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疑难案件处理—美国专利申请号16716536

活动时间:2020-10-26  点击量:288

US Application Number:  16716536

Case :  Jerky Drinking Straw

Prosecution History:


We received a Non- Final Office Action from the Examiner on March 16, 2020 in which the Examiner did not allow any of our claims. More specifically, the Examiner rejected our broadest claim 1, as well as claims 2, 4, 7, 9, 13-16, 18 and 20 with a total of seven different references. Additionally, the Examiner rejected the rest of our claims, claims 3, 5-6, 8, 10-12, 17 and 19, using even more references.

2020.03.16 — 非***终审查意见 Non-Final OA

无可授权权利要求:权1,2,4,7,9,13-16,18,20 基于7篇对比文件被驳回;权3,5-6,8,10-12,17,19也被驳回,甚至用了更多比对文件。


On April 22,2020, we wrote seventeen pages of arguments explaining to the Examiner how he had failed to meet all of our claimed limitations and why he had failed to provide a prima facie case of obviousness.

2020.04.22,我们提交了17页的意见陈述/争辩,向审查员解释为什么对比文件没有揭示所有的权利要求特征,以及为什么审查员没有提供本发明显而易见的初步证据。


However, the Examiner did not accept or agree with our arguments and issued a Final Office Action on May 01, 2020 again rejection all of our twenty claims and repeating his same rejections given in the prior Non- Final Office Action.

然而,审查员不接受我们的意见陈述/争辩,并于2020.05.01下发了Final OA驳回了所有20条权利要求,且坚持了之前non-final中完全相同的驳回理由。

Therefore, on June 16, 2020 we filed a forty-two-page response explaining to the Examiner how he had failed to meet all of our claimed limitations and why he had failed to provide a prima facie case of obviousness.

2020.06.16,我们提交了42页的答复,向审查员解释为什么对比文件没有揭示所有的权利要求特征,以及为什么审查员没有提供本发明显而易见的初步证据。


Along with this response of June 16, 2020, I called and made an interview with the Examiner on June 24, 2020 and specifically explained to the Examiner why the applied prior art did not meet a few of the claimed limitations of claim 1 and showed the Examiner why he was using improper Hindsight. The Examiner did not counter any of my arguments as to why the applied prior art did not meet the claimed limitations but just would say the Amendment After the Final Office Action, which only was resolving a 112 (b) issue raised by the Examiner, would not be entered.

2020.06.24,我们与审查员进行了电话会议,具体详细地解释为什么现有对比文件没有揭示权1的所有特征,以及审查员使用了后见之明。对于我们提出对比文件没有揭示所有权利要求特征这一观点,审查员没有任何反驳或意见,只说Final OA之后的修改只解决112b)问题,修改不被接受。

Therefore, in an Analysis sent to client, I suggested we file a Pre-Appeal Brief since the Examiner could not counter any of my arguments in the interview why the applied prior art did not meet a few of the claimed limitations of claim 1.

因此,我们建议“上诉前审查”,因为审查员在电话会议中无法反驳我们的观点,即现有对比文件没有揭示权1所有特征。

So, on July 30, 2020, we wrote and filed a Pre-Appeal Brief refuting the Examiner’s rejections in the Final Office Action of May 01, 2020

2020.07.30,我们提交“上诉前审查”,反驳审查员于2020.05.01下发的Final OA中的驳回决定。


On August 21, 2020, we received a Pre-Appeal Conference Decision which only stated at least one actual issue for appeal remains.

2020.08.21,收到“上诉前审查会议”决定,决定指出至少一个需要上诉的实际问题。


In view of the Pre-Appeal Conference Decisions’ statement of at least one actual issue for appeal remains, I called the Examiner’s Supervisor asking him to explain what is this at least one issue. The Supervisory did not answer me but said he will have the Examiner call me and later the Examiner did call me and said that he believed we need to make “stronger” arguments. I explained to him that the Pre-Appeal Brief limits us to only five pages and that I would like to make these “stronger” arguments to the Examiner and his Supervisor so I asked the Examiner for a telephone interview and we did set up a telephone interview with the Examiner and his Supervisor on September 23, 2020.

关于“上诉前审查会议”决定中指出的至少一个需要上诉的实际问题,我们打电话给审查员的主管上级问所指的问题具体是什么。这位主管上级没有回答我们的问题只说会让审查员给我们回电话,之后审查员确实回了电话说道他认为我们需要做出更加强而有力的争辩/意见陈述。我解释道我们也想提出强而有力的意见陈述但是上诉前审查以5页篇幅为限,因此我请求进行电话会议。2020.09.23,我们和审查员及其主管上级进行了电话会议。

 

When I called the Examiner and his Supervisory on September 23, 2020 for the interview, I first went into making arguments, but I was immediately asked by the Supervisory if I could wait a second why the Examiner had a minor claim amendment to allow the case. So, I listened to the Examiner’s suggestion of adding the language of “with cooking oil” in claim 1 as the previous claimed grease material. I stated that I will ask our client if this is acceptable, but I continued with my arguments why I still believed the applied prior art did not meet the claimed limitations. Since I believe the Examiner and his Supervisor knew they had proposed a very minor claim change to allow the case and I believe the Examiner and his Supervisor thought our client would accept this minor claim change, they still maintained their rejection in the Final Office Action. I did call our client the same day as the interview with the Examiner and his Supervisory and yes, our client did accept this minor claim change and the case was allowed on September 30, 2020.

2020.09.23,我们与审查员及其主管上级进行电话会议时,首先我想开始做意见陈述/争辩,但是审查员的主管上级立即问道我能否稍等,审查员做了一个小修改可以授权本案,所以我先听取了审查员的意见,即在权1中加上“with cooking oil”作为之前权利要求中的油脂材料。我说我们会询问客户意见是否接受,然后继续陈述意见/争辩为什么现有对比文件没有揭示所有权利要求特征。审查员及其主管上级维持了Fina OA中的驳回决定,因为所提出的授权前修改是个非常小的改动,他们认为我们客户一定会接受。我们同日致电客户询问客户是否接受审查员提出的修改,客户接受,本案于2020.09.30授权。

I do believe we would have won on Appeal to the US Patent Board of Appeals however, the client may have had to wait three or more years for a decision and instead now has a US Patent.

我相信,如果上诉到美国专利上诉委员会,我们会赢,但是客户就无法现在取得授权,可能要等三年或更久的时间。



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