Patent It Yourself - PDF Archive

ChaPter 13 | GETTING the Pto to DELIVER | 349
associated with a rejection). In addition, anyone can follow
the prosecution of your application (that is, see your Office
Actions and amendments) on the PTO’s “Private PAIR” site.
29. When Submitting Arguments,
Rely on Statutes, Rules, and the
MPEP, Rather Than Case Law
When drafting the remarks portion of an amendment, it’s
helpful to cite authority for any rule of law or requirement
that you rely upon. I’ve tried to provide most of the rules
and main arguments in this chapter, but there are many
more that I do not have room to include. If you need to find
an authority for your position, look in the MPEP, which
is available online at the PTO’s site. The MPEP has a full
online index and its Chapter 2100 on patentability is very
helpful. If and when you do cite any authority, keep in mind
that examiners consider the patent statutes (35 USC), the
Rules of Practice (37 CFR), and the MPEP to be the most
meaningful authorities. Examiners are strictly bound to
follow these authorities. There are thousands of patent cases
available also, but examiners find these far less persuasive
and less useful. (One reason is that it’s difficult and timeconsuming
for an examiner to look up and analyze a case.)
In fact, when I was employed as an examiner, my supervisor
told me never to cite a case since the attorney for the
applicant could always rebut me by citing a different case
with a contrary holding!
30. Don’t Wait Until the Last Minute
I find that most inventors who receive an Office Action
tend to wait until near the end of the three-month period,
or even later, to draft their response. The reason for this
procrastination is usually due to fear of tackling a new task.
However I strongly advise you grit your teeth and do the
job as soon as possible so that you will have enough time,
you won’t be rushed, you can ramp-up to the nuances and
intricacies of the process, and you’ll have time to review
and polish your work.
31. Patents and Published Patent Applications
Are Prior Art as of Their Filing Date
as Well as Their Publication Date
As discussed in Chapter 5, patents and published patent
applications (PubPAs), unlike other publications, are
effective as of their filing date, in addition to their
publication date. So if the examiner rejects your claims on
a patent or PubPA, you may have to consider both dates
when formulating your response. If the patent or PubPA
was published over a year before your filing date, it’s a
statutory bar (Section 102(b)) so you can’t swear behind it
(see Section D3 below) and thus only the publication date
is relevant. If the patent or PubPA was published less than a
year before your filing date, it’s prior art as of its publication
date (Section 102(a)) and as of its filing date (Section 102(e)).
You must swear behind the earlier (filing) date by proving
an earlier date of invention—see Section D3, below, and
also review Chapter 5, Section E1b. Check the date of all
prior art cited against your application, since examiners
sometimes make mistakes—for example, after the PTO
published an application of Nokia’s, an examiner examined
the application and mistakenly cited the published patent
application against itself!
32. Patent Examiners Overwhelmed
An article on WashingtonPost.com (2007 Oct 8) noted that
examiner turnover and the PTO’s backlog are very high
due to production quotas, difficulty of searching, and the
cost of living in the DC area. In other words, the quality of
examination has been declining and the delay in receiving
an Office Action has been increasing, a situation that could
be harmful to U.S. competitiveness. For this reason you
may have to wait a long time before you receive a first Office
Action. You can check the status of cases in your examining
division to ascertain approximately when you will hear
from the PTO. To do so, first find out the examining
division or Group Art Unit from your Filing Receipt. Then,
go to the PTO’s home page (www.uspto.gov), click Patents,
then Search Aids, then OG (Official Gazette) regular and
special notices, then Browse [current year], and finally
click the latest issue. Click Patent Technology Centers and
find your Group Art Unit. In the right-hand column find
the average filing date that your GAU is working on now.
Compute the time from this date to the present date and
add this time to your filing date to find the approximate
date they will reach your case.
33. Beware of “Whack-a-Mole” Rejections
Examiners have been increasingly making subsequent
rejections on a different ground than a previously rebutted
rejection, even though the subsequent rejection could have
been made when the previous rejection was made. Some
patent attorneys have termed this practice, “Whack-a-
Mole Rejecting.” (It is also called piecemeal prosecution
and condemned in the MPEP.) There is no good solution
except to be aware in advance that it may occur and to take
it philosophically if it does occur and patiently respond
to each new rejection in the usual manner. If it becomes