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Here is the situation: my patent has gone through several Office Actions (OA).

In the first 2 Office Actions, the examiner found some legitimate arguments against my application and I have amended some claims accordingly.

Then the examiner cited parts of another patent as prior art for obviousness, and to sustain his rejection, quoted sections of this patent as arguments against my invention.

I have carefully considered his arguments, made a detailed and thorough analysis of the cited prior art and replied to said OA by respectfully arguing against each argument advanced by the examiner. (It appeared that the examiner hadn't read in details the prior art but merely referred to some drawings and grasped vague concepts of the prior art, so it wasn't too difficult to provide counter-arguments). In view of my arguments, my invention is non-obvious.

But in the latest OA, the examiner totally ignored my arguments against his (as if he himself hadn't advanced any prior arguments) and rejects my invention on obviousness grounds simply quoting the prior art he had already cited.

What steps could I take so that my arguments be taken into account, so that they be heard? I am in the final OA...

  • Have you considered scheduling an interview to discuss the case verbally? Also, does the new OA contain any new reasoning, or any change in the passages cited? – Maca Jul 20 '17 at 11:47
  • Yes, we had an interview before, and I'm considering whether or not to request for another interview or to file a request for further examination. But still the examiner seem to bypass my arguments without addressing them or proposing any new one. – calocedrus Jul 20 '17 at 13:19
  • In my experience, this is normal. – DonQuiKong Jul 20 '17 at 14:15
  • I was once in a situation where the examiner had completely misread another patent he considered prior art. No amount of explanation seemed adequate. My attorney requested a meeting with his supervisor and that was effective. – Eric Shain Jul 20 '17 at 15:06
  • What is your application number (if you filed published), or the name of your examiner? The suggestion to schedule an interview is a good one. In general examiners allow more applications where an interview has taken place, but that can vary from examiner to examiner. – Ben Venker Jul 23 '17 at 2:37
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First, call the supervisor (SPE). His/her name and number should be listed at the end of each office action. Most likely the SPE will set up an interview with you, the examiner and the SPE.

During the interview you can try to argue your point, but if that is not immediately fruitful, let me suggest another approach: Try hard to understand precisely what the examiner's position is. Go over it in detail. Understand his arguments and his evidence. The better you know his point of view, the more likely you can rebut it successfully later. It is much more difficult to argue against a vague or misunderstood position than against a clear, well defined position.

Second, prepare an appeal brief. It's really just an office action reply done right. You need to lay out the facts of the case, the relevant law and your explanation of where the examiner has made a mistake. Get help from a patent attorney or agent if you can afford it. That will stop you from making rookie mistakes.

Finally, file a notice of appeal and your appeal brief. The fees are actually less than fees for a request for continued examination (RCE). In my experience, examiners take appeal briefs much more seriously than RCEs. Sometimes the next action you receive after filing an appeal brief is a notice of allowance!

More likely, the examiner will submit an examiner's answer to your appeal brief. At that point you can decide whether to pay to forward the appeal to the appeal board or to go back to regular prosecution via an RCE, for example. The examiner's answer may help you understand and evaluate the examiner's position.

In conclusion, don't be afraid to appeal. But, as a note of caution, be sure your argument is correct and supported by evidence. One very helpful internal exercise is to try to defend the examiner's argument. Don't assume you're right without first trying to see if there is any way you could be wrong.

Good luck!

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    Very good point on understanding the examiner's position. Sometimes you read a final or non-final action, and get the impression that the examiner is completely against allowing your application. On closer inspection, or preferably an interview with the examiner, you may find that there is actually just one small concession or change that needs to be made in order to move the application to allowance. – Keir Finlow-Bates Apr 19 '18 at 8:16

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