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I have received a First Office Action, and this is a new experience for me. As many had advised and warned me to expect at this stage, the claims are rejected. The examiner's report appears to acknowledge several items in the claims to be unique and uncovered by prior art, but judges them to be logical extensions of prior art that could have been conceptualized by one skilled in the art. If and how this can be overcome is yet unclear but I must try.

I see in the report that I may contact the examiner directly if desired. In general, to what degree should such communications be understood to be cooperative vs. adversarial? Are examiners allowed to suggest ways to address objections?

  • 2
    You would be well served to discuss this with an actual patent attorney or agent. – Eric Shain Sep 2 '17 at 16:43
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They certainly don't have to help you, but as far as I know they might. I heard that as an inventor without attorney calling an examiner ans asking nicely for some discussion can lead to good results. But it depends on the examiner and the interpersonal dynamics. My guess is that you could try asking what claim combinations the examiner thinks have a chance, arguing against what they said might be a lot harder.

As to sources, there was an AMA (ask me anything) by a patent examiner on reddit:

In the past it wasn’t so much. Now it is becoming more and more common as we are supposed to help the attorney and work with them not against. If we have a question, or there needs to be an election or something like that, we can just give a call to help speed up the process.

Secondary source

Then, not exactly at the point of the question, but I'd like to add, don't worry too much, sometimes claims get rejected at the first try, then you make your case and you might even convince the examiner. There's an interview with a former patent examiner that raises a few good points:

What advice do you have for applicants?

"When examiners have only maybe an hour to understand what your invention is, clarity is appreciated. There's definitely a balance to be struck. Drawings are helpful, especially in the United States, where you can sometimes rely on drawings to express claim language. From the outside, it's tempting to include as much as you can. Make sure you convey the idea to them reasonably quickly, though."

Are all claims rejected the first time around? If so, why?

"Yes, I almost always rejected claims the first time. There are a couple of reasons why. I was a younger examiner. We were almost never permitted to allow anything the first time around. The way that it was explained to me was, it's up to the patent office to establish the best case for why it's not patentable. The applicant then needs to put forth his or her best case as to why the office is wrong. It's a dialogue. Examiners assess the contrary evidence put forth in the applicant's response to the office action to make a decision.

The examiner doesn't have a lot of time for your application. If you call them or if you respond to the office action, try to show how your invention is not obvious, amend your claims if necessary. It's a process, it goes back and forth.

  • Update: I have received NOA. I rewrote all the claims myself and submitted an RCE, after having an attorney submit a response to an OA and having it rejected again. – Charles Mar 25 '18 at 5:20
  • @Charles an RCE is the answer to a final office action, noa sounds like non final? – DonQuiKong Mar 25 '18 at 8:52
  • It is final. NOA document states, “The application identified above has been examined and is allowed for issuance as a patent. Prosecution on the merits is closed. This notice of allowance is not a grant of patent rights. This application is subject to withdrawal from issue at the initiative of the office or upon petition by the applicant.” I know this means the grant of patent is pending timely payment of the issue fee – but until that payment is made, it is also at risk that in theory the examiner could produce new evidence against it. I am submitting a continuation, then paying fee. – Charles Mar 25 '18 at 15:26
  • @Charles wait, why? Either I'm understanding you wrong or you want to request continued examination on a patent application that is about to be granted. Why? (Let's take this discussion to the ask patents chat though, just answer there I'll check. You can find it on the website where you change the se sub sites) – DonQuiKong Mar 25 '18 at 18:09
  • Sorry for my lack of awareness of that site feature but I can't find "chat." Brief response to point made: I should have clarified, I mean "file a Continuation Application" (same specs, new claims), not an RCE. The original application prosecution is finished so that is being left alone, other than getting the issue fee paid within the prescribed time frame of about 90 days. The continuation is just to keep more options open. Patent may turn out to be unmarketable I realize, but doing my best with optimism. – Charles Mar 25 '18 at 22:33

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