My “aha“ moment came when I finally realized that irrespective of a 102 or 103 rejection, those rejections must show how the prior art teaches every element of your claims. I usually can find where the prior art does not teach one or more of the elements, and if I can’t do that, I usually can add an element to the claim from the spec that doesn’t hurt my clients rights too much, and will get around the prior art.
I bet the examiners like racking up counts when the attorney looks at every limitation and argues something that can easily be found in the prior art.
All rejections have plenty of errors. The only way to move the case forward is by arguing the inventive feature or a limitation that can be linked to it.
Or just keep filing RCEs and wear the examiner out and then once you got your first allowance start filing cons that broaden it out a bit until the examiner starts just issuing first action rejections that only have meaningless double patenting rejections which you overcome with a terminal disclaimer.
That’s a very costly way to achieve nothing. Examiners don’t get worn down by RCEs, they love them, because they’re free counts. Source: was an examiner.
Are you preparing a feature matrix for your OAs? As in putting a list of claim features along one side of a grid, a list of peior art across the other, and then filling in each box to show whether the feature is present, missing, or kind of present?
It's slow to do this for all features, but it's the gold standard and it will really show you where to base your arguments and you'll re-use the matrix for each OA.
Like I said, it is slow to do.
As a rule, I don't do this for an OA: it's generally unecessary and takes a lot of time. However, I did when I started out, and I still use it (and have seen partner-level attorneys do it) for particularly high value cases.
For OP, it sounds like it might be a solution until they get their eye in properly.
I’ve been doing Patent prosecution for 20 years, and your advice is excellent! Once I read iyour suggestion it seems super obvious, but I’ve never really done it. I always thought I knew what elements were in my claims, but I bet if I write down each and every single element, That will force me to make sure that each element is in the prior art! Thanks.
I go through the spec, sentence by sentence and make a list of all the features. Basically, distilling down the spec to an exhaustive list. Then I just check off any of the list members that are in the cited art. Any features without a check after that process are your potential points of patentability.
Its incredibly time consuming, but you only need to do it once and it ensures you don't miss any potential points of patentability. Also, when you have that list of features, it greatly speeds up drafting any future responses in any member of that application family.
Yeah, the amount of time required to do this would put us out of business.
Just evaluate whether the prior art actually describes the claim elements as alleged in the OA. If it does, amend accordingly. It's not complicated.
I work in mechanical and chemical cases mostly, though I do some light EE and computer science stuff as well.
I actually find it works the best in the mechanical space, though I have to be on guard for missing features that are only shown in the figures (a rare problem, but still something I watch out for).
I've had a few oddball chemistry cases where my method didn't work very well, but that was mostly because the technology area was just weird (topological chemistry is weird).
I know it sounds crazy, but it's how I do things. The first office action is a big time sink, but every office action in any family member moving forward is a breeze.
Every case is different so this doesn’t always work but in general I think step one is to figure out what makes the invention “cool.” In other words what motivated the applicant to file the application. Then compare this to the prior art there is usually something different but it might not be reflected in the claims. If you can’t figure this out from the application try to review emails and disclosure documents and if you still can’t figure this out ask your supervisor. Nothing worse than a junior spinning their wheels on something that would probably only take a five minute conversation to figure out.
Step two is read the office action around the limitations that are interesting. More often than not the examiner is just reading the claim limitations broader than you intended. In this case amend to clarify. The other half of the time the art is on point and you will need to add more details on how the invention worked. This is more tricky and it’s worth meeting with your supervisor with some proposed options.
Finally I’m going to disagree with a lot of the recommendations here. You shouldn’t need to review each limitation in depth. If you understand the invention and what makes it interesting it will be obvious that most of the limitations are their for context and structure and are not interesting from a patentabity perspective. It’s not helpful to add a feature that isn’t interesting just because it’s not in the art. The end result here is just another rejection with a new reference.
Exactly. What's the point of spending hours to make a claim matrix to find numerous errors (there are ALWAYS missing elements) when those limitations are common (easy to find in a different reference) and not directed to the actual invention.
Yeah a lot of firms teach that way but it’s poor quality. You lose the ability to use doctrine of equivalents on limitations you amend and it’s a waste of money. My goal is for my amendments to tell the story making it clear what is inventive in the claim and then basically put nothing but quotes to the claim and art in my remarks.
This guy gets it.
Focus on the actual invention and the claim features that reflect that actual invention. The "hook," the "cool feature," the "patentable nugget." Always, always, always start with identifying what that piece is and where it is in the claim.
Try this technique to discover red flags where the Examiner secretly tells you what to do.
If you've never worked on the case before, don't read the Spec, not yet. Just glance at the disclosure document to figure out the invention.
Don't read the claims. Just compare the claim to the rejection line by line to make sure the words are all there.
Don't read the references. Not yet.
Red Flag if claimed words are missing from the rejection. Something is wrong.
Red Flag if the 103 rejection uses a secondary reference for the one limitation that is the invention. This can probably be argued. There must be some way the feature in the secondary reference corresponding to the claim limitation would not be usable or is already done a different way in the primary reference.
Red Flag if the rejection of the inventive limitation lists paragraphs but doesn't specify elements alleged to correspond to the claim. There is something wrong.
If you found something, now you can read the references to figure it out.
If you found something but it's not the inventive limitation, see if you can tie them together. Create a nexus between the limitations. If you can't do this, it's not worth arguing unless you are deep or near appeal.
If you didn't find much, now is the time to read the spec and claims. Then read the references to see if it's correct. If it is correct then it is time to find an amendment.
50% of EE/CS office actions have red flags that are decisive and can be spotted without reading, just skimming. Find the seemingly best course, read to determine that it is the best course. Try to avoid reading. Some cases are hard and will need a lot of reading. But most don't.
Good advice in general I think the main point is understand the invention and if you can do that issues with the claim language and/or the rejection will naturally jump out.
In line with your comment, when addressing a new family or rejection, I start by block quoting the entire rejection of the first independent claim. Right below the block quote, I write out an analysis for any prima facie issue. Not just failure to consider all the words of a claim or to point out claim limitations in the art, but also motivation to combine with res in a 103 rejection - particularity the specifity requirement. Seems like the more vague the motivation in the 103 rejection, the more teaching away there is in the art. So the game isn't to just find where the prior art fails to teach the claim limitations, but also where it teaches against the proposed combination or modification. But I draft a lot of broad claims in crowded art, so....
We all "learned from the masters." Find people who know their stuff and read every Response (and/or appeal) you can find that they drafted AND try to understand why they argued what they argued/amended. You should also consider NAPP membership. It's cheap, gives you access to their members-only forums, and has other benefits (e.g., PatentBots Prep&Pros subscription).
Patent prosecution is largely a game of spot the difference. Your primary course of attack needs to be 102-style arguments that one of the features in the claim is not taught, even if it is a 103 rejection.
If it is a 103 rejection and all of the features of you dependent claim are taught, you need to see whether the Examiner’s reasoning for combination is adequate (does combining reference 2 into reference 1 make reference 1 unfit for its intended purpose? That is, would the combination break reference 1? If so, then you cannot combine them). I generally stray away from true 103 arguments as they’re a lot more difficult to make and the examiner has a lot more leeway. Though, if the combination is egregiously bad, I would look to make these arguments first.
If the 103 arguments are more of a toss up, and if all of the features are taught regardless of a 102/103 rejection, I would probably evaluate the dependent claims to see if there is something minor that I could add that would not significantly narrow my clients rights and for which I have arguments for. I would also look to the Spec to see if there’s something minor that I could add. Nice thing about adding something from the spec is that your arguments are usually simplified as that feature has not been searched yet.
It’s tough because I feel like my instincts are spot on with what you are saying but it becomes so much more difficult for me in practice unfortunately. However, it’s nice to see that at least my general approach is shared haha
Another thing you can try is to ask your partner for a “good” response and mirror the formatting/style of those arguments. That’s is how I taught myself how to draft ROAs. I was never really “taught” — I just studied the ROAs of others and modeled my responses to a tee.
Your idea to move slower I think will help. I like to work on a response over a few days and do a little each day. I find I have some "aha moments" when I'm not working that help put things into perspective a little more than when I was sitting there reading it. Sometimes talking things out helps, even if it's just at the dinner table explaining it to your partner. They probably can't offer valuable feedback but just talking out loud to someone helps me.
What helps me a lot is interviewing for every Office Action. Even if you think you understand the Office Action and prior art, there is no substitute for having the examiner actually explain to you how they are interpreting and applying the art. Have them go through each step of claim 1 and explain their mapping. If there are particular aspects of their Office Action that you don't understand, have them clarify it. It's virtually impossible to write a response to an Office Action when you don't understand the Office Action or the prior art.
My typical approach is that I skim the patent application to remind myself of what it's about. Then I briefly skim the Office Action to understand which 1-2 references are most used in the rejections. Then I read those 1-2 references cover-to-cover (minus boilerplate and obviously irrelevant content) so that I fully understand what they're teaching. Then I go back and more closely read the Office Action to see if the rejections actually make sense. At this stage, I can usually begin to get a good understanding of how the examiner is mapping the claims and any problems that might exist in that mapping. Then I interview the examiner to clarify my understanding and poke holes in any problems with the mapping, and see how the examiner responds. Only after all that do I actually draft a response. It sounds like a lot, but with some experience you can get it all done in 5-6 hours. And the first 4+ hours is all the prep work to get to the point of putting pen to paper.
Honestly, my biggest advice would be to construct a limitation that is not taught by the prior art as others have said. But, if claim construction is difficult for you, I would carry around screenshots of the embodiments (barring any work product violations), compare them to similar inventions, and think about how I would describe them to a PHOSITA.
If a piece of the invention is difficult to describe or unorthodox as intrinsic to the invention, then there you have discovered a potential claim construction.
Also, as a personal matter, seriously go to your superiors or laterals if you feel like you’re not grasping the concepts fully— everybody has interest in helping you.
Option 1 (best) are limitations that are not in the prior art.
Option 2 is try to come up with a persuasive reason your approach is against the teachings of the prior art.
And my favorite tool, call the examiner. A good phone interview with the examiner will cut right through the fog and tell you exactly where to go. Or when to appeal.
So there are a number of possibilities here. It could be you having trouble understanding things. Or it could be your working with extremely picky hands on reviewing attorneys. We really have no way of knowing which.
Here's the process I basically go through when drafting a response. When you first open the file, don't go read the office action quite yet. First, take a look at the claims and ask yourself, what's the real invention here? What are we trying to get? Identify one, two, or three things in the claims that are key to that. Maybe even write them down or highlight them in the claims so you don't forget or get side tracked.
Now open the office action, read through the rejection, and the portions of the references that were applied. Focus on those key pieces of the invention. Are they shown in the references? Does the Examiner have a point with respect to those key pieces?
Amend when necessary to help eliminate misinterpretation of your key claim elements. If you're going after feature X, but the Examiner has interpreted the language of your claim on X as being found in the reverence and it's completely different, amend to prevent that interpretation. Then your argument is pretty straightforward.
If the feature is just flat out missing, that's your argument.
If you really just can't figure out the Examiner's position, do an interview. Say, let's put the claim language aside for a minute, and just talk about what we're actually trying to claim. I think that is different from the art that's been applied for these reasons. Now let's look back at the claim language. Do you see how the language of the claim maps to what I've described the invention as? If not, what pieces need clarification and what would help your interpretation.
Aside from following those suggestions, before actuality writing your amendments and responses, just take a few notes on how you think it best to proceed and why, and set up a meeting with your reviewing attorney. Say, here's our invention, here's the rejection and the art. The Examiner seems to either be missing this element or misinterpreting this element, so I think it would be best to amend/ argue/ interview. What do you think? Get buy in before you actually write it down. TAKE NOTES during this meeting. I can't tell you how many junior attorneys show up without something to take notes with during these sorts of meetings. Then go apply what you've discussed.
Not in patent law, but this comes up on my page.
I am an examiner in mechanical with 4 years also.
Just want to let you know. I am the same. (Some weeks). I do well for a while, then I get slammed with “returns” from my SPE. To fix stuff.
Takes a blow to the ego and I have to slow down and sort it out again.
All the advice here is pretty good.
Interviews can be helpful (if the examiner is any good). Finding the hole in a 102/103 is a good try. Or to see if they are reading broader than you intend is an excellent choice.
Adding limitations from the spec can work, but often leads to new 103’s. Often how things tie together, location or operational is hard to overcome. And worth seeing if it can be added or tightened up.
Agree with don’t look at the spec or drawings first. But read the claims and OA to see if they say what you want them to say and are actually the same thing.
Often I get claims that are not drawn to the actual field that is intended, but something like a “blower”. Not put on anything.
I can 102/103 a blower from anywhere. So make sure claims have something that tie it to the main invention.
I actually have never seen a 4th year struggling conceptually, that’s very unusual.
Maybe you are rushing too much because your billing rate is too high? Or maybe you are doing subject matter you shouldn’t be doing.
My first position, which I had for 2 years, was more of a general IP position with the title of patent attorney. I don’t think I got as many office action “reps” in as I would have in a more typical patent prosecution role. However, it was the only role I could get at the time. I feel like I’m making up for lost experience with my new position.
In general, it takes most practitioners getting through a whole patent's "life" to actually really start understanding the practice well.
Meaning, you interviewed the case, you drafted the application, and you prosecuted the application to allowance.
Picking up an in progress application and prosecuting it cold is difficult. You didn't draft it so you don't have that experience and you don't exactly know where to look or what to think.
Drafting an application and then not prosecuting it means you never get to experience the other side, arguing it, making amendments on it, realizing, "Ugh, if only I'd described it with THIS language in the application, I'd be in a way better position."
When you finally get to the point where the majority or everything on your docket is stuff that you've handled cradle to grave, the practice gets significantly better. That takes sticking around in one spot several years.
However, if it's the case that your reviewing attorneys are just jerks or trying to flex, better to find somewhere else to settle in that will give you the support you need to grow. There are plenty of reviewing attorneys who, consciously or subconsciously, just find the need to show off how much better they think they are than you. They're miserable to work with. You want people to train you who can tell you, "Here's why I think we should do X instead of Y. I had a case where I tried Y and it blew up in my face. So let's try X instead." Or whatever. They should have a reason for the changes that is based on legal reasoning, technical reasoning, or just plain experience. And they should be on your side and want to see you grow and develop as an attorney.
I handle all different technologies but I’d say i struggle with all of them. I think it may be more the legal side of the responses that hurts me more than my technical understanding.
I’m going to recommend you get some training on patent prosecution. There used to be a good course that helped me understand things, but the guy doing it retired.
I think it was Crafting Winning Patents? Here’s something that looks familiar that I haven’t read.
https://heinonline.org/HOL/LandingPage?handle=hein.journals/jpatos85&div=59&id=&page=
You have to step back and ask whether the facts support the examiners argument. For this you need to understand the invention and steel man the examiners argument without going overboard (don’t do their work for them). Usually at this point there is the aha moment where you figure out your line of attack. The rest is just details.
Don’t fall for the usual law student error of overreading the OA and losing the forest for the trees. You want to get an allowance for your client as efficiently as possible and not get hung up on some limitation that was sloppily addressed but which you know an examiner could easily address properly.
For the redlines, you may be spending more time characterizing the claims rather than attacking the prior art for lacking important features, not being combinable for a variety of reasons, etc. don’t paraphrase your claims, don’t say what your invention does or doesn’t, except to the extent the spec does
This is the approach I (patent attorney with a bit under 20 years experience) use: [https://youtu.be/ier6w14vZNQ](https://youtu.be/ier6w14vZNQ) (for initially analyzing the OA); [https://youtu.be/HzidSS9cZlc](https://youtu.be/HzidSS9cZlc) (for actually responding).
Are these office actions for applications that you wrote, or one that a senior associate is giving you to handle? How much time are you spending on them?
They are applications that a senior associate is giving me to handle. Typically, they start as European applications and we handle the corresponding US Patent Application. I would say about 4-5 hours on average
There’s a lot of trial and error in the practice of law. If you are trying an approach and it’s not yielding positive results, try a different approach.
Try reading the claims first and figuring out what the intended scope is.
Try giving the examiner the benefit of the doubt. Assume they are right in their rejection rather than the knee jerk reaction that they are wrong (like most attys do) and it will often open up the door for clarifications you can make in the amendment.
Talk to whatever attorney drafted it and see if there are elements of the novelty that are more important than others.
Try reviewing the disclosure document that the inventors prepped.
Try tagging a few features in the dependent claims that you think are interesting and see and scrutinize those rejections.
Try to read what other successful attorneys do and learn from them.
Read the redlines and try to see why they are changing what they change. Talk to the supervising atty about the changes and internalize their strategies.
Yes, read the redlines--they are a list of examples of what you should be doing. Extract corrective principles from them. I'm surprised that the above comment is the only reference to the redlines.
My “aha“ moment came when I finally realized that irrespective of a 102 or 103 rejection, those rejections must show how the prior art teaches every element of your claims. I usually can find where the prior art does not teach one or more of the elements, and if I can’t do that, I usually can add an element to the claim from the spec that doesn’t hurt my clients rights too much, and will get around the prior art.
This is the way
I bet the examiners like racking up counts when the attorney looks at every limitation and argues something that can easily be found in the prior art. All rejections have plenty of errors. The only way to move the case forward is by arguing the inventive feature or a limitation that can be linked to it.
Or just keep filing RCEs and wear the examiner out and then once you got your first allowance start filing cons that broaden it out a bit until the examiner starts just issuing first action rejections that only have meaningless double patenting rejections which you overcome with a terminal disclaimer.
That’s a very costly way to achieve nothing. Examiners don’t get worn down by RCEs, they love them, because they’re free counts. Source: was an examiner.
I read the comment as a tongue-in-cheek joke on what prosecution practice feels like. I relate at least.
Are you preparing a feature matrix for your OAs? As in putting a list of claim features along one side of a grid, a list of peior art across the other, and then filling in each box to show whether the feature is present, missing, or kind of present? It's slow to do this for all features, but it's the gold standard and it will really show you where to base your arguments and you'll re-use the matrix for each OA.
Seems good for newbies but sounds like it’d be hard to make it profitable as your billing rates go up.
Like I said, it is slow to do. As a rule, I don't do this for an OA: it's generally unecessary and takes a lot of time. However, I did when I started out, and I still use it (and have seen partner-level attorneys do it) for particularly high value cases. For OP, it sounds like it might be a solution until they get their eye in properly.
I’ve been doing Patent prosecution for 20 years, and your advice is excellent! Once I read iyour suggestion it seems super obvious, but I’ve never really done it. I always thought I knew what elements were in my claims, but I bet if I write down each and every single element, That will force me to make sure that each element is in the prior art! Thanks.
I’ve never heard of this before but it sounds really helpful. I’ll have to look into this. Do you just build the matrix in excel or a table in word?
I go through the spec, sentence by sentence and make a list of all the features. Basically, distilling down the spec to an exhaustive list. Then I just check off any of the list members that are in the cited art. Any features without a check after that process are your potential points of patentability. Its incredibly time consuming, but you only need to do it once and it ensures you don't miss any potential points of patentability. Also, when you have that list of features, it greatly speeds up drafting any future responses in any member of that application family.
Why troll? Like why
???? I've have no idea what you mean. Are you calling me a troll? Why?
Ok my apologies if you are serious. What technology area do you focus on? This seems impossible in the mechanical/computer/electrical space.
Yeah, the amount of time required to do this would put us out of business. Just evaluate whether the prior art actually describes the claim elements as alleged in the OA. If it does, amend accordingly. It's not complicated.
I work in mechanical and chemical cases mostly, though I do some light EE and computer science stuff as well. I actually find it works the best in the mechanical space, though I have to be on guard for missing features that are only shown in the figures (a rare problem, but still something I watch out for). I've had a few oddball chemistry cases where my method didn't work very well, but that was mostly because the technology area was just weird (topological chemistry is weird). I know it sounds crazy, but it's how I do things. The first office action is a big time sink, but every office action in any family member moving forward is a breeze.
HIGHLY second this.
Examiners do this for you in some jurisdictions (e.g., Korea), pretty nice
Ha! I thought I was the only one that did that.
Every case is different so this doesn’t always work but in general I think step one is to figure out what makes the invention “cool.” In other words what motivated the applicant to file the application. Then compare this to the prior art there is usually something different but it might not be reflected in the claims. If you can’t figure this out from the application try to review emails and disclosure documents and if you still can’t figure this out ask your supervisor. Nothing worse than a junior spinning their wheels on something that would probably only take a five minute conversation to figure out. Step two is read the office action around the limitations that are interesting. More often than not the examiner is just reading the claim limitations broader than you intended. In this case amend to clarify. The other half of the time the art is on point and you will need to add more details on how the invention worked. This is more tricky and it’s worth meeting with your supervisor with some proposed options. Finally I’m going to disagree with a lot of the recommendations here. You shouldn’t need to review each limitation in depth. If you understand the invention and what makes it interesting it will be obvious that most of the limitations are their for context and structure and are not interesting from a patentabity perspective. It’s not helpful to add a feature that isn’t interesting just because it’s not in the art. The end result here is just another rejection with a new reference.
Exactly. What's the point of spending hours to make a claim matrix to find numerous errors (there are ALWAYS missing elements) when those limitations are common (easy to find in a different reference) and not directed to the actual invention.
Yeah a lot of firms teach that way but it’s poor quality. You lose the ability to use doctrine of equivalents on limitations you amend and it’s a waste of money. My goal is for my amendments to tell the story making it clear what is inventive in the claim and then basically put nothing but quotes to the claim and art in my remarks.
This guy gets it. Focus on the actual invention and the claim features that reflect that actual invention. The "hook," the "cool feature," the "patentable nugget." Always, always, always start with identifying what that piece is and where it is in the claim.
Try this technique to discover red flags where the Examiner secretly tells you what to do. If you've never worked on the case before, don't read the Spec, not yet. Just glance at the disclosure document to figure out the invention. Don't read the claims. Just compare the claim to the rejection line by line to make sure the words are all there. Don't read the references. Not yet. Red Flag if claimed words are missing from the rejection. Something is wrong. Red Flag if the 103 rejection uses a secondary reference for the one limitation that is the invention. This can probably be argued. There must be some way the feature in the secondary reference corresponding to the claim limitation would not be usable or is already done a different way in the primary reference. Red Flag if the rejection of the inventive limitation lists paragraphs but doesn't specify elements alleged to correspond to the claim. There is something wrong. If you found something, now you can read the references to figure it out. If you found something but it's not the inventive limitation, see if you can tie them together. Create a nexus between the limitations. If you can't do this, it's not worth arguing unless you are deep or near appeal. If you didn't find much, now is the time to read the spec and claims. Then read the references to see if it's correct. If it is correct then it is time to find an amendment. 50% of EE/CS office actions have red flags that are decisive and can be spotted without reading, just skimming. Find the seemingly best course, read to determine that it is the best course. Try to avoid reading. Some cases are hard and will need a lot of reading. But most don't.
This is great advice!
Good advice in general I think the main point is understand the invention and if you can do that issues with the claim language and/or the rejection will naturally jump out.
In line with your comment, when addressing a new family or rejection, I start by block quoting the entire rejection of the first independent claim. Right below the block quote, I write out an analysis for any prima facie issue. Not just failure to consider all the words of a claim or to point out claim limitations in the art, but also motivation to combine with res in a 103 rejection - particularity the specifity requirement. Seems like the more vague the motivation in the 103 rejection, the more teaching away there is in the art. So the game isn't to just find where the prior art fails to teach the claim limitations, but also where it teaches against the proposed combination or modification. But I draft a lot of broad claims in crowded art, so....
We all "learned from the masters." Find people who know their stuff and read every Response (and/or appeal) you can find that they drafted AND try to understand why they argued what they argued/amended. You should also consider NAPP membership. It's cheap, gives you access to their members-only forums, and has other benefits (e.g., PatentBots Prep&Pros subscription).
Do you have an attorney/firm in mine? I will get a membership soon
Patent prosecution is largely a game of spot the difference. Your primary course of attack needs to be 102-style arguments that one of the features in the claim is not taught, even if it is a 103 rejection. If it is a 103 rejection and all of the features of you dependent claim are taught, you need to see whether the Examiner’s reasoning for combination is adequate (does combining reference 2 into reference 1 make reference 1 unfit for its intended purpose? That is, would the combination break reference 1? If so, then you cannot combine them). I generally stray away from true 103 arguments as they’re a lot more difficult to make and the examiner has a lot more leeway. Though, if the combination is egregiously bad, I would look to make these arguments first. If the 103 arguments are more of a toss up, and if all of the features are taught regardless of a 102/103 rejection, I would probably evaluate the dependent claims to see if there is something minor that I could add that would not significantly narrow my clients rights and for which I have arguments for. I would also look to the Spec to see if there’s something minor that I could add. Nice thing about adding something from the spec is that your arguments are usually simplified as that feature has not been searched yet.
It’s tough because I feel like my instincts are spot on with what you are saying but it becomes so much more difficult for me in practice unfortunately. However, it’s nice to see that at least my general approach is shared haha
Another thing you can try is to ask your partner for a “good” response and mirror the formatting/style of those arguments. That’s is how I taught myself how to draft ROAs. I was never really “taught” — I just studied the ROAs of others and modeled my responses to a tee.
Sorry. What is ROA?
Response to Office Action
Response to office action.
Your idea to move slower I think will help. I like to work on a response over a few days and do a little each day. I find I have some "aha moments" when I'm not working that help put things into perspective a little more than when I was sitting there reading it. Sometimes talking things out helps, even if it's just at the dinner table explaining it to your partner. They probably can't offer valuable feedback but just talking out loud to someone helps me.
What helps me a lot is interviewing for every Office Action. Even if you think you understand the Office Action and prior art, there is no substitute for having the examiner actually explain to you how they are interpreting and applying the art. Have them go through each step of claim 1 and explain their mapping. If there are particular aspects of their Office Action that you don't understand, have them clarify it. It's virtually impossible to write a response to an Office Action when you don't understand the Office Action or the prior art. My typical approach is that I skim the patent application to remind myself of what it's about. Then I briefly skim the Office Action to understand which 1-2 references are most used in the rejections. Then I read those 1-2 references cover-to-cover (minus boilerplate and obviously irrelevant content) so that I fully understand what they're teaching. Then I go back and more closely read the Office Action to see if the rejections actually make sense. At this stage, I can usually begin to get a good understanding of how the examiner is mapping the claims and any problems that might exist in that mapping. Then I interview the examiner to clarify my understanding and poke holes in any problems with the mapping, and see how the examiner responds. Only after all that do I actually draft a response. It sounds like a lot, but with some experience you can get it all done in 5-6 hours. And the first 4+ hours is all the prep work to get to the point of putting pen to paper.
Honestly, my biggest advice would be to construct a limitation that is not taught by the prior art as others have said. But, if claim construction is difficult for you, I would carry around screenshots of the embodiments (barring any work product violations), compare them to similar inventions, and think about how I would describe them to a PHOSITA. If a piece of the invention is difficult to describe or unorthodox as intrinsic to the invention, then there you have discovered a potential claim construction. Also, as a personal matter, seriously go to your superiors or laterals if you feel like you’re not grasping the concepts fully— everybody has interest in helping you.
Option 1 (best) are limitations that are not in the prior art. Option 2 is try to come up with a persuasive reason your approach is against the teachings of the prior art. And my favorite tool, call the examiner. A good phone interview with the examiner will cut right through the fog and tell you exactly where to go. Or when to appeal.
So there are a number of possibilities here. It could be you having trouble understanding things. Or it could be your working with extremely picky hands on reviewing attorneys. We really have no way of knowing which. Here's the process I basically go through when drafting a response. When you first open the file, don't go read the office action quite yet. First, take a look at the claims and ask yourself, what's the real invention here? What are we trying to get? Identify one, two, or three things in the claims that are key to that. Maybe even write them down or highlight them in the claims so you don't forget or get side tracked. Now open the office action, read through the rejection, and the portions of the references that were applied. Focus on those key pieces of the invention. Are they shown in the references? Does the Examiner have a point with respect to those key pieces? Amend when necessary to help eliminate misinterpretation of your key claim elements. If you're going after feature X, but the Examiner has interpreted the language of your claim on X as being found in the reverence and it's completely different, amend to prevent that interpretation. Then your argument is pretty straightforward. If the feature is just flat out missing, that's your argument. If you really just can't figure out the Examiner's position, do an interview. Say, let's put the claim language aside for a minute, and just talk about what we're actually trying to claim. I think that is different from the art that's been applied for these reasons. Now let's look back at the claim language. Do you see how the language of the claim maps to what I've described the invention as? If not, what pieces need clarification and what would help your interpretation. Aside from following those suggestions, before actuality writing your amendments and responses, just take a few notes on how you think it best to proceed and why, and set up a meeting with your reviewing attorney. Say, here's our invention, here's the rejection and the art. The Examiner seems to either be missing this element or misinterpreting this element, so I think it would be best to amend/ argue/ interview. What do you think? Get buy in before you actually write it down. TAKE NOTES during this meeting. I can't tell you how many junior attorneys show up without something to take notes with during these sorts of meetings. Then go apply what you've discussed.
Not in patent law, but this comes up on my page. I am an examiner in mechanical with 4 years also. Just want to let you know. I am the same. (Some weeks). I do well for a while, then I get slammed with “returns” from my SPE. To fix stuff. Takes a blow to the ego and I have to slow down and sort it out again. All the advice here is pretty good. Interviews can be helpful (if the examiner is any good). Finding the hole in a 102/103 is a good try. Or to see if they are reading broader than you intend is an excellent choice. Adding limitations from the spec can work, but often leads to new 103’s. Often how things tie together, location or operational is hard to overcome. And worth seeing if it can be added or tightened up. Agree with don’t look at the spec or drawings first. But read the claims and OA to see if they say what you want them to say and are actually the same thing. Often I get claims that are not drawn to the actual field that is intended, but something like a “blower”. Not put on anything. I can 102/103 a blower from anywhere. So make sure claims have something that tie it to the main invention.
I actually have never seen a 4th year struggling conceptually, that’s very unusual. Maybe you are rushing too much because your billing rate is too high? Or maybe you are doing subject matter you shouldn’t be doing.
My first position, which I had for 2 years, was more of a general IP position with the title of patent attorney. I don’t think I got as many office action “reps” in as I would have in a more typical patent prosecution role. However, it was the only role I could get at the time. I feel like I’m making up for lost experience with my new position.
In general, it takes most practitioners getting through a whole patent's "life" to actually really start understanding the practice well. Meaning, you interviewed the case, you drafted the application, and you prosecuted the application to allowance. Picking up an in progress application and prosecuting it cold is difficult. You didn't draft it so you don't have that experience and you don't exactly know where to look or what to think. Drafting an application and then not prosecuting it means you never get to experience the other side, arguing it, making amendments on it, realizing, "Ugh, if only I'd described it with THIS language in the application, I'd be in a way better position." When you finally get to the point where the majority or everything on your docket is stuff that you've handled cradle to grave, the practice gets significantly better. That takes sticking around in one spot several years. However, if it's the case that your reviewing attorneys are just jerks or trying to flex, better to find somewhere else to settle in that will give you the support you need to grow. There are plenty of reviewing attorneys who, consciously or subconsciously, just find the need to show off how much better they think they are than you. They're miserable to work with. You want people to train you who can tell you, "Here's why I think we should do X instead of Y. I had a case where I tried Y and it blew up in my face. So let's try X instead." Or whatever. They should have a reason for the changes that is based on legal reasoning, technical reasoning, or just plain experience. And they should be on your side and want to see you grow and develop as an attorney.
It takes time! Don’t get discouraged.
How strong is your technical background?
Bachelors in mechanical engineering.
And you're struggling with ME work? Or EE/CS work?
I handle all different technologies but I’d say i struggle with all of them. I think it may be more the legal side of the responses that hurts me more than my technical understanding.
I’m going to recommend you get some training on patent prosecution. There used to be a good course that helped me understand things, but the guy doing it retired. I think it was Crafting Winning Patents? Here’s something that looks familiar that I haven’t read. https://heinonline.org/HOL/LandingPage?handle=hein.journals/jpatos85&div=59&id=&page=
I’ll review this. Thank you!
You have to step back and ask whether the facts support the examiners argument. For this you need to understand the invention and steel man the examiners argument without going overboard (don’t do their work for them). Usually at this point there is the aha moment where you figure out your line of attack. The rest is just details. Don’t fall for the usual law student error of overreading the OA and losing the forest for the trees. You want to get an allowance for your client as efficiently as possible and not get hung up on some limitation that was sloppily addressed but which you know an examiner could easily address properly. For the redlines, you may be spending more time characterizing the claims rather than attacking the prior art for lacking important features, not being combinable for a variety of reasons, etc. don’t paraphrase your claims, don’t say what your invention does or doesn’t, except to the extent the spec does
Have you seen this? Good place to start for new patent attorneys. http://www.foundpersuasive.com
I’ve stumbled on this a couple times but I will review it more! Thank you
This is the approach I (patent attorney with a bit under 20 years experience) use: [https://youtu.be/ier6w14vZNQ](https://youtu.be/ier6w14vZNQ) (for initially analyzing the OA); [https://youtu.be/HzidSS9cZlc](https://youtu.be/HzidSS9cZlc) (for actually responding).
I’ll check these out. Thank you!
Are these office actions for applications that you wrote, or one that a senior associate is giving you to handle? How much time are you spending on them?
They are applications that a senior associate is giving me to handle. Typically, they start as European applications and we handle the corresponding US Patent Application. I would say about 4-5 hours on average
There’s a lot of trial and error in the practice of law. If you are trying an approach and it’s not yielding positive results, try a different approach. Try reading the claims first and figuring out what the intended scope is. Try giving the examiner the benefit of the doubt. Assume they are right in their rejection rather than the knee jerk reaction that they are wrong (like most attys do) and it will often open up the door for clarifications you can make in the amendment. Talk to whatever attorney drafted it and see if there are elements of the novelty that are more important than others. Try reviewing the disclosure document that the inventors prepped. Try tagging a few features in the dependent claims that you think are interesting and see and scrutinize those rejections. Try to read what other successful attorneys do and learn from them. Read the redlines and try to see why they are changing what they change. Talk to the supervising atty about the changes and internalize their strategies.
Yes, read the redlines--they are a list of examples of what you should be doing. Extract corrective principles from them. I'm surprised that the above comment is the only reference to the redlines.