One of the best ways USPTO examiners can aid in achieving compact prosecution is to provide the details as to what features in the references are being relied-upon to show specific claim elements. Rejections should be made in a clear way so that everyone is on the same page. Further, the better the information presented by the examiner, the more efficient it will be for everyone, especially applicants on a limited budget.
The MPEP confirms that actions should be complete, and it makes all the sense in the world to let the applicant have a full understanding of the rejection so that they can figure out the best way to proceed. MPEP 2262 states that the “examiner’s first Office action will be a statement of the examiner’s position and should be so complete that the second Office action can properly be made a final action.” In accordance with the patent statute, “Whenever, on examination, any claim for a patent is rejected, or any objection . . . made,” notification of the reasons for rejection and/or objection together with such information and references as may be useful in judging the propriety of continuing the prosecution (35 U.S.C. 132) should be given. MPEP 707. And of course there are the Administrative Procedure Act requirements to boot.
Yet, some examiners, generally a minority, either intentionally or unintentionall, fail to provide detailed citations. Sometimes an examiner may cite an entire detailed description (e.g., 10 pages) or entire set of figures, without any specifics as to what parts are actually being relied-upon. There may be cases where it is appropriate to cite a large section of a reference, but when doing so there should be some sort of explanation and additional detailed citations to explain why such a large citation is used. Otherwise, a naked citation to a large section of a reference draws out prosecution, wasting resources not only for the applicant, but also the USPTO. Sometimes an examiner may give virtually no citation at all, which is just as unhelpful.
While imprecise or incomplete citations are frustrating for applicants, they can be even more frustrating for some PTAB judges. PTAB judges also have dockets and deadlines and while they often give the examiners what looks like the benefit of the doubt and seem willing to fill in missing details of an examiner’s rejection, there are limits. A recent case illustrates such frustrations. The case is Appeal 2019-000709, Application 13/649,710, related to an ultrasound probe. The claim on appeal is relatively straightforward:
A probe for use with an ultrasound device, the probe comprising:
a first end and
a second end,
the first end comprising a subdermal probe tip, the second end comprising a target for a detector, the target comprising an array of permanent magnets.
The examiner rejected the claim based on a combination of four (that’s right, 4) references as follows: Ridley et al. (US 2007/0208255), Burreson et al. (US 2002/0077752), Messerly et al. (US 2009/0156926 ), and Ikeda et al. (US 2009/0275833). The examiner asserted that the combination of references showed the claimed elements. The examiner cited paragraphs, but never actually cited reference numerals as to which elements in the cited art were being used. As a result, it was very difficult to actually understand the rejection and the PTAB made their own assessment of what the examiner intended, but only after making clear their annoyance:
We begin our analysis with reference to independent claim 27. Initially, we note that the Examiner complicates the record by rejecting all twenty-four pending claims together, and by failing, in the rejection, to use reference numbers to identify any components in the prior art references on which the Examiner relies to disclose the claim recitations, except for one component in Ikeda, which the Examiner mischaracterizes as described below. See Final Action 3–5.
In the end, the PTAB found that the rejection erred as the cited art was missing claimed elements, even if combined. The PTAB also found that the examiner’s motivation was improper (as not being supported by the references).
This example also illustrates a common approach used by examiners to dismiss applicant arguments against a combination. The examiner repeatedly argued that the applicant’s arguments were “an attack on the references individually.” As the applicant’s appeal brief points out, any time an applicant is arguing that the combination lacks a particular feature, the analysis starts with pointing out that none of the references have the feature. See also our previous post here:
What should you do if you receive imprecise rejections? Examiner interviews are always a good way to obtain clarification. If that fails, egregious cases might warrant a petition, but often you are then headed to appeal.