American patent Examiners are professionals trained to apply American patent law in deciding whether to allow or reject applications. The Examiners are trained how to search for appropriate references for considering patentability. The Examiners are expected to meet production requirements in doing their jobs.
Therefore, Examiners are normal people generally doing the best job they can in a limited time. Given unlimited time, they possibly could do a better job, just as any of us could.
Examiners face substantial burdens in writing Office Actions. The Examiners receive shifting guidance on topics like subject matter eligibility. Examiners must choose which of several statutory bases should be used to reject problematic claims. And well-drafted rejections require documentary evidence for the features of every claim, including dependent claims setting forth well-known features using nonstandard terms.
It is not surprising that, after reviewing an imperfect Office Action, skeptical applicants ask me, “Do you agree with the Examiner?” In an idealized, academic setting, the answer is almost always, “no.”
However, the reality is that patent practice is neither idealized nor academic. The Examiner themself typically decide whether they were correct or not. Although Examiners sometimes do reconsider their positions, Examiners often maintain tenuous positions. Applicants confronted with such tenuous frequently have no recourse but to appeal their Examiners.
And so, the question is not whether I agree with the Examiner. The question is whether the Applicant is willing to devote the time and money to appeal the Examiner’s rejection.
If the Applicant is unwilling to appeal, then whether I agree with the Examiner is irrelevant. The better question is in what ways I can agree with the Examiner to move the case forward.