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More PTO Greatest Hits May 4, 2011

Posted by Brian Schar in Patent prosecution, USPTO.

I paraphrase, but you will get the point.

“Dependent claim 2 is rejected under 35 USC 103 as being unpatentable over Smith.  Smith discloses all elements of claim 2 except for D.  However, Smith teaches D.”

You can’t make this stuff up.


1. Jeff - May 10, 2011

When response to office action pointed out that the Examiner’s written description rejection did not make out a prima facie case because he simply recited the language of the statute, the Examiner came back with (paraprhasing): “Because the Examiner is a person having ordinary skill in the art, and because the Examiner does not understand how the claim is supported, the claim is rejected for failing to satisfy the written description requirement.” So he still never even pointed out what claim term was allegedly lacking in support.

2. Sam - May 13, 2011

Brian, did it occur to you the examiner was saying the Embodiment X of Smith showed ABC but did not show D, while Embodiment Y of Smith showed D?

3. Brian Schar - May 15, 2011

Absolutely that occurred to me. However, the Office Action could have said that if that were the case, and it didn’t. I don’t want to create estoppel by guessing what the Examiner meant, and the Examiner could have clarified things and actually provided the required technical reasoning in a sentence or two, if that’s what he really meant.

It’s the sloppy examination that ticks me off. I’d rather get a 102 headshot with a single reference that makes me amend the claim in response than a badly thought out and unsupported 103 rejection that is rambling and sloppy to the point that I can’t understand it.

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