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Patent Guide: VII. Office actions

An Office Action is the first substantive examination of the claims in your patent application. It will have a cover sheet with your name and address, a page with an explanation of what is contained therein (which is often not completely accurate) and reasons for rejection. This is followed by a copy of the Search Report conducted by the Examiner, and his initials indicating he reviewed the references we found and submitted in the Information Disclosure Statement (see section V of this guide).

Skipping to the rejection portion, here's a small excerpt of the rejection we received for our RFID Bingo Ball patent:

At this point, the way our law firm generally works, we'll break the response up into three stages:

1) In depth review of all references cited - we will provide you with a break down with four parts: a) for each phrase of each claim, b) what the Examiner's argument is, c) what the Examiner is citing, and d) our analysis with why we disagree with the Examiner, agree, or propose a claim amendment. This usually takes about three hours of billable time.

2) Examiner Interview - statistics show that those who talk to the Examiner have a higher rate of allowance than those who respond only on paper. So, as a matter of course, we like to talk to the Examiner and discuss the rejection with him. Often, we understand his position better and he understands what you're trying to claim a lot better. Examiner's simply aren't given enough time to examine patent applications, so most cannot read each application in depth to really understand your claims. It's unfortunate, but this is our patent system, so a phone call often goes a long way. This usually takes about 1.5 hours of preparation, conference with the Examiner, and report to you.

3) Written Response - This is where we take everything from above in "1" and "2" and put it down in legal and scientific arguments on paper. Here's an example, excerpted from our response to the above:

As recited above, Figure 3 fails to show that the spherical encasement is hollow. Rather, the RFID tag appears to be held at a central plane, implying that the ball is solid. No text has been located within the written specification of Ito one way or the other, and as such, the Office Action has not met the burden of showing that the prior art discloses each and every limitation of claim 11. Further, as recited above, the balls are produced from translucent resin, so it is highly unlikely that these balls are produced hollow. Therefore, claim 11 is allowable.

Suffice to say, in the above example, our arguments worked. We received an allowance of all claims filed. Sometimes, it doesn't go so well, so we can file VIII. Appeals.

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