Is in the claims!
Yes, we had that famous lecture today. It was pretty entertaining, although I did feel like I should have run out of the auditorium pumping my fists, Tony Robbins-style.
I almost entitled this post “Do you understand the words that are coming out of my mouth?” Because really, that’s what it boils down to – do you understand the specification? Do you understand what the invention is supposed to be? Do you understand what all the words themselves mean, and are you sure that there’s no other way that they can be understood? Do you understand the claims? Do the claims make sense in light of the spec?
I actually got into a discussion with another junior examiner the other day about how well we have to understand the invention. He seemed to think that you really “only” need to understand the invention sufficiently to find prior art. But how can you find prior art if you don’t understand the invention well? Maybe I’m wrong, but the goal shouldn’t be to issue a rejection based on any old prior art that is half-way related. The goal is to find good prior art that reads on the claims, find some other objection or rejections if there are any, or allow the claims if they are allowable. But you just can’t make that determination unless you’ve really invested some time and thought into understanding the document in front of you.
We also took a look at some of the automation tools, including the form paragraphs tool and our electronic docket system. We only did some very, very basic stuff with it. They want us to get little pieces of all the tools at first, so we get used to them, and then give us more complete guidance later.