How to Respond Back to Patent Examiner

[nikhilg4321]

What is the name of your state (only U.S. law)? NJ

Hi,

I'm a student and while doing a science project, I came up with an idea on how to improve the efficiency of pollination of vegetable crops. For kicks, I thought why not try and patent my idea. I submitted a nonprovisional utility patent about 10 months ago, and just received a big packet in the mail from the USPTO.

Briefly my idea takes advantage of how natural pollinators (insects, bees, butterflies) can be harnessed to improve crop efficiency. I provided examples in my application of data that I collected in my experiment to show that it works. In the drawings I included details on how to orient the plots, the spacing of the plants, etc.

Before filing, I read briefly through some FAQs on the USPTO and drafted my claims quite quickly. It is obvious now that the patent examiner thought it was a joke. All 10 of my claims were rejected. It is a long-winded rejection, but I'll summarize.

Section 1.
Intro paragraph on general reasons for rejection. It seems they were rejected for "failing to comply with the enablement requirement", "as being indefinite for failing to define the invention"

The examiner also wrote "The claims are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claims must be in sentence form only. Note the format of the claims in the patent cited"

He then goes through each of my claims and writes
Claim 1: line 2, as written, it appears XXXX are planted with crops
Claim 2: it is unclear how the male and female plants are in the x shaped pattern with respect to milkweed
Claim 3: the cluster lacks antecedent basis
Claim 6: the limitation is unclear in that the rotation of 45 degrees is unable to be ascertained and no respective point of origin is provided
Claims 7-9: rejected as applicant is claiming only plants; no interrelation to the remaining limitations of the present invention are provided
Claim 10: this claim as written claims land, which is not permitted

Then in Section 2, he writes
Claims 1 and 3-10 are rjected under 35 USC103 as being unpatentable over Dyson-Coope (USP 2012/00055085).....Then a few paragraphs on obviousness as related to this Dyson Coope patent.

Section 3.
Applicant should note that any amendments made should comply with MPEP 714 and 37 CFR1.121. He then provides a URL on how a proper response should be formatted.

Section 4. Conclusion
Notes that the prior art made of record and not relied upon is considered pertinent to applicants disclosure. Then gives the name and phone # of the patent examiner.

So here are my questions:

I'm a student so I can't really afford a patent attorney.

If I limit my claims, or try to reword them, do you think the patent examiner might be willing to accept them? He seemed to realize I wasn't a lawyer and gave me some tips on how to format my response.

How does it work to negotiate back and forth with the examiner? Done by email or via phone?

Do I only have once chance to respond back? I read somewhere else that the next rejection is considered final.

I'm doing this more as of a learning experience. I don't really have any financial stake in this patent, so if it does get rejected, no great harm. But it would greatly help me for future for job prospects if this were to get issued.

Any and all advice on how to get this issued would be greatly appreciated.

 

[Silverplum]

What is the name of your state (only U.S. law)? NJ

Hi,

I'm a student and while doing a science project, I came up with an idea on how to improve the efficiency of pollination of vegetable crops. For kicks, I thought why not try and patent my idea. I submitted a nonprovisional utility patent about 10 months ago, and just received a big packet in the mail from the USPTO.

Briefly my idea takes advantage of how natural pollinators (insects, bees, butterflies) can be harnessed to improve crop efficiency. I provided examples in my application of data that I collected in my experiment to show that it works. In the drawings I included details on how to orient the plots, the spacing of the plants, etc.

Before filing, I read briefly through some FAQs on the USPTO and drafted my claims quite quickly. It is obvious now that the patent examiner thought it was a joke. All 10 of my claims were rejected. It is a long-winded rejection, but I'll summarize.

Section 1.
Intro paragraph on general reasons for rejection. It seems they were rejected for "failing to comply with the enablement requirement", "as being indefinite for failing to define the invention"

The examiner also wrote "The claims are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claims must be in sentence form only. Note the format of the claims in the patent cited"

He then goes through each of my claims and writes
Claim 1: line 2, as written, it appears XXXX are planted with crops
Claim 2: it is unclear how the male and female plants are in the x shaped pattern with respect to milkweed
Claim 3: the cluster lacks antecedent basis
Claim 6: the limitation is unclear in that the rotation of 45 degrees is unable to be ascertained and no respective point of origin is provided
Claims 7-9: rejected as applicant is claiming only plants; no interrelation to the remaining limitations of the present invention are provided
Claim 10: this claim as written claims land, which is not permitted

Then in Section 2, he writes
Claims 1 and 3-10 are rjected under 35 USC103 as being unpatentable over Dyson-Coope (USP 2012/00055085).....Then a few paragraphs on obviousness as related to this Dyson Coope patent.

Section 3.
Applicant should note that any amendments made should comply with MPEP 714 and 37 CFR1.121. He then provides a URL on how a proper response should be formatted.

Section 4. Conclusion
Notes that the prior art made of record and not relied upon is considered pertinent to applicants disclosure. Then gives the name and phone # of the patent examiner.

So here are my questions:

I'm a student so I can't really afford a patent attorney.

If I limit my claims, or try to reword them, do you think the patent examiner might be willing to accept them? He seemed to realize I wasn't a lawyer and gave me some tips on how to format my response.

How does it work to negotiate back and forth with the examiner? Done by email or via phone?

Do I only have once chance to respond back? I read somewhere else that the next rejection is considered final.

I'm doing this more as of a learning experience. I don't really have any financial stake in this patent, so if it does get rejected, no great harm. But it would greatly help me for future for job prospects if this were to get issued.

Any and all advice on how to get this issued would be greatly appreciated.

Others will come and tell you more about the patent process. But I bolded/underlined what is at least half of your problem: you didn't take it seriously, you didn't give it your best, you didn't meet the qualifications, and you were justifiably rejected.

That aside, I *love* your agricultural research and ideas, and wish you the most splendid future imaginable!

 

[quincy]

What is the name of your state (only U.S. law)? NJ

Hi,

I'm a student and while doing a science project, I came up with an idea on how to improve the efficiency of pollination of vegetable crops. For kicks, I thought why not try and patent my idea. I submitted a nonprovisional utility patent about 10 months ago, and just received a big packet in the mail from the USPTO.

Briefly my idea takes advantage of how natural pollinators (insects, bees, butterflies) can be harnessed to improve crop efficiency. I provided examples in my application of data that I collected in my experiment to show that it works. In the drawings I included details on how to orient the plots, the spacing of the plants, etc.

Before filing, I read briefly through some FAQs on the USPTO and drafted my claims quite quickly. It is obvious now that the patent examiner thought it was a joke. All 10 of my claims were rejected. It is a long-winded rejection, but I'll summarize.

Section 1.
Intro paragraph on general reasons for rejection. It seems they were rejected for "failing to comply with the enablement requirement", "as being indefinite for failing to define the invention"

The examiner also wrote "The claims are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claims must be in sentence form only. Note the format of the claims in the patent cited"

He then goes through each of my claims and writes
Claim 1: line 2, as written, it appears XXXX are planted with crops
Claim 2: it is unclear how the male and female plants are in the x shaped pattern with respect to milkweed
Claim 3: the cluster lacks antecedent basis
Claim 6: the limitation is unclear in that the rotation of 45 degrees is unable to be ascertained and no respective point of origin is provided
Claims 7-9: rejected as applicant is claiming only plants; no interrelation to the remaining limitations of the present invention are provided
Claim 10: this claim as written claims land, which is not permitted

Then in Section 2, he writes
Claims 1 and 3-10 are rjected under 35 USC103 as being unpatentable over Dyson-Coope (USP 2012/00055085).....Then a few paragraphs on obviousness as related to this Dyson Coope patent.

Section 3.
Applicant should note that any amendments made should comply with MPEP 714 and 37 CFR1.121. He then provides a URL on how a proper response should be formatted.

Section 4. Conclusion
Notes that the prior art made of record and not relied upon is considered pertinent to applicants disclosure. Then gives the name and phone # of the patent examiner.

So here are my questions:

I'm a student so I can't really afford a patent attorney.

If I limit my claims, or try to reword them, do you think the patent examiner might be willing to accept them? He seemed to realize I wasn't a lawyer and gave me some tips on how to format my response.

How does it work to negotiate back and forth with the examiner? Done by email or via phone?

Do I only have once chance to respond back? I read somewhere else that the next rejection is considered final.

I'm doing this more as of a learning experience. I don't really have any financial stake in this patent, so if it does get rejected, no great harm. But it would greatly help me for future for job prospects if this were to get issued.

Any and all advice on how to get this issued would be greatly appreciated.

First, I am impressed that you are taking the initiative and moving to have what you discovered while working on your science project patented. It appears, however, that you are not going to be able to do this on your own (if at all). This is not at all unusual, though. Most inventors need help in filing a patent application.

To start, I am thinking just from a very quick glance over what you have posted that you might have filed for the wrong type of patent. It appears your invention would fall under plant patents and not utility patents (although I could be wrong). It also appears that your invention conflicts with an existing Dyson-Coope patent (a "garden bedding system" invention).

Doing a patent search prior to filing for a patent is important. Patent searches can be done through the USPTO website, but choosing the right key words for a search can often make the search a difficult one: http://patft.uspto.gov/

To qualify for a patent, the invention must be both novel (offers something new) and nonobvious (offers something that no one else has or would think of). Apparently the patent examiner does not believe your invention meets either of these requirements, which is why the patent examiner advised you to review 35 USC 103.

The patent examiner is not going to do the type of work you want him/her to do. You need to seek out the help of a patent attorney or a patent agent if you hope to have your patent application and your invention taken seriously. If you are really short on money, perhaps you can seek out the assistance through the IP department of an area law school or perhaps even your science teacher can provide some guidance.

Following are links with information for you to read through on 35 USC 103 (conditions for patentability), on MPEP 714 (application amendments) and 37 CFR1.121 (how to make amendments).

35 USC 103: https://www.law.cornell.edu/uscode/text/35/103

MPEP 714: http://www.bitlaw.com/source/mpep/714.html

37 CFR1.121: http://www.bitlaw.com/source/35cfr/1_121.html

And, finally, here is a link to the Trademark Manual of Examining Procedure:
http://tmep.uspto.gov/RDMS/detail/manual/TMEP/current/d1e2.xml

Good luck, nikhilg4321.

 

[FlyingRon]

Actually, I think the utility patent is correct. He's not come up with a new plant, but rather a way to help existing plant pollination.

By the way, if you don't know how to get to it, here is the patent the examiner mentions http://patents.justia.com/patent/20120055085

The patent process is NOT supposed to be interactive. You need to fix ALL the problems identified (without introducing new ones) before responding.

 

[quincy]

Actually, I think the utility patent is correct. He's not come up with a new plant, but rather a way to help existing plant pollination.

By the way, if you don't know how to get to it, here is the patent the examiner mentions http://patents.justia.com/patent/20120055085

The patent process is NOT supposed to be interactive. You need to fix ALL the problems identified (without introducing new ones) before responding.

You are probably right on the utility patent, FlyingRon. I saw plants and sort of stopped there.

There appears to be a lot of problems that need addressing before the application can be resubmitted. I reiterate my advice to nikhilg4321 that he seek in his area some help with amending his application.

Here is another link (to add the many already provided) and nikhilg4321 should scroll to read 37 CFR 1.111, Reply to Office Action: http://www.uspto.gov/web/offices/pac/mpep/s714.html

There is a time within which nikhilg4321 must respond to the examiner, with or without amendments, before his application is considered abandoned.

I also want to reiterate how impressed I am with you, nikhilg4321, that you have taken what you have learned from your science project to seek a patent (this whether one is eventually granted you or not).

Good luck.

 

[nikhilg4321]

Hello:

Many thanks to silverplum and quincy for your replies. Indeed I did look at a plant patent first, but realized that it wasn't appropriate (it is more intended for new breeds of plants). My invention deals with how to best plant crops so that they can take advantage of natural pollinators. So I thought a utility patent would be the best choice. I did a patent search on the USPTO website and didn't find anything, so I went ahead and filed. The patent examiner found several other patents that have similar (but not identical) ideas as mine. The Dyson-Coope patent is simply a biodegradable pattern that is laid on the ground prior to planting. It has nothing to do with pollination, which is the main focus of my invention. I'm still not entirely sure why he keeps referring to Dyson-Coope, but I believe it probably has something to do with the broadness of the claims.

I did review the requirements (obviousness) before filing my patent, but I guess I wasn't clear on exactly what they were looking for. I wrote up the patent claims and specification based upon one example that I saw. Most of the other patents I looked at was filled with legal jibberish. I wrote mine in fairly simple language. I don't have a lot of money, so I don't know how I'm going to afford a patent attorney. It might be cheaper to find a patent agent. I guess what I'd like to know is:

Is it worth it to even try arguing with the examiner over the obviousness and enablement? Or am I doomed to fail?

If I try to rewrite the claims so that they do not overlap with Dyson-Coope, would this work?

Do you know of any do-it-yourself guides that I can use as a reference?

Thanks to all for taking time to read!

 

[FlyingRon]

That nomenclature in the patent is not jibberish. It serves an important method to communicate legally what the claim is. Your attempt to paraphrase the requirements isn't helping. "Identicality" isn't a yardstick (though obviously if yours is identical to soemthing else, it is hardly novel). It's not necessary for Dyson-Coope to mention pollination for it to displace the novelty of your invention. If I had invented the umbrella as a way to keep the rain off my head, it isn't patentable to keep the sun off subsequently. We can't really address too much here without actually knowing exactly what claims you made.

I too applaud your ingenuity. If you are in college, you may be able to get some assistance from your school. Otherwise, you may try to network a little to see if you can find someone local that can help you.

 

[quincy]

Hello:

Many thanks to silverplum and quincy for your replies. Indeed I did look at a plant patent first, but realized that it wasn't appropriate (it is more intended for new breeds of plants). My invention deals with how to best plant crops so that they can take advantage of natural pollinators. So I thought a utility patent would be the best choice. I did a patent search on the USPTO website and didn't find anything, so I went ahead and filed. The patent examiner found several other patents that have similar (but not identical) ideas as mine. The Dyson-Coope patent is simply a biodegradable pattern that is laid on the ground prior to planting. It has nothing to do with pollination, which is the main focus of my invention. I'm still not entirely sure why he keeps referring to Dyson-Coope, but I believe it probably has something to do with the broadness of the claims.

I did review the requirements (obviousness) before filing my patent, but I guess I wasn't clear on exactly what they were looking for. I wrote up the patent claims and specification based upon one example that I saw. Most of the other patents I looked at was filled with legal jibberish. I wrote mine in fairly simple language. I don't have a lot of money, so I don't know how I'm going to afford a patent attorney. It might be cheaper to find a patent agent. I guess what I'd like to know is:

Is it worth it to even try arguing with the examiner over the obviousness and enablement? Or am I doomed to fail?

If I try to rewrite the claims so that they do not overlap with Dyson-Coope, would this work?

Do you know of any do-it-yourself guides that I can use as a reference?

Thanks to all for taking time to read!

I think you could benefit from reading the Trademark Manual.

You really cannot "argue" with the trademark examiner. You need to amend the application as advised by the trademark examiner and see where it goes from there - but I would have your application reviewed by someone in your area who is familiar with patents. This could be a science teacher, an IP law professor, another inventor, a patent agent, perhaps even a kind-hearted patent attorney who is willing to mentor ...

I do not know if your invention is one that can be patented so I don't know if any amendments you make to your application will make a difference, so I can't tell if you are doomed to fail. I think you are already a success for having attempted to do this on your own.

Good luck.