A post from student blogger Brittany

So I’ve previous told you all that I am a graduate intern in the Office of Technology Transfer at ND. Part of my responsibilities include identifying possible licensees for technologies developed at the University and conducting patentability searches. Recently I was asked to review a final office action and draft a potential solution to overcome the rejection.

As I was sifting through all of the previous office actions trying to come up with an answer I realized that the patent examiner distinctly used a term of art in reference to the specifications which then found its way into the claims. Unfortunately, once the applicant used that exact same term of art in the claims they received a swift rejection.

Let me backtrack for a second and provide you with a little patent drafting 101. The claims of any patent application MUST BE FULLY SUPPORTED BY THE SPECIFICATIONS. The specifications include a detailed description of the new technology as to enable anyone to make, use or sale the new technology. In the case of the patent application in question, the examiner used a word, then the applicant amended the claims to include the word, and then the examiner rejected the claims because the word was not in the specifications… It seems absolutely ridiculous but that is how this patent thing works guys.

In the words of Professor Wack NO NEW MATTER, don’t add in anything in the claims that is not supported by the specifications even if the patent examiner tells you too. If the applicant had revised the specifications to include the term, then I believe that the patent examiner would have probably issued an allowance instead of a rejection. To top it all off, there were only four claims….FOUR CLAIMS…I would have expected so much back and forth for at least 10 claims but hey that’s the USPTO for ya.