Very Difficult Low Productivity Examiner with Questionable Approach - What Options for Applicant? UPDATE

Question

An institutional entity filed a patent application. It's tangential to their primary subject, and probably is a placeholder until refined.

A few months later an individual (me) filed a significantly different idea, but solving a similar problem. In effect, the institution threw together a solution that has certain complexities and is simple in other ways. My application is simple where theirs is complex, and complex where it's simple.

My application has 3 independent claims each proposing a structural solution to a suite of problems. Each structure is completely different from the institutional patent. They solve problems not raised by the other patent.

My application drew a very difficult examiner. He has the lowest approval rate in his unit. After first rejection, I compiled a scientific, technical, and legal response. 2 weeks after examiner received this, I requested an interview. Next day 8am he called me, asked if I wanted to talk then or at appointment time? I said appointment time, in one week.

Given this examiner's approach, I expect I will have to appeal. Since he and I interview in one week, what information is best to obtain? Should I record it?

For perspective, over 3 years his unit avg's 155 approvals per examiner. He's approved 8. He's also examined the fewest, 68 compared to average 290. His approval rate: 12%. Unit average: 48%. He works 1/4 of others, approves 1/4 of others.

I reviewed nine art units that are around the examiner's. 129 examiners in them. The examiner of my patent has the lowest approval rating of all 129. Each art unit has a supervisor. My examiner's supervisor has the lowest of any. Perhaps it's ideological.

UPDATE POST INTERVIEW.

Thank you for the input, Eric, Nicole, George. I will obtain more legal advice.

Regarding the interview, both initial and final rejections concerned 112b claim language and 102 prior art. I made significant claim language changes, but did not limit claim breadth because 102 criticisms were weak.

It's a dog (DVM oriented) device. Examiner's prior art remains mostly human medicine. I'm confident this ultimately will not fly, because conditions for use dominate product structure (vastly different risks and use criteria.) Regarding 112, I anticipate more success with an appeal than with examiner, based on statistical data (recall the examiner allows 12%.)

The examiner would not discuss 102 issues. Only wanted me to understand that claim language remained indefinite. But he advised me to take a narrowed scope dependent claim and incorporate it in the first independent claim. I requested he discuss prior art issues (per the agenda I filed.)

The interview concluded after the examiner advised me to file a continuation.

1. I can appeal immediately.
2. I can file an RCE and "fix" claim language without narrowing scope.
3. I can do #2 but narrow scope.

But that's not my request here. I need to understand the examiner. Here's possibilities:

1. He's ideological, doesn't like patents. I didn't pick that up.
2. He's in an animal-related art unit, and maybe thinks that's a backwater. Doesn't think anything there is worthy. Could be.
3. He's relatively new, under the wing of a supervisor who also has an abysmally low rate of allowance. That's why I didn't request the super join the meeting. Likeliest situation.

If it is #3, he would likely be impressionable. Assuming other examiners in the art unit also started under this supervisor, none of them has a low rate. But this examiner didn't seem meek or mild.

4 years (the time my examiner has been in the unit) is a long time to have training wheels (he has 1/4 the usual load.) What does that mean?

Answer 1

This may be too late for the interview you have scheduled. You can have the examiner's manager present at the interview. I have found this to be very helpful. It can make sense to try to learn enough about the patent system to attempt to prosecute your own patent and hope for an ideal examiner/examination. This has not been your experience and you really do need help from a professional. Not only would your patent attorney or patent agent "attend" the interview, they would lead the interview and very possibly ask you to not participate in the interview.

It may be that you have patentable subject matter disclosed in your application but the submitted claims are not well drafted and the rejection of the current claim wording is warranted.

Looking on the positive side, a "final" rejection is only final until you pay more fees to file an RCE and get another go-around, frequently with amended claims.

UPDATE

It could be that the claim language is really indefinite and you are putting too much focus on the examiner statistics. There is no way to get rid of the examiner. If you were a very experienced practitioner with a long history with the art unit you could contact the TC director.

It is hard to imagine that with a limited exposure to the USPTO you can read the tea leaves of the examiner's disposition in a way that is particularity helpful.

RCE with narrowed claims they will allow and before it issues file a continuation applications that you prosecute with professional help. Get a bird in the hand and still go after a better one in the bush.

Answer 2

In my country we can ask for a senior patent examiner to review the matter. I have previously used that as a technique to have the examiner have a realistic viewpoint. Also we have an appeals process whereby we can appeal a decision of the Commissioner.

If I was you I would hire a patent attorney (or whatever they are called in your country) and have the attorney attend the interview. You need to send a strong message that if yours is not accepted for grant that you are going to take the matter further and that their work will be looked at with a critical eye. That is normally enough to make the examiner take a fair look at it and make sure they are doing everything by the book - because they don't want the criticism later.

Answer 3

Follow up. I filed an AFPC 2.0 in response to final rejection by examiner. He was supposed to answer within 45 days. At day 40 I contacted him, he had forgotten. Set up phone appointment in 2 weeks, just did it. 5 min. prior to appointment he uploaded to PAIR a statement that the AFPC was too complicated for him to pursue (in the 3 hours allowed.) This would only be true if he had to search a lot for new reasons to reject. Nothing was advanced by our conversation.

Besides having lowest approval rate of any examiner in his unit, I collected rates for examiners in the 8 units around his, 129 examiners total. He ranked 129th. During conversation he recommended I file RCE. I trust data. He will not approve, and wishes to delay. So I will file a pre-appeal brief.

I do have one question, though I suspect answer. Can I mention the examiner's approval rate in brief?