Call The Examiner

It is always astounding to me to review file histories in which the prosecuting attorney argued on and on for years without ever contacting the examiner by telephone. More often than not the attorney kept making the same arguments over and over, with slight variations on the language. The examiner, of course, kept rejecting the claims over and over. There was never any "meeting of the minds".

Examiners are as human as the rest of us. They harden their positions when faced with pig-headedness and condescension, and they open up when their positions are genuinely respected and addressed. If a patent attorney wants the prosecution to drag on interminably, then by all means it is a good idea to fall back on the tried and true grade school level of arguing. When the examiner says the claimed subject matter is obvious, the attorney responds that it is not. When the examiner repeats that the claimed subject matter is obvious, the attorney repeats that it is not.

On the other hand, if the attorney want to get the application allowed quickly, then it is best to give the examiner a phone call. Listen to the examiner with an open mind, and then suggest amendments that respect his/her position while securing the needed coverage. Don't fill up the record with formal rejections and responses, separated by six month intervals. Work out allowable claims using the telephone and informal communications to the examiner's private fax number.