1. PATENT EXAMINATION
How a Patent Examiner Handles
Your Case
Doc. # 431,847

2. PATENTABILITY ISSUES
 Minor informalities
 Objections
 Rejections

3. MINOR INFORMALITIES
 Content issues (i.e. headings, abstract,
format)
 Spelling
 Figures – item numbers described, but not
shown in the figures; item numbers shown
in the figures, but not described in the
specification

4. OBJECTIONS
 Claim objections – informalities in the
claims
 Description objections – subject matter in
the original claims are not supported by
the description

5. REJECTIONS
 112-1st paragraph
 112-2nd paragraph
 101
 102
 103
 Double patenting

6. 112-1st PARAGRAPH
 Enablement
 Lack of written description
 New matter – this it the main one. If you
amend the claims, don’t just tell the
examiner that it is supported by the
specification as originally filed. Identify the
support specifically (i.e. page and line
number or Figure)

7. 112-2nd PARAGRAPH
 Lack of antecedent basis – do not refer to
a claim element as “said element” if the
element has not been previously
introduced
 Unclear claim – examiner doesn’t know
what you are claiming

8. 35 U.S.C. § 102
 102(a)
 102(b)
 102(e)

9. 102(a)
 “the invention was known or used by
others in this country, or patented or
described in a printed publication in this or
a foreign country, before the invention
thereof by the applicant for patent”
 Generally, used for any publication
(except US Patents) dated < 1 year
before your effective filing date

10. 102(b)
 “the invention was patented or described
in a printed publication in this or a foreign
country or in public use or on sale in this
country, more than one year prior to the
date of the application for patent in the
United States”
 ANYTHING published > 1 year prior to
your effective filing date

11. 102(e)
 “the invention was described in –
 (1) an application for patent, published under
section 122(b), by another filed in the United
States before the invention by the application
for patent or
 Used for US patent publications having an
earlier effective US filing date

12. 102(e) (cont)
 (2) a patent granted on an application for patent by
another filed in the United States before the invention by
the applicant for patent, except that an international
application filed under the treaty defined in section
351(a) shall have the effects for the purposes of this
subsection of an application filed in the United States
only if the international application designated the United
States and was published under Article 21(2) of such
treaty in the English language”
 Used for issued US patents and PCT publications having
earlier effective US filing dates

13. EFFECTIVE U.S. FILING DATE
 The effective U.S. filing date (EFD) of a
reference is the date of the earliest U.S.
Application or PCT application designating
the U.S. that supports the disclosed
subject matter used against your claims
 For continuations or divisions, the EFD is the
same as the parent case EFD
 For CIP, EFD for claims supported in parent is
the filing date of the parent

14. EFFETIVE FILING DATE (cont)
 For an application claiming foreign priority, the
EFD is the date the application was filed in the
US (but the foreign filing date can be used to
overcome certain rejections)
 For an application claiming priority to a
provisional application, the EFD is the filing date
of the provisional for all claims fully supported in
the provisional application

15. 35 U.S.C. § 103
 Obviousness rejection
 Very hard to quantify and explain, but
basically neither Reference A nor Reference
B individually teaches everything that you
claim, but when Reference A and Reference
B are combined, your invention is suggested.
There must be some “motivation” to combine
the references

16. DOUBLE PATENTING
 101 – Duplicate claims in granted patent or
pending application (at least one common
inventor or assignee); TD will NOT overcome the
rejection; you must either amend, argue, cancel,
or abandon
 In re Schneller – it is in MPEP, but you’ll never
see it. It is essentially confined to its facts;
rejection must be signed by TC director
 Obviousness type – generally just file TD unless
the claims were restricted

17. WHAT IS THE EXAMINER
THINKING?!?!?!?!
 Is the examiner told to reject?
 Is the examiner only allowed to issue a
certain number of patents?
 Why doesn’t the examiner explain the
rejection better?
 Doesn’t the examiner realize that the
reference is irrelevant?

18. TYPES OF REJECTIONS
 Shotgun rejection – reject all claims in one
very short, not well explained rejection; let
the attorney/agent argue/amend
 Claim by claim – usually very detailed,
directs you to column and line number
within the prior art, examiner’s position
usually pretty clear (even if incorrect)
 C.Y.A. – most dangerous rejection

19. THEORY OF REJECTIONS
 “Throw it out there and see what they say”
 “This is too broad, it MUST be out there”
 “You’ll never get a patent”
 Good rejection

20. HOW TO ARGUE A 102
REJECTION
 Find the missing claim element
 You claim a widget comprising A, B, & C
 Your “invention” is A, B, C, D, E
 Reference 1 teaches A, B, C, G, H
 That is a good rejection
 Don’t argue that you have D and E because you
haven’t claimed it (very common mistake)
 Don’t argue that Reference 1 requires G & H
because you have used “comprising” language

21. HOW TO ARGUE A 102
REJECTION (cont)
 You claim a widget comprising A, B, C
 Reference 2 teaches A, B, D, E, F
 Your “invention” is A, B, C, D, E, F
 Bad rejection
 Argue that Reference 2 does not teach C

22. HOW TO ARGUE A 103
REJECTION
 Do NOT argue that the reference is for a
different purpose
 Do NOT argue the number of references, it
doesn’t matter if motivation is present
 Find missing elements in the references (i.e. you
claim them, references don’t teach them)
 Attack the motivation
 Do NOT argue that similar claims were allowed
in a different case pending before a different
examiner

23. INTENDED USE
 Do not argue intended use
 The intended use does not matter, it is not
a limitation

24. EXAMPLE
 Claim 1. A composition for coating a potato chip
comprising polyvinylpyrrolidone.
 Claim 2. A potato chip coating comprising
polyvinylpyrrolidone.
 Reference A teaches a carpet cleaning
composition comprising polyvinylpyrrolidone.
 Can Reference A be used to reject either claim?

25. ANSWER
 Reference A can reject claim 1, but not
claim 2.
 For claim 1, “for coating a potato chip” is
the intended use and does not provide
patentable weight.
 For claim 2, a “potato chip coating” is not
the intended use, it is the article claimed

26. WHAT AN EXAMINER DOES
 Is the case a DOG?
 1st thing – look at claims
 number of claims and length of claims
 If there are too many claims or long complicated
claims, try to pass the case off on someone else or
restrict
 2nd thing – look at the specification and figures
 Girth – how long is the specification, the shorter the
better

27. TIMING
 Patent examiners have to process a
certain number of applications per quarter
 End of the fiscal year (i.e. September) or
end of the quarter, an examiner might be
easier to convince to allow the case
 Beginning of the fiscal year (i.e. October)
or beginning of the quarter, an examiner is
more likely to reject

28. WHAT AN EXAMINER IS TOLD
BEHIND THE SCENES
 Don’t allow too much, check historic ratio
 It’s OBVIOUS
 Don’t be the “1-click” examiner or “paper
football” examiner

29. WHAT HAPPENS BEHIND THE
SCENES
 Quality Review – not every case
 2nd pair of eyes – paranoia, primary can’t
make decision, SPE determined
 How much time the examiner has
 Law doesn’t matter, only facts
 Special cases and order of examination
 The number of cases an examiner
handles

30. SUGGESTIONS
 Short application, 25 pages or less ideally
 Key to the invention – make sure it is in the claims, don’t try to claim
junk
 If you are basing you invention upon selecting a number or range,
have unexpected results or else it will be obvious
 Not too many claims – if you go over 20, ask yourself whether or not
you really need it
 3 independent claims – broad as you think the prior art will let you
go; as narrow as you could commercially go; 1 “tweener” claim
 IDS – file what you need to file, but don’t file duplicates; most
examiners do not like large IDS

31. SUGGESTIONS
 Be concise in your arguments
 Don’t cite case law – the law doesn’t matter at this stage, just the
facts
 Call or meet with the examiner – most final rejections are because
the attorney does not understand the examiner’s position and vice
versa
 Avoid the RCE – put forth your best claims in your ROA
 Know the difference between a restriction and an election of species
– DO NOT CANCEL UNELECTED SPECIES!!!!!!
 If you amend the claims, direct the examiner to the specific location
within the specification where support can be found

32. SUGGESTIONS
 Argue the claims, not the invention
 Realize that you are not gaining anything
by stating that you “disagree with the
rejection, but in order to advance
prosecution, you are amending the claims”

33. FIRM REPUTATION
 Remember that you are representing the
client and this firm
 Your actions reflect on all of us
 Patterson & Sheridan, LLP has a good
reputation among the patent examiners