A first Office Action can involve a lot of guesswork. What does the Examiner mean with a particular rejection analysis? Is the Examiner serious with a particular rejection or just bluffing? Can the Examiner really get away with a particular rejection? To understand the issues and hopefully resolve them, an interview and a response with clarifying amendments and strong arguments can be critical to getting the application allowed.
But when a Final Office Action comes in, at least two pieces of the guesswork are gone: the Examiner still does not believe your application is patentable and you are likely facing an RCE. You have a lot of options: you can appease the Examiner with further claim amendments, narrowing the claims with no guarantee of an allowance. You can appeal the case to independent panels (including judges at the PTAB or Board) to evaluate the propriety of the rejections. Or you can use Anticipat.com and learn from others’ appeal information about this Examiner or art unit to learn from outcomes in similarly fought battles. This latter option can be used to guide your specific prosecution strategy, putting you on top for your client.
An important point about Examiners is that they all examine applications quite differently. For one, they have different personalities and understandings, resulting in a varied interpretation of the patent laws and rules. And these kind of personality differences tend to repeat from application to application. For example, an Examiner who is pre-occupied with unreasonably broad interpretations for one application will be preoccupied with them for another application.
Another difference in examination lies in examiners’ specific training and work group guidance, much of which stems from specific technology nuances. For every formal Guideline published by the USPTO, many other internal guidances get circulated to tech centers and art units that admonish examiners within these smaller groups how they should examine applications.
But not all of these personality quirks or internal memos comport with the patent laws or patent rules, which is where the Board comes in. The Board is the first line of defense in holding Examiners and even their SPEs accountable for the rejections they issue. When an applicant appeals a case, the Board is the first to overturn the Examiner or supervisor. Either way, having objective evidence of this track record and lessons from these prior decisions can inform or validate a particular strategy. Even if a practitioner already knows about a particular examiner’s or art unit’s quirks, such Board data for this examiner/art unit can be used to see others’ successes in dealing with issues.
With Anticipat Research, you can quickly look up all decisions that were decided with a particular Examiner, her art unit, or tech center on any ground of rejection. So the savvy practitioner will likely want to see the decisions that were overturned on an issue this practitioner is dealing with. This research tool cuts down the time compared to public ways of finding out this information. See https://e-foia.uspto.gov/Foia/PTABReadingRoom.jsp. It also makes the searching an overall better experience. This tool pays for itself within minutes of use each month.
Anticipat Practitioner Analytics goes a step further in making Board information actionable in one’s own prosecution practice. Simply input an application number (or Examiner name or art unit) and you can see what the Examiner’s reversal rate for a particular ground of rejection is. You can also see the exact numbers of decisions reversed and click on the specific decisions to see if the issues are as similar as they say they are.
Anticipat Analytics also breaks down the most persuasive arguments that the Board relied on in reversing this particular ground of rejection of interest. If appropriate, you can click on a legal authority icon that provides you with the legal authority that the Board relied on for this particular argument. What these provide for a practitioner is an outline straight from the Board of successful ways to overcome various grounds of rejection. The efficiencies and knowledge gained pay for themselves within minutes of use. To see more, watch this YouTube video.
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