Amendment strategies responsive to an office action

A patent application filed in the USPTO is supposed to comply with the various statutory requirements. The application is therefore examined by the USPTO.

Sometimes, a patent application needs to be amended to overcome the rejections of the USPTO. If the time to file an office action response is short, patent applicants often get confused because the patent application includes a blend of invention and exemplary embodiment of the invention; the applicant may not be able to distinguish between the invention and the exemplary embodiment. An exemplary embodiment mostly includes features of prior art & invention. The following example illustrates a strategy to identify features of the invention in the patent application, when amending the claimed subject matter.

An example:

A patent application claimed feature ‘X’ in the independent claims when filed in the USPTO. Dependent claims contained features ‘X1’, ‘X2’, ‘X3’ & ‘X4’. The first independent claim relates to a set-top box configured like a network communications device. The claims dependent on the first independent claim relate to a TV because the set-top box functions for a TV. The preamble of the second independent claim recites a TV and the features of the second independent claim include set-top box features and features like programme navigation on the TV. The programme navigation features appear in the claims dependent on the first independent claim, such that the programme navigation features are neither novel nor inventive without the features of the set-top box. The features of the second independent claim relate to an exemplary embodiment including new & conventional features. In the first office action, the USPTO rejected the patent application under 35 U.S.C. § 101, 35 U.S.C. § 102 & 35 U.S.C. § 103. The applicant was supposed to borrow features, related to the set-top box, from the detailed description to amend the claimed subject matter. The applicant got confused between a feature ‘sound mode’ of the prior art & a feature ‘programme upgrade’ of set-top box. The amended independent claims recited additional feature ‘sound mode’. The USPTO construed that the feature ‘sound mode’ did not contribute to novelty & non-obviousness of the invention in question. The USPTO again rejected the patent application under 35 U.S.C. § 101, 35 U.S.C. § 102 & 35 U.S.C. § 103. The applicant amended the independent claims to recite the feature ‘programme upgrade’ of the set-top box. The USPTO allowed the patent application. The moral of the story is that a detailed description of an invention mostly includes both new features and prior art features; the applicant needs to figure out the distinction when responding to an office action.

Without prejudice to the above, following are some tips for amending patent applications:

1. If adding features to previously presented claims, strike a balance between closest to the invention & farthest from the rejection.
2. If deleting features from previously presented claims, strike a balance between farthest from the invention & closest to the rejection.
3. Thorough analysis of the features common to all claims needs to be done.
4. Thorough analysis of the features common to all drawings needs to be done.
5. Dummy claims are typically cancelled; these claims are used like cover fire; these claims have only significance of depicting a loss in the bargain process of the Patent Offices controlled by law; these claims do not add any technological value to the invention.
6. If adding features to the previously presented claims, the features should not be out of the scope of the patent application.
7. The claims may acquire a new structure because the prosecution of the patent application is generally a long process; these claims may be added before the patent application is allowed or abandoned.
8. If adding features to the previously presented claims, the features may be borrowed from the dependent claims.
9. Camouflage features may befool reader because these features are dissolved in the patent application; these features are actually relevant to the patent application but have been not claimed in the previously presented claims, to respect the bargain process of the prosecution. So, typically after the first or second office action, these features are added to the previously presented claims, as amended claims. Nevertheless, the Patent Office may not allow amendments that are not permitted by the law.       

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