How do you proceed when examiner cites an invention that does not work?

Satyajit Patwardhan CEO at Green Dot (Transportation) Inc.

November 17th, 2014

In a recent office action the examiner has cited a patent to object (on the grounds of being anticipated) to one of my claims. However after a closer look, I realize that this old patent's invention won't function if we take the description and claims literally.(I should also say that its possible to imagine how it can be made to work). Can I use this fact to my advantage and eliminate objection to my claims? If so, how to argue that? Please advice.

Larry PE Focused results driven creative thinker with a very diverse background able to propose novel solutions to new problems

November 17th, 2014

What differentiates your invention from the existing patent?  I know this seems like an obvious approach but negating the existing art when you figured out how to make it work is not how I would proceed.  There must be something that you did that is just different enough.

Rob G

November 17th, 2014

Satyajit, are you a patent attorney?  If not, get one... a good one.  i'm not an attorney, but i have a few patents and a few scars from doing battle with the patent office.  'Selling' the patent examiner and his/her boss on why they should allow your claims is an odd combination of sales strategy and arcane legal spin-meistering so it is vitally important to understand their motivations.  patent claim language is very important and one word can make a big difference.   It is important to understand that the examiner's job is to say "no".  That is somewhat a simplification, but not too far off the mark.  How many office actions have you responded to at this point?  Early in the process you will get rejections for crazy reasons that have no bearing whatsoever to your invention. The examiner wants you to go away and he doesn't want to dedicate a lot of time doing it so he will pull a rejection out of thin air in hopes you will go away and he is usually quite successful. The vast majority of applications go away after the first rejection.  If you are going to get strong claims you need to be prepared to fight and you can't fight without a good attorney. That may not be right, but that's the way it is. Your own arguments will likely fail and not because your arguments are wrong, but because they are likely to miss some key word or lack some key citation or be filed on the wrong form.  I had the PTO send me an abandonment letter on one of my applications stating that i failed to respond to the office action within the time limit and therefore my application was abandoned.  I had in fact responded on time, had an electronic receipt showing that the PTO had received my response on time.  My evidence was irrefutable.  The examiner simply made a mistake.  I wrote a letter and provided copies of the PTO's own records showing they received and time stamped my response within the allotted timeframe and i asked them to reverse their abandonment decision.  The examiner rejected my argument even though it was indisputable that they had simply made a mistake.  it was clear he had made a mistake.  I paid an attorney $1,000 or so and he wrote a letter making the exact same argument - "you are wrong and here is a copy of your own records proving that you are wrong", but he made citations to this arcane rule and that part of the code.  The examiner reversed the abandonment decision.  I would also suggest that you should take care in what you discuss in public forums regarding you patent applications.  The grounds for an 'obviousness' rejection are based on whether 'one with skills in the art could practice' the invention.  Even if the examiner's citation to a prior invention is wrong you have essentially admitted in a public forum that you, one who is presumably 'skilled in the art',  could make ("practice") the invention based on the claims and disclosure.  If your patent is later granted and then later challenged, statements like you have made here will not help you.