Being a parent of three sometimes means you have to take your work on the road as you chauffeur them to activities. Let me tell you about one such day. Sitting on the sidelines during a sports lesson, I want to, no, I needed to, be productive. With my mobile device, I proceeded to work on a case while occasionally peeking up to watch his progress. Before long, my cell phone rang. It was the Patent Examiner for a case that I had called earlier in the week to schedule an interview to argue the merits of my client’s application for a patent on his invention.
For those of you who have an active patent practice, you know how difficult it is to be granted an interview, especially in the middle of the summer when most people are taking their vacations. Not wanting to let the chance slip by to make progress on the case, I took the call. However, instead of scheduling a time for the call, the Patent Examiner insisted on discussing the substance of the case right then and there. During the call, I successfully argued how my client’s features were different from the cited features and how it would not have been obvious to combine the features taken from other inventions. The Patent Examiner performed a further search right then and there to confirm my arguments were valid. He proceeded to pull up several patent references based on what we had just discussed and wanted to run each and every one by me.
Imagine the pressure of pulling up the references at a driving range via a hotspot connection and reading through the specification to glean part descriptions while matching them to part numbers in the drawings? The pressure is enough to deter even the most experienced patent practitioners from taking up the offer of discussing patentability at unexpected times and places despite the potential to win the case in a few short minutes over a teleconference. Thanks to PatentSlice.com, I was able to enter the patent numbers, one at a time, given by the Patent Examiner, into PatentSlice.com’s online tool and instantly generate drawings with relevant part and figure descriptions on the same pages.
Each and every question from the Patent Examiner is addressed in stride. In discussing patentability in this fashion, the biggest challenge lied in identifying the parts in the drawings. Only after that was completed could evaluations be made to compare the features found in references just discovered by the Patent Examiner and my client’s invention. With the help of PatentSlice.com, this was no longer an issue. My attention could be focused on discussing patentability instead of matching the part numbers. After our discussion ended, the Patent Examiner still needed to confirm everything with further searches, however, I knew the Patent Examiner has been quite satisfied that my client’s invention had met the novelty and non-obviousness standards. Within a short time, I could expect a positive result in a responsive action from the Patent Examiner. Within the week, a patent was allowed for my client’s invention. That was the most important 30 minutes in the entire case. Good thing I could accommodate the unexpected call remotely from my office.
About Cheng-Ning Jong
The focus of Mr. Jong’s patent practice before the USPTO is in patent preparation and prosecution, starting from boiling down each client’s invention into its essence to securing the broadest possible claims for my clients based on their commercial goals. Mr. Jong is a strong believer in educating his clients in the patenting process so that he can spur the creation of new concepts and embodiments never considered before. Mr. Jong’s approach often results in patent clients leaving his office with a wealth of knowledge about patenting in general and more specifically in the materials expected of them from his office.
Mr. Jong is a Registered U.S. Patent Agent (Registration No.: 56551) and also a licensed Professional Engineer (Registration No.: 083586) in the state of New York. Mr. Jong is also the founder/owner of PatentSlice.com, an automated service that helps casual patent readers and patent practitioners alike, in more quickly grasping and analyzing the concepts of existing inventions and also your own patent drafts.