John Russell – Breaking Down Improper Logic In Office Actions

guest post by John Russell

Patent prosecution has certain patterns that can be hard to recognize without many years of experience. Recognizing these patterns can help turn an inexplicable rejection into something that an applicant can effectively break down and attack. Hopefully, this post helps you recognize a common pattern where an examiner makes rejections that at first appear to be based on a simple misunderstanding, but where in reality there is no examiner misunderstanding at all.

The specific issue of the day is the confusing tendency of USPTO examiners to re-interpret disclosure and morph it into something entirely different. Applicants often believe such rejection are just based on a mistake or misunderstanding, and all that is needed is to help the examiner better understand. In reality, however, the examiner knows exactly what they are doing and in reality the examiner's misinterpretations are carefully calculated.