An institutional entity filed a patent application that most likely can't be granted, because it is unworkable. It's tangential to their primary subject, and probably is a placeholder until refined.
A few months later an individual (me) filed a much more complex application, significantly different, but with a certain overall similarity. It's workable. In effect, the institution threw together (a) a process with (b) a vehicle for providing it, without recognizing devastating constraints. I use the same process, but with a different vehicle(s), which are in effect the real invention.
I was not aware of the institution's application when I submitted. 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.) One prior art dog device is raised, a sloppy application that is easily shown inoperable. 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.) He would not until the claim language was clear (it's not unclear now, only "indefinate".) Then he'd "see the application with new eyes."
The examiner's summary posted on PAIR. 1 sentence: some dependent claims may be allowed given new language. 2 sentences: applicant needs a lawyer. Both the examiner and supervisor listed at the bottom.
The interview concluded after the examiner advised me to file a continuation. In words he told me to "just fix" the claim language, though there's no sign he'll accept most of them due to 112.
- I can appeal immediately.
- I can file an RCE and "fix" claim language without narrowing scope.
- I can do #2 but narrow scope.
- Along with any of these, I file a 3rd party objection to the dog oriented prior art.
But that's not my request here. I need to understand the examiner. Here's possibilities:
- He's ideological, doesn't like patents. I didn't pick that up.
- He's in an animal-related art unit, and maybe thinks that's a backwater. Doesn't think anything there is worthy. Could be.
- 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?