Chasing your Tail

Normally when patent examiners have an issue on clarity (definiteness), it is relatively easy to find a solution as long as the examiner is acting in the interest of moving the case forward.

But patent prosecution is a Byzantine process, and if an examiner wants to tie you up in your underwear with as little work as possible, then Section 112 is a great tool. In particular, such examiners often like to use the approach of alleging something is unclear, usually by saying it doesn’t specify some particular feature, or that the invention was not in full possession of the invention.

We have discussed possession in several previous posts: (here, here, and here are a few examples). It is important to recognize when an examiner has no intention of actual moving the case forward, but wants to make you chase your tail.  It goes something like this:

  • Examiner raises issues regarding lack of clarity

  • Applicant, wanting to address issues, makes amendments to add more clarity

  • Examiner now raises more issues based on amendments, including new matter and lack of possession for amended claims

  • cycle repeats - Byzantine process confirmed.

All the while, the examiner has not even really had to deal with actually searching and finding relevant prior art.

While this is usually the exception, rather than the rule, it can burn years and many thousands of dollars. We’ve talked before about being led down the primrose path… All those flowers look so pretty and if I can just clarify this claim element or that claim element, the examiner will do the right thing and move the case toward allowance. Before falling into this trap, check your examiner’s statistics! And be ready to take reasonable steps regarding anticipating future rejections. Also, strategize as to how to make the amendments - whether to independent or dependent claims, and importantly whether to leave at least one independent claim un-amended.  The reason to have at least one claim un-amended is that if you need to appeal, it is hard for the examiner to prove that original claims lack possession (see here). 

So, be very careful with amendments for clarity when you have a difficult examiner