Some inventors take advantage of the ability to represent themselves in preparing and prosecuting a patent application on their invention. While it is a tough row to hoe, the relatively limited pro bono options available make it a necessity for some. These do-it-yourself applicants take on a heavy burden - not only do they have to create and develop their own inventions, they have to deal with the bureaucracy of the USPTO. And even when they make use of resources prepared by patent professionals to assist them, the USPTO can be very inflexible.

One example is SN 15/359,628. Among various issues raised by the examiner with this pro se inventor was one with regard to the use of the term “predetermined.” One of the claims set forth a “predetermined gap.” Specifically, Claim 6 recited (emphasis added):

The siphon head of claim 1, wherein said standard beverage bottle has an inside volume with an inside bottom; wherein when said siphon head is installed on said standard beverage bottle, said pipe lower end descends downwards; wherein said pipe lower end is configured to have a predetermined gap above said inside bottom; whereby, said gap enables emptying said standard beverage bottles up to said predetermined gap level.

As most practitioners know, “predetermined” is a relatively common word in patent applications. As pointed out by the resourceful pro se inventor in the above case, there are at least 1,089,969 patents with the word “predetermined” in the claims. The examiner maintained that the term was unclear and relative:

The term “predetermined” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Neither the drawings nor the specification disclose a measurement relative to the container bottom for the gap, a formula used to “determine” such a gap or dimensions in the figures of the gap.

The pro se examiner pressed on that the term “predetermined” was appropriate and even pointed to the “widely published” book ‘Patent it Yourself’ by Patent Attorneys David Pressman et al., which “recommend[s] . . . using it whenever possible to indicate that something has a size, thickness, length, quality etc., without limiting the Claim to any specific dimension or quality.” One could argue that is exactly what the pro se inventor here intended.

With the examiner being unmoved, the inventor pursued an appeal and took the above issue, among others, to the PTAB, to no avail. The PTAB was equally dismissive of the inventor’s arguments (some internal citations omitted):

[These arguments do] not apprise us of error because [they are] untethered to the disclosure and claim before us. The Examiner did not find that the word “predetermined” is per se indefinite and/or prohibited altogether from patent claims.The Examiner found, based on the specific language of Appellant’s claim 6 and Appellant’s Specification, that “a predetermined gap” was indefinite…

[Further, t]he cited book is not binding legal authority. In any event, by its own terms (as represented by Appellant), the term “predetermined” may not always be used. …

First, the Specification does not employ “103B” (or any other reference numeral) in reference to any gap. See, e.g.,Spec. ¶24 (referring to “the pipe 103A and the pipe’s openings 103B and 103C”). Second, although paragraph 24 (which Appellant refers to as “Section [24]”) does refer to “a small gap,” it does not describe it as “predetermined” or elaborate on its dimensions. See Spec. ¶24 (“The pipe 103A descends from the bottom opening 103C all the way to the inner bottom of the beverage bottle 106A (except for a small gap) thus enabling to empty most of the beverage from the bottle . . . .” (emphasis added)). Third, Figures 2–4 certainly disclose a gap below the opening 103B of pipe 103A. However, claim 6 does not recite merely a gap; it recites “a predetermined gap.”

The PTAB judges seems to be stretching pretty hard to uphold this rejection. Even their assertion that the term “predetermined” is not per se improper is hard to square with the final assertion that the specification disclosed only “a gap”, not a “predetermined” gap. So, in the end, while some examiners do a good job of assisting pro se inventors, there are limits to the USPTO’s flexibility.

It is important to understand that even if it might seem like one is following what appears to be clear instructions from a reputable resource, that does not mean the USPTO will give it substantial weight.