I received a final OA rejecting my application, and I will have my patent attorney do an RCE. The examiner clearly does not understand the mechanics of the concept. I have ten patents; this is nothing new. However, this examiner has no interest in further understanding. The examiner at first agreed to watch a video of the invention in operation. When my attorney was ready to present, the examiner suddenly declined. In the past, examiners were anxious to see an actual invention for clarity. Is this a new attitude in the USPTO?

  • If your invention needs a demonstration to show the invention, would that not indicate that the patent is not clearly written? You are not mentioning the reason given on the rejection. – Soren Dec 31 '16 at 6:42

MPEP § 713.01 provides (among other things):

An interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application.

MPEP § 713.01 also provides, regarding video:

Attorneys or applicants wishing to show a video during an examiner interview must be able to demonstrate that the content of the video has a bearing on an outstanding issue in the application and its viewing will advance the prosecution of the application.

MPEP therefore allows an interview to be refused if it would not advance the prosecution of the application. The examiner may therefore be taking this view with regard to your video.

I can see the reasoning behind this. The application as filed must itself sufficiently and clearly describe the invention. Thus, if the video shows the invention in the same way as it is described, then it is unhelpful. If the video shows more than what is described, then it relates to something other than the invention, and is thus irrelevant.

However, there is an alternative explanation: the examiner may simply not wish to devote the time to an interview. While the MPEP does not really allow this in principle, the reality is that some examiners wish to make life as easy as possible for themselves.

  • As to possible solutions to this problem, if you really think the examiner is "making life easy", pushing him a little by talking to his superviser might (might!) be a good idea. – DonQuiKong Dec 1 '16 at 7:22

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