Patent It Yourself - PDF Archive

356 | Patent it YOURSELF
Under “Part II—Summary of Action,” the examiner
has checked various boxes to indicate what action he has
taken with the application. He has rejected all seven claims
pending. He has also acknowledged that informal drawings
were filed and has indicated that these will be acceptable
until allowable subject matter is indicated.
Now it’s time to look at Figs. 13A/2 and 13A/3 (pages 2
and 3 of the OA).
On page 2 of the Office Action, the examiner gives his
specific reasons for rejecting or objecting to the claims.
The first paragraph of page 2 of the OA objects to the
drawings because they fail to show certain features recited
in the claims. Remember (Chapter 10) that the drawings
must show every feature recited in the claims.
The second paragraph objects to the specification as
inadequate. As stated in Chapter 8, the specification must
teach, in full, clear, and exact detail, how one skilled in the
art would make and use the invention. This is a potentially
serious and fatal flaw, since it is not permissible to add
new matter (see Section B18, above) to supply the missing
description.
In the third paragraph, the examiner rejects all of
the claims under Section 112, since they are based on an
inadequate specification for reasons stated in the second
paragraph.
The fourth paragraph rejects Claims 1 to 6 on the
Ohman reference (see Fig. 13A/3—p. 3 of the OA), under
Section 102. This means that the examiner feels that these
claims contain no novelty over Ohman. The requirement
that the claims contain novel physical features was
discussed in Chapters 5 and 9.
At the bottom of page 2 of the OA, the examiner has
rejected Claim 7 under Section 112 since a “said” clause in
Claim 7 has no proper antecedent in parent, independent
Claim 1 from which Claim 7 depends. Remember (Chapter
9) that every “said” clause must contain an identical
antecedent earlier in the claim or in a parent claim. Many
examiners, especially young ones, lean heavily on any
Section 112 defects.
In the last paragraph of page 2 of the OA (Fig. 13A/2),
the examiner has rejected Claim 7, under our old and
troublesome friend Section 103, as unpatentable over
two references. Note that the examiner states what each
reference shows and why it would be obvious to combine
the teachings of these references. Also note that by using
two references, or by relying on Section 103, the examiner
has tacitly admitted that this claim has satisfied the novelty
(Section 102) requirement. (See Chapter 5, Fig. 5A.)
The examiner next summarizes by stating that no claim
is allowed.
Finally he refers to certain other prior art, which he cites
but does not apply, to provide background and to put on the
record in case he wants to use it later.
The examiner will sign the Office Action at the bottom
and list his telephone number and fax above his official
name stamp.
Next, we turn to Fig. 13A/3 (the Notice of References
Cited). It lists one U.S. and three foreign patents. All of the
foreign references will be attached to the OA, except any
checked in the column marked with the asterisk (*), which
were furnished in a prior Office Action, a prior related
application, or were furnished by you in your Information
Disclosure Statement. The “Document Number” column
generally lists patent numbers. You may have to download
the U.S. patents from the Internet.
The date column indicates the date the patent issued, or
the document was published. If this date is later than your
filing date, the reference is not a good reference against your
application, unless it is a U.S. patent filed before your application.
In the latter instance, the examiner is supposed
to indicate the filing date of the patent reference in the last
column.
Finally, note the Notice of Draftperson’s Patent Drawing
Review (Fig. 13A/4). This sheet comes from the PTO’s
Drafting Department and has been inserted, since they
found several self-explanatory defects in the drawings.
If you’ve sent in your IDS and PTO-1449 (Chapter 10,
Section G), the OA will also include a copy of your PTO-
1449, and a list of your references will be included under
“References Cited” in the printed patent.
When the PTO cites patents as prior-art references, some
inventors react in various illogical ways, as indicated by the
following Common Misconceptions:
Common Misconception: The PTO can’t cite foreign or non-
English patents or other publications against a U.S. patent
application.
Fact: As indicated in Chapter 5, any publication, including
a patent from anywhere in the world, in any language, is
valid prior art against your patent application, provided it
was published before your filing date, or before your earliest
provable date of invention, up to one year before your
filing date.
Common Misconception: An in-force foreign patent that
shows or claims your invention will prevent you from
making the invention in the U.S.
Fact: A patent of any country is enforceable only within the
geographical area of that country and has no enforceability
elsewhere. Thus, for example, a French patent is enforceable