We received a Non- Final Office Action from the Examiner on March 16, 2020 in which the Examiner did not allow any of our claims. More specifically, the Examiner rejected our broadest claim 1, as well as claims 2, 4, 7, 9, 13-16, 18 and 20 with a total of seven different references. Additionally, the Examiner rejected the rest of our claims, claims 3, 5-6, 8, 10-12, 17 and 19, using even more references.
On April 22,2020, we wrote seventeen pages of arguments explaining to the Examiner how he had failed to meet all of our claimed limitations and why he had failed to provide a prima facie case of obviousness.
However, the Examiner did not accept or agree with our arguments and issued a Final Office Action on May 01, 2020 again rejection all of our twenty claims and repeating his same rejections given in the prior Non- Final Office Action.
Therefore, on June 16, 2020 we filed a forty-two-page response explaining to the Examiner how he had failed to meet all of our claimed limitations and why he had failed to provide a prima facie case of obviousness.
Along with this response of June 16, 2020, we called and made an interview with the Examiner on June 24, 2020 and specifically explained to the Examiner why the applied prior art did not meet a few of the claimed limitations of claim 1 and showed the Examiner why he was using improper Hindsight. The Examiner did not counter any of my arguments as to why the applied prior art did not meet the claimed limitations but just would say the Amendment After the Final Office Action, which only was resolving a 112 (b) issue raised by the Examiner, would not be entered.
Therefore, in an Analysis sent to client, we suggested we file a Pre-Appeal Brief since the Examiner could not counter any of my arguments in the interview why the applied prior art did not meet a few of the claimed limitations of claim 1.
So, on July 30, 2020, we wrote and filed a Pre-Appeal Brief refuting the Examiner’s rejections in the Final Office Action of May 01, 2020.
On August 21, 2020, we received a Pre-Appeal Conference Decision which only stated at least one actual issue for appeal remains.
In view of the Pre-Appeal Conference Decisions’ statement of at least one actual issue for appeal remains, we called the Examiner’s Supervisor asking him to explain what is this at least one issue. The Supervisory did not answer me but said he will have the Examiner call me and later the Examiner did call me and said that he believed we need to make “stronger” arguments. We explained to him that the Pre-Appeal Brief limits us to only five pages and that we would like to make these “stronger” arguments to the Examiner and his Supervisor so we asked the Examiner for a telephone interview and we did set up a telephone interview with the Examiner and his Supervisor on September 23, 2020.
When we called the Examiner and his Supervisory on September 23, 2020 for the interview, we first went into making arguments, but we were immediately asked by the Supervisory if we could wait a second why the Examiner had a minor claim amendment to allow the case. So, we listened to the Examiner’s suggestion of adding the language of “with cooking oil” in claim 1 as the previous claimed grease material. We stated that we will ask our client if this is acceptable, but we continued with my arguments why we still believed the applied prior art did not meet the claimed limitations. Since we believe the Examiner and his Supervisor knew they had proposed a very minor claim change to allow the case and we believe the Examiner and his Supervisor thought our client would accept this minor claim change, they still maintained their rejection in the Final Office Action. we did call our client the same day as the interview with the Examiner and his Supervisory and yes, our client did accept this minor claim change and the case was allowed on September 30, 2020.
We do believe we would have won on Appeal to the US Patent Board of Appeals however, the client may have had to wait three or more years for a decision and instead now has a US Patent.
