Patent It Yourself - PDF Archive

ChaPter 13 | GETTING the Pto to DELIVER | 363
8. If References Are Cited in Combination
Against Your Broadest Claim
If two or more references have been cited in combination
against your broadest claim, refer to Fig. 13D (Part II) to see
whether the examiner has a point.
Tip
You should especially consider reasons 29 to 33—
that is, ask yourself whether it is proper to combine these
references in the manner that the examiner has done. Also note
that when you use any of the reasons of Fig. 13D, you should not
merely state the applicable reason, but also supporting facts
that pertain to your invention.
9. Does the Combination Disclose Subject
Matter of Your Broadest Claim?
Assuming that the references are combined (whether or
not they can be), ask yourself if the combination discloses
the subject matter of your claim (Reason 37). If not, are the
distinctions in your claim patentable under Section 103
(Reasons 1–28 and 39–41)? Also ask yourself whether there
are any other errors in the examiner’s logic or reasoning.
10. If Your Claims Are Rejected Under
Section 112 of the Patent Laws
If your claim has been rejected under Section 112—a
very common occurrence, even for patent attorneys—the
examiner feels that the language of your claim is not clear
or proper. For example, a very common rejection is for
failure to supply an antecedent for a “said xxxx” phrase.
This is easy to fix. Either positively recite the missing
antecedent earlier in the claim or in a referent claim
which the claim depends from, or rewrite the phrase to
eliminate the “said.” If you accept an examiner’s rejection
that the claim has vague or unclear language, you’ll have to
substitute a more specific recitation. Try not to limit your
invention too much. For example, if you recite that a sheet
is “flexible” and the examiner objects to this word as too
vague, try substituting a recitation such as, “flexible enough
so that it can be repeatedly folded and opened without
tearing.” You may benefit by calling the examiner to seek
suggestions or approval for new proposed language. If the
examiner makes any other type of Section 112 rejection,
try to work out alternative language that will obviate this
rejection. Alternatively, you can ask the examiner to write
clear claims for you. (See Section F2i, below.)
11. What to Do If You Disagree
With the Examiner
If you believe your broadest claim is patentable over the
prior art and that there is a serious flaw in the examiner’s
logic, it is theoretically permissible to “stand pat”—that
is, leave the claim as it is and argue its patentability in
your response. It can be desirable to do this to emphasize
the rightness of your position if the examiner is very
wrong. If you do file a reply to an OA without changing
the specification or claims, your reply is technically not an
“amendment,” so call it a “response.”
In most situations, I advise you not to stand pat, since
it’s difficult psychologically for the examiner to back down.
In other words, it’s easier to get the examiner to change
directions slightly than to make an about turn. Thus,
to save the examiner’s ego, it’s best to try to make some
amendment to the claim, even if it’s insignificant.
“Treat all persons you deal with as if they had a sign
around their neck reading, ‘Make Me Feel Important.’”
—Mary Kay Ash
12. Making Amendments Without
Narrowing Scope of Claim
It’s usually possible to make amendments to a claim
that don’t narrow its scope. For example, you can recite
that a member, which of necessity must be elongated, is
elongated. By doing this, you have amended the claim
without narrowing your scope of coverage. Also, in the
electronic field, you can state that a circuit is energized by
a direct-current source. For almost any claim you can add
a “where by” clause to the claim stating the function of the
mechanism of the claim, and you can add a longer preamble
stating in more detail (but not in narrower language) the
environment of your invention. The important thing is to
add some words to the claim(s), even if you already believe
they distinguish over the prior art under Sections 102 and
103, in order to show that you’re meeting the examiner
part way.
13. Amending Your Claim When You
Agree With the Examiner
If you believe your broadest claim isn’t patentable as written,
and you agree with all or part of the examiner’s rejection,
you’ll have to narrow the claim by adding physical or
structural limitations, or by narrowing the limitations
already present, in the manner outlined in Chapter 9, or by
canceling the broadest claim(s) and making a dependent
claim the new independent claim.