of A, B, and C and alternatives, or interpretations and claim constructions. You would have figured it out together with the examiner without the arduous process of lengthy writing.

At the conclusion of the interview you might find that you have to make a change, or maybe you will have clarified things so that a change is unnecessary. It is also possible that you might not ultimately agree with the examiner, but the interview would have at least given you the opportunity to know what is happening. In this case it will have helped you figure out that you need to make an appeal.

So what do I do to avoid these mistakes in my practice today?

Ways To Avoid Mistakes

  1. Interviews:

This is an excellent tool to make sure things are on track. If there is time for it and you can get it, interviews are almost always good to have.

  1. Talk to senior colleagues: 

I am fortunate to work with colleagues who have been in practice for a long time; since I was in high school, in some cases. If I have questions or I’m uncertain about how to go about things, I can talk to them. This gives me the benefit of experience that extends a decade or more beyond my own.

  1. Make use of past cases: 

There is a wealth of information that you can get from file wrappers and past cases, especially for issued patents, which are a matter of public record.

At IP Toolworks, we have designed the Arguminer software to help you mine arguments other attorneys have used to avoid pitfalls in their own prosecution practices. This can be helpful if you have a 101 rejection, for example, as this is a very dynamic aspect of law. Even the experience of more senior colleagues might not help as much because the law keeps changing.

With the software you can apply a date filter to ensure your result conforms with the current gold standard for what examiners look out for, and insert other search criteria to find examples that match your specific examiner or arguments you are considering. The Arguminer software can also be used to see examples that did not work for a particular case. Seeing battle-tested arguments and their outcomes can help you both avoid repeating mistakes that other people made and capitalize on their success.

IP Toolworks Demo

Let’s Sum it Up

The three mistakes that people make when responding to office actions are: 

  • Approaching things too much like a lawyer rather than engaging in in-depth communication with their patent examiner to reach a mutual understanding;
  • Focusing exclusively on independent claims, rather than focusing on the independent claims along with the dependent claims; and,
  • Trusting the decisions of the patent examiner without making a personal analysis of the decision.

To avoid these mistakes in your office action responses, it can be helpful to make use of past cases, interview the patent examiner, if you can, and leverage the experience of senior colleagues.

You may like to read – “3 Inspiring Office Action Responses from Techs where 101 Rejections are Rare”

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.”

Patent Prosecution | Bridging the Gap between Experienced and New Attorneys

Bridging the gap between new and experienced patent prosecutors

Want to teach the nitty-gritty needed to write office action responses to new patent prosecution attorneys. Read on to find out if there is an easy way to do it!

The Gap in Learning Patent Prosecution | ‘School’ and ‘On the Job’

Patent attorneys are among the most highly educated professionals out there. Simply to be eligible to sit for the patent bar exam, a would-be patent attorney must have demonstrable proficiency in a field of science or engineering. Many candidates come with industry experience and/or advanced degrees. The problem is, upon conclusion of law school they, like nearly all aspiring attorneys, are likely missing the most important ingredients for success. In fact, a 2015 survey by 5 Square Research found 95% of hiring partners and senior associates who supervise new attorneys believed recently graduated law students lack key practical skills at the time of hiring. This study focused on basic competencies in drafting, transactional skills and legal research, however the gap is greater for more technical, specialized fields. How many IP courses in law school begin to get into the nitty gritty of responding to an office action, for example?

Hiring New Attorneys – A Huge Investment

New attorneys are a huge investment. One law firm strategist calculated $295k as the average cost simply to make the initial hire when recruitment costs are factored in. Large law firms typically find that it takes three to five years to break even on a new hire. The first years can be a time of friction for new attorneys as well, making it even more important that measures are taken so churn is avoided, for the wellbeing of attorneys and firms alike. While such observations have inspired calls for curriculum reforms and certification programs to address the issue, much of the onus remains on the hiring firms, with firms investing an estimated average of $19k per new associate per year, often forming specialized programs to acclimatize new cohorts to life at the firm. New technologies can provide another, often overlooked way to bridge the gap, that was not available for previous generations. Historically law schools have been seen as intertwined with liberal arts education, whose purpose was to “provide the student with certain faculties of thought and expression” designed to allow the student to continue learning long after leaving the classroom.” Law students hone their critical thinking abilities through intensive hours spent analyzing statutes and cases. Even when combined with the most comprehensive knowledge of case law, the best a young attorney can do at this point is reinvent the wheel from first principles. The true education on how to practice as an attorney comes on the job, as is recognized in European practice under the EPO, where the qualification period is not complete until an attorney has finished three years of supervised postgraduate training.

The Need for Mentorship From Experienced Attorneys

Although no such formal requirement exists under the USPTO, the situation is not so different in the United States. On day one I was given an office action to respond to for a client because it needed to be done,” recalls U.S. patent attorney William Morriss of his training fifteen years ago, “A senior attorney reviewed my work. The same is done for new associates today.” While there is no substitute for the depth of experience provided by a solid mentor, guidance can be enhanced with supplementary resources. Such resources in turn lighten the load on mentoring on senior attorneys, who are often pushed to juggle multiple internal and external responsibilities. Over the years, Mr. Morriss started collecting examples of good responses in a folder and spoke to others who did the same. Firms may put together internal examples, but such collections are resource intensive to assemble, and not always kept up to date. These resources are valuable but tend to be limited to the particular examiners and types of rejections colleagues happen to have seen. 

Patent Prosecution Software – Arguminer

Mr. Morriss, who was inspired partly by such observations to develop Arguminer, software specific to the patent prosecution cycle, has likened the on-the-job education new attorneys typically receive to induction to an artisanal guild. There is a certain irony in that we secure protection for the most cutting-edge inventions, yet are often reluctant to incorporate new innovations when it comes to our own practices. With the Arguminer software attorneys are able to get immediate feedback on the specific arguments that did or didn’t work. There is a lot going on behind the scenes. The software uses algorithms to automatically match the user’s uploaded rejection to examples with strong similarities to their situation and allows users to apply their own customized search filters as well. In the case of a brand-new associate, these examples can serve as a sort of template that can be quickly modified to match the situation at hand. More seasoned early career patent attorneys and agents, who have already achieved strong proficiency in drafting, have been able to leverage the Arguminer software to make stronger, more strategic responses on behalf of their clients and to exercise more confidence in their prosecution choices. Users may discover a competitive edge by uncovering responses prepared by a competing firm or draw upon their research to lend support to recommendations when counseling clients.

IP Toolworks Demo

Novice to Experienced Attorney

The Arguminer software, developed by Mr. Morriss with IP Toolworks, is one example of how technology can allow for a smoother path from novice to experienced attorney. It is no substitute for experience, but it means that new attorneys can start their careers with the working knowledge of the most successful practitioners in their field already at their fingertips. From there it is up to them to apply their own judgement, knowledge and insight to do the best job possible on the task at hand.