How to respond to an Office Action?
The bottom line answer is to respond in a careful calculated manner so that you don’t limit your protection in any way and if you must limit your protection, do so in a minimalist fashion. Oftentimes, this means that you should be ambiguous and to argue only when it matters. To illustrate this principal, I want to discuss the restriction requirement since it is one of the simplest responses to prepare and file.
In a restriction requirement, the examiner is making an objection that the claim set includes claims to two different inventions. The examiner is requiring the applicant to elect one of the inventions identified by the examiner for examination and withdraw the other claims. Clients are oftentimes frustrated because the restriction is oftentimes between the apparatus claims and the method claims directed to the use of the apparatus. They seem like the same invention but for some reason the examiner seems to think that they are different inventions. Other restrictions are directed to different embodiments of the invention disclosed in the patent application. For most applications, the best way to handle the restriction requirement is to elect one of the inventions for examination and move on without much argumentation.
The primary reason is that anything that you say can and will be used against you. The arguments that you put forth before the examiner will be used by a defendant to argue that they are not infringing your patent. In Plantronics v. Aliph (Fed. Cir. July 31, 2013), the examiner merely indicated that there were different inventions without describing why they were different inventions. The applicant merely elected one of the inventions. A patent ultimately matured from the patent application. The patent owner is suing an alleged infringer who is arguing that the claims should be construed so as to be limited to the elected invention.
“Neither the PTO nor Plantronics made any particular remarks regarding the differences (e.g., in structure) of what the PTO found to be different inventions, and while Plantronics elected without traverse the invention of Figures 1A and 1B, Plantronics did disagree with the PTO’s comments on claim 11 … This exchange with the PTO thus does not amount to anything clear or unambiguous to disclaim claim scope otherwise encompassed by the broadly drafted claims.”
In Plantronics, the applicant responded appropriately so as to not limit the claim scope. They also disagreed with the examiner when they thought it mattered.
In contrast, the Federal Circuit distinguished the instant case with LG Electronics and Acco Brands cases in which the applicant or the examiner made clear the structural differences between the various inventions.
Although I illustrated the concept with a restriction requirement, the basic concept is that you want to think through what you will be saying and how a potential infringer can and will use your statements against you.