Patent It Yourself - PDF Archive

ChaPter 13 | GETTING the Pto to DELIVER | 351
MEKIPLaw.com), the longer your response, the more likely
you are to say something erroneous or harmful that can be
used against you later. Third, longer responses take more of
your time to write and your time is valuable also. Fourth,
longer arguments tend to be less persuasive than shorter
arguments because they are diluted and lack as much pith
and force.
38. Enablement
Remember our old friend, Section 112 of the patent statutes,
which reads as follows:
The specification shall contain a written description of the
invention, and of the manner and process of making and
using it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains, or
with which it is most nearly connected, to make and use
the same, and shall set forth the best mode contemplated
by the inventor of carrying out his invention.
This statute contains at least three requirements:
(1) The specification must have a written description of the
invention, (2) It must enable a PHOSITA (person having
ordinary skill in the art) to make and use it, and (3) It must
set forth the best mode contemplated by the inventor. While
requirements 1 and 2 appear similar, the courts have held
that they are somewhat different. Part 1 requires that the
specification describe the invention but not necessarily to
any degree of detail. Part 2 specifies the detail: it must be
sufficient for a PHOSITA to make and use it. In practice
the courts have held that Part 2 means that any specific
embodiments claimed must be disclosed in the description.
Thus when one inventor’s description described a needle
holder with a pressure jacket, his claims to a needle holder
with the pressure jacket complied with Part 2. However
when he broadened his claims to recite a needle holder
alone, the courts held that they were invalid because the
description did not describe this. Liebel-Flarsheim Company
v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004). Thus, to avoid
violating Part 2, you must be sure that every embodiment
covered by your claims (originally and as amended) is
described in the specification and shown in the drawings.
39. Ombudsman Pilot Program
The PTO has implemented an Ombudsman Pilot Program
under which you may be able to resolve breakdowns in the
normal patent prosecution process (e.g., your examiner is
being extremely unreasonable) with the aid of a Technology
Center Ombudsman (TCO). This program is not intended
to resolve normal issues, such as good-faith differences of
opinion on issues of patentability, but only when you have
a question about a specific application in prosecution and
have not been able to find the right person to assist you or
when you have not been able to obtain assistance from your
examiner or the Supervising Patent Examiner (SPE). To
invoke the aid of a TCO, go to www.uspto.gov/ombudsman.
jsp and read the notice and the FAQs to see if it is applicable
to your situation. If so, complete and file the form in the
notice. The TCO will contact you by phone to obtain the
details from you orally.
C. A Sample Office Action
Now that you have an overview of the patent application
prosecution process and the general principles that apply
to it, it’s time to get more concrete. Fig. 13A, below, shows a
sample OA in an imaginary patent application. A study of
this example will enable you to deal with your first OA far
more effectively. It has been purposely written to include
the most common objections and rejections; an actual
OA is usually not this complicated and quotes applicable
statutes. First let’s look at Fig. 13A/1 (page 1 of the OA).
At the top of the OA, the examiner’s name and his
examining section (Art Unit 2540) are given. Art Unit 2540
is part of Examining Group 2500. Before that, in the large
brackets, are the serial number, filing date, and inventor’s
name. To the right is the date the OA was mailed; this is its
official date.
Below the address of the attorney, the first box that is
checked indicates: “This application has been examined,”
denoting that this is the first OA in this application. If
it had been a second and nonfinal OA, the second box,
“Responsive to communication filed on [date],” would have
been checked; had it been a final OA, the third box, “This
action is made final,” would have been checked.
The next paragraph indicates that the period for response
will expire in three months and that failure to respond will
cause the application to be abandoned. Since the OA was
mailed 1998 Oct 9, the period for response expires 1999 Jan
9. If the last date of the period falls on a Saturday, Sunday,
or holiday, the period for response expires on the next business
day. Be sure to calculate the period for response from
the date the OA was mailed, not the date you received it.
Under “Part I,” the checked boxes indicate that two
attachments, a “Notice of References Cited” and a “Notice
re Patent Drawing,” are part of the OA. A typical Notice
of References Cited is shown in Fig. 13A/3, below, and the
drawing notice is shown in Fig. 13A/4. Be sure to calculate
the period for response from the date the OA was mailed,
not the date you received it.