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As a pro se inventor, my examiner seems to be taking advantage of my supposed ignorance. He understands neither my invention, his own references, nor the law.

To my first amendment, he flagged up every single change as new material, even where I’d just added reference numerals to existing parts of figures. Where I added a user to a diagram of a web browsing system, he called that new material, even though I’d used the word “user” 109 times in the spec.

His 103s are banal beyond belief. He equates my elements with completely different things in his two references which happen to have the same name, e.g. “queue” or “category”. His “it would have been obvious...” is the same in almost every objection, and in all cases he systematically ignores the actual novelty of the claim.

For example, in claim 1, I react to one button by doing four different things at the same time, so he says two of them are prior, ignores the other two and doesn’t mention the important bit, which is the fact that they are combined into one button. So it’s obvious.

I already argued all of this in reply to OA 1, but he doesn’t seem to have read any of what I said.

I just sent my the reply to OA 2, which didn’t go quite as far as to ask “if this invention is obvious, how come you still don’t understand it?” but insinuates as much, and I’d like to appeal against the inevitable response from the examiner.

What worries me is that he might find some new fantasy objection and use it as an excuse not to enter my second amendment for appeal.

What do I do in that scenario?

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As a pro se inventor, my examiner seems to be taking advantage of my supposed ignorance.

False. You are most likely not being singled out because you are a pro se applicant. Examiners are after “counts” (work credit), and the easiest way for Examiners to earn counts is to reject. They also earn counts when they allow, but if they allow bad applications, they lose serious points in quality control. They are never penalized for rejecting applications that should have been allowed, so rejecting is their go-to strategy. The only time an Examiner loses this game is if you win an appeal (moreover, you have to win on each and every issue for it to count as a reversal -- otherwise, it counts as an “affirmation in part” even if many rejections were not sustained).

Read a few Image File Wrappers of applications represented by registered practitioners that were reversed and you will see that Examiners try to take advantage of everyone, not just pro se applicants.

To my first amendment, he flagged up every single change as new material, even where I’d just added reference numerals to existing parts of figures. Where I added a user to a diagram of a web browsing system, he called that new material, even though I’d used the word “user” 109 times in the spec.

I would never amend a specification except to fix objections raised by the Examiner. Rather than changing the specification, I’d argue why the as-filed specification supports the claims. If I can’t do that, I’d change the claims so that they are actually supported by the as-filed disclosure. If it turns out the as-filed disclosure was completely inadequate, I’d abandon and re-file a proper application pronto. If I didn’t have an NPR in and passed the 1-year prior disclosure limit, well, then I’d have officially learned my lesson in that regard.

His 103s are banal beyond belief. He equates my elements with completely different things in his two references which happen to have the same name, e.g. “queue” or “category”. His “it would have been obvious...” is the same in almost every objection, and in all cases he systematically ignores the actual novelty of the claim.

Request an interview with the Examiner and calmly explain how you are unable to follow his obviousness argument. Get into specifics, try to explain how your queue as used in your claim isn’t the same thing as the prior art queue used in the prior art (if that’s your strongest argument). Otherwise, if the Examiner has glossed over claim elements, point those out and get the Examiner to explain how the prior art suggests them.

If rational communications break down (most likely outcome for interviews with Examiners), you have two options. The first option is to make a small, nearly insignificant change to a claim and file an RCE. This is what the Examiner is after because it earns him/her more of those “counts” I mentioned earlier while doing virtually no additional work. The other option is to appeal. Sometimes the Examiner will cave when you have a good appeal brief in. Other times they won’t, but you can always renege on an appeal by filing an RCE at any time before the appeal is decided.

What worries me is that he might find some new fantasy objection and use it as an excuse not to enter my second amendment for appeal. What do I do in that scenario?

RCE or appeal without your additional amendments. It’s perfectly fair for the PTO to eventually require an RCE if you keep amending, since amendments take time to consider (at least in theory). You can only amend once for your initial filing fee.

Personally, I appeal whenever I feel that I am 100% in the right. If there is a slight weakness in my position that can be fixed with a claim amendment (and without giving up claim scope, of course), I will RCE. Others might take a softer approach and RCE more often (i.e., even when they have a strong position) just to get on the Examiner’s good side and have a chance to get the application allowed faster (but at the cost of giving up patent term).

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    This is an incredibly informative glimpse into the examination process. I second the recommendation to try the option of the interview with the examiner. – vallismortis Aug 16 '15 at 17:45
  • Thanks for this detailed answer, and sorry about taking a long time to respond. It's an interesting concept that I should feed the examiner what he's after. – Adrian May Aug 20 '15 at 4:53
  • What I actually did is send an after final amendment. Presumably they'll chase me for money if they want it as an RCE. I don't want to appeal with the version before these amendments because he actually had some good points as well. So if he refuses to enter my amendments, I RCE. What about timing? I believe I'll be told quickly whether or not he enters the amendments, so when can I RCE or appeal? Thanks again! – Adrian May Aug 20 '15 at 14:43

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