Avoiding Implications By Silence In A Prosecution History – Part 2

April 22, 2007

in §§102 and 103 Rejections,§112 Rejections,Avoiding Estoppel,Examples of Responses,Practice Suggestions,Prosecution Strategy

This is the second of a two part series about efficient and cost effective ways to avoid potentially critical implications by silence during prosecution of an application.

The first part of this series presented techniques for generating a prosecution history that rebuts an implication that additional patentablity arguments were not believed to be available or meritorious. These techniques protect an Applicant (and the prosecutor) from troublesome implications that can arise when patentability arguments are selectively presented.

Implications by silence, however, may also arguably arise from failures to rebut in the prosecution history implied agreement with an Examiner. For example, if an Applicant argues only that an asserted combination of art does not disclose a claim feature, does that mean that the Applicant agreed with the Examiner that the asserted combination was proper (e.g., that there was the requisite motivation to make the combination)? Maybe not. But why not avoid the risks of such an implication entirely, especially because it is so easy to do?

The following are a few additional opportunities in a prosecution history where convenient and cost-effective techniques to accomplish this objective can be applied.

Responses to Rejections Under § 112

Consider the following example concerning a rejection of a claim under the second paragraph of 35 U.S.C. § 112. Assume that the Examiner has rejected the claim as indefinite. After a thorough review, you conclude that it is a close call but one that may very well be traversed by argument. For strategic/business reasons, however, the applicant opts not to fight the rejection but instead to amend the claim.

An adequate explanation in the remarks about applicant’s claim amendment might be:

Claim 5 stands rejected under the second paragraph of 35 U.S.C. § 112, as indefinite. In response, claim 5 has been amended in view of the Examiner’s comments. Applicant respectfully submits that the amendments to claim 5 traverse this rejection. Accordingly, favorable reconsideration and withdrawal of this rejection are respectfully requested.

A better response, however, might be the following paragraph:

Claim 5 stands rejected under the second paragraph of 35 U.S.C. § 112, as indefinite. By the present Amendment, Applicant has amended claim 5 in view of the Examiner’s comments. Applicant respectfully submits that claim 5 now even more fully satisfies the requirements of the second paragraph of 35 U.S.C. § 112. Accordingly, favorable reconsideration and withdrawal of this rejection are respectfully requested.

I submit that the latter response is superior to the former in several ways. First, the latter example reserves the possible future argument that the Applicant did not agree that rejected claim 5 was definite as it was originally presented. This could be of value, for example, if similar claim constructions are presented in parallel applications. In contrast, I think that it the former response needless makes this future argument more difficult to make. Secondly, it may also be of value if the Applicant presents a similarly constructed claim later in prosecution. If that later added claim is similarly rejected, and the Applicant has a change of heart deciding to traverse the rejection by argument, it is far easier to craft a persuasive patentability argument. Thirdly, it is a polite way to “save the argument” that avoids offending or directly challenging the Examiner, which is almost always in an Applicant’s best interests.

This approach can be applied to other non-art rejections as well as objections, such as objection to the title (e.g., Applicant has amended the title to even more accurately describe the claimed subject matter).

Avoiding an Implication that Applicant Agrees that an Asserted Combination is Proper

One of what I believe to be the very most important arguments to expressly reserve in the prosecution history is a challenge to the propriety of any asserted combination. Litigators have far more time to study art and may find support for a challenge to the propriety of a combination or modification. Staying silent on this point during prosecution can arguably blunt the effectiveness of this later argument. For this reason, when I choose to challenge only the sufficiency of a combination in response to a rejection, it is my usual practice to the expressly reserve any argument about whether the combination is proper. One technique I employ is shown by the following example:

Claim 1 recites, among other features, a widget on a vertical surface.

Without conceding the propriety of the asserted combination, however, Applicant respectfully submits that the asserted combination does not disclose at least the aforementioned feature of claim 1, for at least the following reason.

Patent A discusses an arrangement that includes a smidget 20. (Patent A, Col. 5, lines 1-10; FIG. 1).

The Office Action contends that this smidget meets that aforementioned feature of claim 1. (Office Action, page 4).

A review of Fig. 1 of patent A reveals, however, that the smidget 20 is on a horizontal surface. (Id.). Further, patent A expressly teaches that the smidget 20 must be on a horizontal surface. (Patent A, Col. 5, lines 10-12).

Patent B is cited for its alleged disclosure of various features of claim 1 other than the aforementioned feature. Applicant respectfully submits that Patent B does not add anything to the disclosure of Patent A that would remedy the aforementioned deficiency.

Also, Applicant respectfully submits that one of ordinary skill would not have been motivated to combine patent A with patent B.

Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under 35 U.S.C. § 103 are respectfully requested.

The value added by the techniques may be difficult to measure. After all, it is impossible to see the future. I look at it, however, from a cost/benefit perspective. The cost is at most the time required to type these few extra words. Thus, I submit that almost any potential benefit of these techniques, regardless of how remote, outweigh the cost. Additionally, as a former litigator, I submit that it is always a better practice to try to arm future litigators with as many arguments and/or counterarguments as possible. For this reason, when I have the opportunity to at least imply that the Applicant does not agree with an Examiner, I take it.

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© 2007, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney

{ 1 comment… read it below or add one }

Zinnecker May 18, 2007 at 1:39 pm

First, thanks for taking the time to broadcast your prosecution tips. Patent prosecution could greatly benefit from aspects of an open source development approach.

“Thirdly, it is a polite way to “save the argument”…”

I’m questioning what “argument” is really being saved here. It’s really a record of “lack of agreement”–there’s no hint of any substance of an argument. Why not make an actual (if cursory) argument?

If the reason is:
“…that avoids offending or directly challenging the Examiner, which is almost always in an Applicant’s best interests,” do you have any evidence that this has an affect on prosecution. I’ve often heard this mantra, that you should avoid offending Examiners, and avoid arguing or pointing out errors when the issue is moot (e.g., because you’re amending), but I’ve never had anyone tell me a real cautionary tale. And if you’re really worried, as in the example, of being able to count on defending similar language in future prosecution or litigation, isn’t it worth the risk to have an actual argument in the record?


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