Clarity of the Record Training: Improving Clarity and Reasoning in Office Actions Training

The Improving Clarity and Reasoning (ICR) in Office Actions Training program was established to develop and provide training for examiners on effective ways to improve all aspects of the clarity of the prosecution record.

The Office routinely conducts examiner training to keep examiners informed about changes in the law and in technology. In the past, such training was structured to mainly emphasize only the legal or technical subject matter of the training. As part of this program, clarity of the record is now being emphasized as a component of examiner training by sharing best practices for enhancing clarity of the record through the use of pointers for enhancing clarity, form paragraphs, and hands-on workshops. For example, as part of 35 USC 101 training, the Office not only taught the relevant changes in the law, but also included examples on how to write clear rejections as well as tips for responding to arguments.

Details about Training Efforts

The ICR Training Courses provided to examiners are as follows:

  • 35 USC 112(f): Identifying Limitations that Invoke
  • 35 USC 112(f): Making the Record Clear
  • 35 USC 112(f): Broadest Reasonable Interpretation and Definiteness of 35 USC 112(f) Limitations
  • 35 USC 112(f): Evaluating § 112(f) Limitations in Software-Related Claims for Definiteness under 35 USC 112(b)
  • Broadest Reasonable Interpretation (BRI) and the Plain Meaning of Claim Terms
  • Examining Functional Claim Limitations: Focus on Computer/Software-related Claims
  • Examining Claims for Compliance with 35 USC 112(a): Part I - Written Description
  • 35 USC 112(a): Written Description Workshop
  • Examining Claims for Compliance with 35 USC 112(a): Part II – Enablement
  • 35 USC 112(b): Enhancing Clarity By Ensuring That Claims Are Definite Under 35 USC 112(b)
  • 2014 Interim Guidance on Patent Subject Matter Eligibility
  • Abstract Idea Example Workshops I & II
  • Enhancing Clarity By Ensuring Clear Reasoning of Allowance Under 37 CFR 1.104(e) and MPEP 1302.14
  • 35 USC 101: Subject Matter Eligibility Workshop III: Formulating a Rejection and Evaluating the Applicant’s Response
  • 35 USC 112(b): Interpreting Functional Language and Evaluating Claim Boundaries – Workshop
  • Legal Analysis and Writing:  Part I - “Understanding Case Law and the Federal Court System”
  • Legal Analysis and Writing:  Part II - “How to Evaluate and Analyze Legal Arguments Based on Case Law”

Training materials received by examiners on all of the above topics can be found on our examination guidance and training materials webpage or on our training materials on subject matter eligibility webpage. For a short summary of what each ICR Training entails, please review the Improving Clarity and Reasoning in Office Actions (ICR) Training presentation from the Patent Quality Community Symposium, April 27, 2016.  

During fiscal year 2016, the Office started to rely more on small, workshop-style training, than on large, lecture-style training. The Office also started to use small groups of trainers to run the training sessions to improve consistency of content delivery. While these changes are very resource intensive, they were favorably received by examiners and .enhance the effectiveness of our training.

Furthermore, based on an analysis conducted as part of the “Compliance of rejections with 35 USC 101 official guidance” case study, the Office recognized statistically significant improvements in the correctness and clarity of 35 USC 101 rejections following the 35 USC 101 Workshop III training. For more information thereon, see the Case Studies Pilot Program.

In view of the successes of the ICR program, the Office will continue to emphasize clarity of the record as part of future examiner training. The Office will also continue to employ a workshop-style format for future training, where appropriate, and to deliver future training using small groups of highly-trained trainers.

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