Pity the poor pro se procurer of patents, who has to put up not only with some of the putrescence promulgated by patent office personnel, but with his own paucity of proficiency in this particular playground. Case in point: USSN 12/292568. Below is a Notice of Non-Compliant Amendment mailed in that case on November 13, 2012. Can you tell (a) when the amendment in question was filed and (b) what the Examiner says is wrong with it?
You certainly can’t tell from the Notice itself. Oops!
For US patent practitioners, it doesn’t take much effort to figure out what went wrong, and what the Examiner likely meant to complain about. Just look at the file history: the application was filed in 2008; in 2010 the pro se applicants filed a preliminary amendment that cancelled the 17 original claims and replaced them with new claims 18-31, with claims 18 and 31 being independent claims. In July 2012 a first OA issued. In response thereto, on November 1, 2012 the applicants amended claim 18 and retained the remaining claims unchanged. Claim 18 was properly labeled “currently amended”; but instead of labeling claims 19-31 as “previously presented”, these claims retained the label “new”. Uh-oh. That’s a USPTO no-no, and that’s presumably what the Notice of Non-Compliant Amendment was supposed to be about.
Clearly, the applicants can go back to the Examiner and ask for a Notice that explains what the problem is, but if these applicants were to ask my advice - assuming they want a patent sooner rather than later - I would recommend a phone call to Examiner to confirm that it’s the labeling of claims 19-31 that’s the problem, then re-submit the amendment with the claims bearing proper labels (or “status identifiers” in USPTO parlance).
I think the goof here is just an oversight on the Examiner’s part. Contrast this slip-up, however, with an office action that I recently saw here in Israel, that can only be classified as slothfulness. The application claims a genus of chemical compounds; in typical fashion, there are dependent claims providing progressively narrower scopes of protection. The Examiner cited a publication against the inventive step of the genus claimed in claim 1, on the grounds that some of the compounds encompassed by the genus disclosed therein (but none of the compounds specifically disclosed in the reference) fall within the scope of the genus of claim 1, and are directed to a similar use.
Having concluded that claim 1 was obvious, the Examiner proceeded to conclude that all the claims are obvious. Say what? That’s the kind of mistaken thinking that I’d point out to trainee or first year associate the first time they exhibit it, and then expect never to see it again. There’s no excuse for an examiner who signs his own office actions to make such a mistake, let alone to think that this constitutes acceptable examination practice.
No less striking are the facts that (a) several of the dependent claims define genera which completely exclude the prior art genus, thus undermining the Examiner’s rationale for the rejection; (b) the ILPTO’s own examination guidelines explicitly state that examiners must make their case against each claim; and (c) this isn’t the first time in recent memory I’ve seen an Israel patent examiner do this. Apparently it’s only applicants who must adhere ILPTO-promulgated guidance, examiners remain free to do as they please and make things up as they go along.
In the name of even-handedness, I note that I’ve seen similar or worse in OAs from some US examiners. Laziness, it seems, is not limited by latitude or longitude.
At least it makes me appreciate the serious examiners who do their jobs properly.
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