A way to obtain the best of both worlds - a) the granularity of iterative prosecution and b) claim development without sacrificing official "rounds" of prosecution - is to expand the interview process. Currently, the time allotted to examiners for interviews is short (normally one hour including prep time), and the interview practice is very open-ended, but an interview can be enhanced into a quasi-round of prosecution itself given the right procedure and resources. Two ideas of reducing this to practice are:
1) Before FAOM (first action on the merits), if the Examiner feels that the claims are overly broad or contain a 112 error that would hinder prosecution, then the Examiner can call the Applicant/Representative to schedule a Pre-Exam Conference in order to work out a preliminary amendment. The Examiner should be given more than the usual hour of othertime (say perhaps 3-4 hours), but the requirement would be that attached to the Interview Summary is an 892 showing the relevant art the Examiner is using as evidence to warrant the preliminary amendment. This would not be a full examination, but a "quasi" round of prosecution just to knock out these basic issues - the Examiner would get a few hours as opposed to just one hour of othertime, and there would be search and examination to show for it. 112 errors can be fixed this way too, with perhaps a description of the error attached to the Interview Summary in lieu of the 892. The goal though would be to get a preliminary amendment entered that advances the claim recitation, before a full FAOM is performed. A pilot program by PTO could see how effective this is in accomplishing that goal.
2) Have a Pre-RCE Conference process whereby, before filing an RCE, the Applicant/Rep. could request to discuss the merits of the potential RCE with the Examiner, and if desired, the Supervisor also. In a way, this is like a combination of the After Final Pilot and the Pre-Appeal Conference process. But this goes even further because it remedies a subtle but all too common situation in which an RCE is filed to get amended claim language entered that is "just enough" to overcome the current rejection but that still may not end up being allowable. The Pre-RCE Conference gives an opportunity to not only discuss whether an RCE is necessary, but also - even if an RCE will be filed - to further determine what ELSE may be added to that claim amendment to overcome other possible rejections down the road after the RCE would be filed. Thus, this is another "quasi" round in that, the Examiner would be given a few extra hours of othertime (say 4 hours) to update the search and consider what may happen even after this "just enough" amendment would filed. It would not be a full examination, but enough to remedy basic issues or inadequacies of what would have been filed, and allow the applicant to amend it even further before filing the RCE. Sometimes this may result in avoiding an RCE altogether, in that allowabilty may be determined on these further advanced claims. But even if an RCE is filed, this process would still result in getting a head start with the further advanced claims, and the RCE would be filed with confidence and direction (and at least a second RCE should not be necessary down the road). Therefore, this still significantly helps in maximizing the RCE efficiency and reducing the RCE backlog. Again, PTO could try this as a pilot program.
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