Prosecution Profanity – Words To Avoid In Prosecution – Part 1

May 21, 2007

in Avoiding Estoppel,Examples of Responses,Prosecution Strategy

This is the first of a two-part series on words/phrases that should be used with extreme caution in patent prosecution before the United States Patent Office.

I’ve come across a recent series of interesting discussions on the “Anything Under the Sun Made by Man” blog by Russ Krajec. In the series, Mr. Krajec makes a convincing case against the use of certain terms/phrases that all too often make their way into patent applications. Specifically, Mr. Krajec explains why the terms/phrases “prior art,” “invention,” and “must” should never be used in patent application because they needlessly expose an application to attack and complicate prosecution. This series of discussions can be respectively found here, here, and here.

This series got me thinking about the terms/phrases I often see used in responses to Office Actions that needlessly create estoppel, complicate litigation, and thus lessen the value of a resulting patent. I submit that patent prosecutors should always carefully consider the language that they select, and should very carefully (re)consider any use of the following terms/phrases in particular.

The Invention/Embodiments of the Invention

The focus of examination is on the claims of an application. It is axiomatic then that an Applicant’s focus should also be on the claims. Accordingly, patentability arguments should always focus on why claims, not “the invention,” patentably define over the cited art. (See for example Section 714.04 of the Manual of Patent Examining Procedure). Statements/characterizations about the invention are inapposite, are often ignored by examiners who are focusing on the claims, and can result in significant, needless argument estoppel.

Take the example of the recent Federal Circuit Decision in Pods, Inc. v. Porta Stor et al. (Fed. Cir. 2006-1504 decided April 27, 2007). In that case, the patentee, in attempting to traverse a rejection of a claim through argument, characterized the invention as allowing “the carrier frame to be elevated and positioned at a rectangular-shaped frame with respect to the container, the vehicle and the ground.” This assertion, the Court reasoned, supported the construction of a separate claim that recited only “a carrier frame” to mean a four-sided frame.

As the Pods case illustrates, with a blanket statement about “the invention,” a prosecutor can risk “grafting” limitations onto each and every claim in the application, even claims that were previously allowed or are later presented, since each claim defines “the invention.” Further, even if this estoppel is successfully avoided in later litigation, it will surely cause a complication that could have been avoided. Still further, these explanations tend to gain very little ground during examination, and very often provoke a form paragraph from the examiner explaining that the asserted features are not in the claims.

For these reasons, using the example of the Pods case, IF one entertains presenting a discussion about an invention, a better practice might be the following approach:

Independent claim 1 recites a carrier frame including right and left longitudinal elements [and] having front and rear transverse elements . . .

By at least these claim features, a carrier frame can be elevated and positioned at a rectangular-shaped frame with respect to a container, a vehicle and the ground. As a result, increased utility and durability can be realized.

I submit that the latter approach, focused on claim features instead of “the invention,” more safely presents an advantage by more likely limiting any argument estoppel that may result to only this claim 1.

A final note, ALWAYS be mindful of Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570 (Fed. Cir. 1995) in which the Federal Circuit held that clear assertions made during prosecution, whether or not those assertions were even necessary to secure allowance, may create estoppel.

Reference/References

The word “reference” is a term of art that tends to imply status as prior art, since litigators and, more importantly, federal courts very commonly describe art cited against claims as “prior art” or a “prior art reference.” When given the option, therefore, I prefer not to use the term “reference” when referring to cited art. I submit that a patent prosecutor, as an advocate for an applicant, can be equally as accurate and persuasive during prosecution by using the alternative terms “citation” or “cited art,” while at the same time producing a prosecution history avoids any negative implications that may be associated with the term “reference.” Remember, there is no rule that any item cited against the claims must be called a reference, so why not select the least disadvantageous term?

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© 2007, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

{ 1 comment… read it below or add one }

Zvika Ben-Ari October 16, 2008 at 9:11 am

Mike,
Good stuff. I have learned the lessons you teach in this article, but always good to have a refresher and get another perspective (author). BTW, I use the phrase “cited publication”, when referring to Examiners’ citations.

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