With all of the data available on examiner's tendencies, patent practitioners are increasingly going into prosecution with more awareness than ever before. But the ever-present question still remains as to what, exactly, a practitioner should do when they have an examiner assigned that has a low allowance rate, high restriction rate, long prosecution tendencies, etc.
One example is illustrated by 14/622,369 in Art Unit 1792. If you handle food processing patent applications, you may have dealt with an examiner like the one in this case. However, while the applicant in this case was put through the ringer and did get led to the primrose path slightly, overall they did a great job at handling the Examiner and effectively getting the issue out of his hands and to the Board.
The invention relates to cutting cheese curd (as someone in Oregon, I have a lot of respect for the importance of the dairy industry). Claim 1 on appeal is set forth below:
The applicant tried an interview, which was a good plan. Of course the Examiner hardly was receptive and so in the end it was probably not worth the effort. The applicant further tried an pre-appeal conference request, which was successful! You would think that was a good result for the applicant, but with an examiner intent on rejecting, all this does is give the examiner an extra chance to improve a bad rejection. Here, the examiner did so and of course simply re-issued a new final rejection. Nice, huh! The applicant even tried the Ombudsman’s program. But with examiners who are bent on rejecting and making an applicant’s life difficult, the Ombudsman is, unfortunately, usually ineffective (as he was here).
What the applicant did then, which was just right, was to shine some sunlight with an appeal and without wasting time with an RCE.
While these examiner actions are very frustrating (to say the least), the Examiner in the end likely only helped the applicant before the PTAB. The individual inventor stuck to his guns and was well represented, and so is the exception. Many applicants are simply worn down by behavior like seen here and give up, which is exactly why such behavior persists.
So, when you get that first office action and look up the statistics and see some unpleasant numbers, get a game plan ready and prepare the client.