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First Office Action received today

Postby Let-Them-Fly » Fri Feb 18, 2011 10:58 pm

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I received a large manila envelope in the mail today from the USPTO, inside was paperwork from the First Office Action. (which kind of surprised me since I just submitted the Application in July '09) Anyhow, it concerned 11 of the 13 Claims, which according to the examiner, were too close to those on four existing patents, although the ones they conflicted with didn't have anything to do with what mine accomplishes? Hmmmm...

The particular conflicting patent he sited today was for a mirror lined light and/or ceiling fan fixture, which I located and thoroughly read; some of the phrases were the same, so I guess that walked on his. (btw: My examiner was the one who examined the application my Claims conflict with)

The good part is, the two dependent Claims that dealt with the "Ornaments" were objected to because they depend on the rejected ones, but he said if they were re-written as INDEPEDENT Claims they would be allowed. So it looks like the Ornament application of the MID is going to be what I will come out of this with.... and the way it looks, that is where the money is going to be anyhow, so it's all good!

Now that I look back, the patent searches did let me know the "method" is unique: I just wished I could have found what the Examiner found before doing the application so the Claims could have been written differently, but the patent it was sited on didn't turn up in any of the patent searches I had done.

Another question: do they normally examine sections at a time, or can i assume the claims thing was the only objections found in the examination?
Thanks in advance.

Re: First Office Action received today

Postby Let-Them-Fly » Sat Feb 19, 2011 8:42 pm

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I have read through the patents the examiner sited, and even though theirs reference placing objects against mirrors, the specific type mirror “I” use in my claims is not mentioned, and neither of them are directed at accomplishing what my Independent claim accomplishes.

Is it within protocol to show the examiner an example to insure he understands the concept and prove it’s novelty?

Re: First Office Action received today

Postby inventor-x » Mon Feb 21, 2011 12:41 pm

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Hi Let-Them-Fly

Typically your first patent application submission will get rejected by the USPTO for various reasons but mainly because it was not written to their liking - Like Incase of a lawsuit, but the USPTO will point those writings out giving you a chance to fix the patent application.

Re: First Office Action received today

Postby Scrupulous » Tue Feb 22, 2011 1:49 am

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Let-Them-Fly wrote:I received a large manila envelope in the mail today from the USPTO, inside was paperwork from the First Office Action. (which kind of surprised me since I just submitted the Application in July '09) Anyhow, it concerned 11 of the 13 Claims, which according to the examiner, were too close to those on four existing patents, although the ones they conflicted with didn't have anything to do with what mine accomplishes? Hmmmm...

The particular conflicting patent he sited today was for a mirror lined light and/or ceiling fan fixture, which I located and thoroughly read; some of the phrases were the same, so I guess that walked on his. (btw: My examiner was the one who examined the application my Claims conflict with)

The good part is, the two dependent Claims that dealt with the "Ornaments" were objected to because they depend on the rejected ones, but he said if they were re-written as INDEPEDENT Claims they would be allowed. So it looks like the Ornament application of the MID is going to be what I will come out of this with.... and the way it looks, that is where the money is going to be anyhow, so it's all good!

Now that I look back, the patent searches did let me know the "method" is unique: I just wished I could have found what the Examiner found before doing the application so the Claims could have been written differently, but the patent it was sited on didn't turn up in any of the patent searches I had done.

Another question: do they normally examine sections at a time, or can i assume the claims thing was the only objections found in the examination?
Thanks in advance.


LTF, your claims are just about the only thing your examiner is concerned with. But, it is usually the description and drawing of the prior art that the ex compares to your claims. The office action will tell you all of the things that require attention.

I don't see a big deal with the examiner citing his/her own work. And, I think it's fantastic that you got two claims close enough to allowance...maybe even miraculous, given the way you explain it. When you say that some of the phrases were the same, and you guess that "walked on" his, it seems as though you might be at risk of blowing your response.

I've never had a complete understanding of your concept, although I gather it is quite clever. But, that's not necessary to identify some of the major mistakes you may be making if you go about this too carelessly.

Regardless though, congratulations on getting at least two of your claims that close to allowance, upon filing. And, either way, here are at least a few of the things you would want to address:

Find out whether the rejected claims are the 102 type, or the 103 type. It makes a big difference in how you amend the claims, which is likely all you may need to do, to get at least 2 of your claims allowed, if not more.

You see, when some of your claims are rejected, while others are practically allowed, it tells me there's a good chance that you could successfully claim a scope of coverage that is at least broader than what your "ornament" claims cover...maybe even a scope that is broader than what your rejected claims intended to cover, based on what you say.

More than likely, you are entitled to a scope that is slightly narrower than what the rejected claim(s) originally covered. And, it would be those rejected claims that you may want to amend, without even having to touch the two that were only objected to...if that makes sense.

[more on this after your next question]
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Re: First Office Action received today

Postby Scrupulous » Tue Feb 22, 2011 2:12 am

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Let-Them-Fly wrote:I have read through the patents the examiner sited, and even though theirs reference placing objects against mirrors, the specific type mirror “I” use in my claims is not mentioned, and neither of them are directed at accomplishing what my Independent claim accomplishes.

Is it within protocol to show the examiner an example to insure he understands the concept and prove it’s novelty?


That may just be a matter of calling out what your concept does over the prior art, by adding it into either the preamble of the claim (the first part) or in a whereby-type clause toward the end.

And, the quality or feature that actually makes your mirror special may just need to be added in the body of your claim, probably in the form of a structural element, as in...

comprising
............one or more mirrors having [such and such] coating (or what have you)
............a light source
............[and whatever else]
wherein said yada-yada yada-yadas with yada-yada whereby such and such is achieved.
________________

I'm Ken Campbell, a registered US patent practitioner at the Affordable Patent Service.

As a forum moderator, though, any input I provide should be considered general information, and not legal advice. The ideas I express are not necessarily the opinions of InventorSpot.com or its affiliates. In general, any action taken as a result of information, analysis, or advice from any forum members on this site is ultimately the user's responsibility.

Re: First Office Action received today

Postby Let-Them-Fly » Tue Feb 22, 2011 4:02 pm

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Thank you Ken,

Email sent....

Frank

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