Chapter §11.11 Sample Office Action and Applicant's Response

• Jurisdiction: United States

§11.11 Sample Office Action and Applicant's Response

This subsection illustrates some basic mechanics of U.S. patent prosecution with excerpts from the prosecution file history of an actual patent.³⁴⁹ The prosecution history summarized below is that of U.S. Patent No. 6,412,402 for an "Edge Making Baking Pan," which is reproduced in full in the next subsection.³⁵⁰ The '402 patent issued on July 2, 2002 to Matthew L. Griffin, then of Lexington, Kentucky, and was apparently prosecuted pro se. Figure 11-3 reproduces the first page of the Griffin '402 patent.

FIGURE 11-3. First Page of U.S. Patent No. 6,412,402

The Griffin patent is directed to an improved one-piece pan for baking brownies or other foodstuffs (e.g., lasagna). Griffin's invention modifies a conventional brownie pan by incorporating internal raised crests or humps (identified by reference numeral 10 in Figure 11-3). When batter is baked in the Griffin pan, the resulting brownies have edges on at least two sides of every piece. The pan produces chewy brownies with a maximum amount of "crust" or edge.³⁵¹

Griffin first filed a provisional application, Serial No. 60/158,770, on October 12, 1999. Less than a year later on October 10, 2000, Griffin filed a corresponding nonprovisional application, Serial No. 09/685,636 ('636 application). Atypically, the '636 application contained only a single claim. As is typical in patent prosecution practice, the claim as first submitted to the USPTO was relatively broad in scope; it also suffered from indefiniteness. Claim 1 as filed in Griffin's '636 application recited

1. A kitchenware baking pan for increasing the edge linear measure of the goods baked within said article comprising a baking pan of predetermined material[,] said baking pan having a baking surface[,] said baking surface having raised crests that are substantially tall enough to peak over baked good batter surface, whereby increasing the number of edges of the goods baked within the pan.

In the first office action, the USPTO examiner (from Art Unit 1761, which examines applications in U.S. Class 99, "Food and Beverage: Apparatus") rejected claim 1 as anticipated under 35 U.S.C. §102(b) (2006).³⁵² The examiner took the position that each feature of the Griffin application's claim 1 was described in a single prior art patent issued to one Saleeba in 1984. The Saleeba patent disclosed a cake pan with modular inserts to form cakes baked in the shape of numbers or initials.³⁵³ Figure 11-4 is the first page of the Saleeba patent.

FIGURE 11-4. Prior Art (Saleeba)

The USPTO examiner's action further explained the reasoning behind the anticipation rejection. The action stated:³⁵⁴

FIGURE 11-5. Excerpt of First Office Action in Griffin Application's Prosecution

Claim 1 is rejected under 35 U.S.C. 102(b)

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