Posted by Stefanie Zucker on December 3, 2010 · 1 Comment
As you can probably tell, 2004 was a bit of a rollercoaster. And trust me when I say that after that disaster of a weekend, I was seriously ready for the cart to start rolling uphill again.
Sure enough Monday afternoon found us on a conference call with the examiner from the US patent office. See our patent had been already gone through 3 office actions and things were getting a little frustrating (not to mention expensive) so we decided to speak directly to the examiner to see 
if we could understand the rationale behind what he would and wouldn’t approve. Now having gone through this process several times, I feel obliged to tell you that unfortunately, in all likelihood a call like this will probably not leave you with a better understanding of how your examiner thinks. What it can do however is provide you with insight into the one or two words or phrases that your examiner has a conflict with….and that can make all the difference in the world. Case in point:
Our call began with our examiner showing us the “prior art” (i.e. other existing patents filed before ours) that he believed we would infringe upon with our current claim language. We went back and forth over a couple of minor points, made some small changes and then sat down to discuss what he considered to be the one “obstacle” we hadn’t yet overcome: a portable surgery tray that attached to a stretcher and kept the medical instruments secure – OR – as far as we could see – a cafeteria lunch tray with a strap running across it. (note – those of you who’ve been through this process are no-doubt chuckling because you’ve “lived the dream” of bizarre prior art references – for those of you whose jaws just hit the table, know that ours did too and we hadn’t even gotten to the best part).
We were quiet for a second and then our patent attorney who had joined us in the call proceeded to ask very calmly how the examiner thought this could be used to secure a child for safe transport to a hospital. His answer – no joke – “well you could tape a baby to that tray”.
The silence was deafening…I mean seriously, how do you counter that??? Finally, after what seemed like minutes (ok, really only seconds) of silence I made a decision. No amount of intelligent discussion / arguing was going to change his opinion. I just needed to know where in his opinion we had gone wrong so that we could fix it. So I sucked it up and asked…and to my surprise, he told me. Not long after that we filed our final response with the USPTO.
For weeks I checked PAIR (the Patent Application Information Retrieval system for the USPTO) daily hoping for some kind of sign that we were finally done. Thanksgiving morning (…and yes it really was Thanksgiving) I got one – our official “Notice of Allowance” was posted. 🙂
I could follow this part of the story with a section on “what I learned” but I feel pretty confident that you all can figure that out on your own. I will say that after what felt like a torrential downpour I finally got my rainbow…
Until next time…with love from the “tape a baby corporation”
[…] This post was mentioned on Twitter by Stefanie Zucker, Stefanie Zucker. Stefanie Zucker said: New post: PMD 2004: And After Every Rain…A Rainbow http://bit.ly/hyEhvW […]