Patent It Yourself - PDF Archive

ChaPter 13 | GETTING the Pto to DELIVER | 385
claim you can call the examiner and ask for a suggestion.
Nevertheless sometimes a claim may seem perfectly clear
and not amenable to any improvement. In this case you can
point out to the examiner that the Court of Appeals for the
Federal Circuit has stated that the definiteness requirement
of § 112 “is satisfied if a person skilled in the field of the
invention would reasonably understand the claim when read
in the context of the specification.” Marley Mouldings, Ltd. v.
Mikron Industries, Inc., 417 F.3d 1356 (Fed. Cir. 2005).
i. Request Claim-Drafting Assistance From PTO
Once again, I emphasize that if you feel you have patentable
subject matter in your application but have difficulty in
writing new claims, you can request that the examiner write
new claims for you pursuant to MPEP Section 707.07(j).
Your remarks are the place to do this. For example, state,
“Therefore Applicant submits that patentable subject matter
is clearly present. If the Examiner agrees but does not feel
that the present claims are technically adequate, applicant
respectfully requests that the examiner write acceptable
claims pursuant to MPEP 707.07(j).” If the examiner writes
any claims for you, don’t rest on them unless you’re sure that
the broadest one is as broad as the prior art permits, using
the criteria above and in Chapter 5. Remember, if you are
dissatisfied with the examiner’s claims, you can once again
submit your own claims, you can submit the examiner’s
claims with whatever amendments you choose, or you can
interview the examiner to discuss the matter. You should
request claim drafting assistance when you file, or after the
first OA, not after a final OA.
j. Repeat the Above for Any Other
Rejections in the Office Action
After you’ve covered and hopefully decimated the first
rejection in the manner discussed in Subsections a to i,
above, then do the same for each additional rejection—that
is, provide a separate heading for the rejection, review the
rejection, review the reference(s), review your new claims,
discuss why they distinguish under Section 102, then why
the novel features are patentable under Section 103, and
request reconsideration and allowance.
k. Discuss Nonapplied References
If any references of interest have been cited but not applied
against any claim, you should read these to be sure they
are less relevant than the applied references. If they are less
relevant, state that you’ve reviewed them but that they don’t
show your invention or render it obvious. If any reference
is more relevant or you think it might be used against
you later, be sure your claims define your invention in a
patentable manner over it and put in a 102/103 argument to
forestall any future use of it against you.
l. Acknowledge Allowed or Allowable Claims
Often the examiner will allow some claims, or indicate
that certain claims would be allowed if amended in a
certain way or rewritten in independent form. You should
acknowledge this statement and if necessary, tell how you
handled it—for example, “Applicant acknowledges the
allowance of Claims 1 to 7 with appreciation,” or “Applicant
has rewritten Claim 13 (indicated to contain allowable
subject matter) in independent form as new Claim 26.”
m. Conclusion
Last, provide a conclusion that should repeat and
summarize—for example, “For all the reasons given
above, applicant respectfully submits that the errors in the
specification are corrected, the claims comply with Section 112,
the claims define over the prior art under Section 102 [briefly
repeat why], and the claimed distinctions are of patentable
merit under Section 103 because of the new results provided
[repeat them briefly again]. Accordingly, applicant submits
that this application is now in full condition for allowance,
which action applicant respectfully solicits.” Then add the
closing, “Very respectfully,” followed by your signature,
typewritten name, your address, and telephone number on the
left-hand side. If you have a coinventor(s), all of you must sign
the amendment.
n. Do Your Very Best Job
It’s important to do your very best job in your first amendment,
since it’s the only full opportunity you’ll get to answer
the examiner’s position. I suggest that after writing the
amend ment, you have a friend read it or you come back to
it after a few days and read it from the viewpoint of your
examiner. As stated in Inventor’s Commandment 28, make
sure your amendment in response to the first OA is complete,
carefully crafted, and includes all arguments and the
narrowest claims possible, since the next OA will be final.
G. Drawing Amendments
If your Office Action includes any objections to the drawing(s),
you must correct these before the case can issue and usually
as soon as allowable subject matter is indicated. In addition,
if you want to make any voluntary amendments to any Fig(s)
of the drawings, you must now make these by submitting a