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How to deal or replace a difficult examiner. He allowed three patents and now he is fighting against a fourth one, which is a subset of them. Could an examiner take action? Override his decisions?

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  • Do you have a registered practitioner dealing with the USPTO on your behalf?
    – George White
    Jan 31 at 20:41
  • I have one - and he helps in going through the iterations. This becomes a very expensive process. I filed directly now but the USPTO assigned the same difficult person.
    – Moti
    Feb 1 at 21:14
  • Is it possible that after three inventions allowed and issued there just isn't enough left in the original disclosure to support the fourth? I have had to cite Euclid to an examiner that three points make a plane and worse but it is just possible that this time it is your claim, not the examiner, that is in the wrong.
    – George White
    Feb 1 at 21:38
  • This is a CIP so the only claim that the examiner could have is MY PATENT as prior art and thus set the priority date for the claim. This is why you need a supervisor involvement - we agreed on a figure that represent the claim with the associated text and I agreed to be more specific (limiting the definition of terms used to fit EXACTLY the figure). The examiner did not use that figure in his evaluation but a different one which even to it his action was not relevant. The same first patent was approved without any action in Europe!
    – Moti
    Feb 2 at 1:58
  • The idea that only your patent can be prior art to your CIP doesn't make any sense. On the other hand the EPO is usually harder to get through than the USPTO. I don't particularly recommend it but you could tell us the application number.
    – George White
    Feb 2 at 3:26
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You can request an interview with the supervisor present or file an appeal.

Both options may or may not be positive strategically.

The second option will cost quite some money.

Summarized, there is no easy way.

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  • An interview with the SPE present is very easy
    – George White
    Jan 31 at 20:48
  • True. I think the question implies that the asker sees some kind of psychological issue (I can't judge if that's true, if course), in which case foreseeing if the supervisor makes the situation better or worse isn't easy.
    – DonQuiKong
    Jan 31 at 21:11
  • Do you see implication of a psychological issue on the part of the applicant or of the examiner?
    – George White
    Jan 31 at 21:16
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    I read the question as the applicants thinking the examiner is unreasonable. Which is a relatable feeling ;) Anyways, I think mostly examiners are reasonable people, but communicating through office actions can be very tough.
    – DonQuiKong
    Jan 31 at 21:20
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    I once had an examiner try to reject an application because of "equivalence" of two different technologies. Sort of like a horse drawn wagon is the equivalent of a Boeing 747 because they both get you places. Would not listen to reason. My attorney requested an interview with his supervisor who over ruled the examiner. Just one anecdote, but can happen.
    – Eric S
    Feb 1 at 0:25

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