This is the second of a two-part series on words/phrases that should be used with extreme caution in patent prosecution before the United States Patent Office.
It is my belief that a prosecution history that avoids use of the term “limitation” when referring to a claim feature is of greater value in litigation than one in which a prosecutor has used this term. Based on my experience, for some reason, judges and juries seem to attach increased significance to the word “limitation” in legal arguments; perhaps it is because the very word “limitation” has a narrowing connotation that makes it easier for them to adopt a narrower claim construction. For this reason, when I have the option, I prefer not to use the term “limitation,” regardless of how the Examiner characterizes claim elements. Instead, I submit that a better choice is to use the term “feature,” a term that is rather benign and equally as accurate as “limitation.” So, for example, I might write:
The Office Action contends that the widget of the Smith patent meets the aforementioned feature of independent claim 1.
* * * * *
For at least these reasons, the Smith patent cannot teach at least the feature of independent claim 1.
Applicant’s Admitted Prior Art (AAPA)
Many applications, not incorrectly or improperly, discuss known art when explaining the need for the solution provided by a claimed invention. Typically, these discussions, located in the background section of the application, are fair game to apply against the claims of the application. And, when cited by an Examiner, these discussions are commonly characterized as “Applicant’s Admitted Prior Art (AAPA).”
Even if this characterization by the Examiner is not incorrect, a practitioner, as an advocate for an applicant, can produce a far more valuable prosecution history by using a more benign characterization of any such discussion. Like the term “limitation,” based on my experience, for some reason, judges and juries seem to attach increased significance to the word “admitted.” So, when possible, I usually characterize art discussed in an application as “conventional.” Thus, for example, I may write:
Claim 1 stands rejected under 35 U.S.C. 102 as anticipated by the widget discussed in the background section of Applicant’s disclosure (hereinafter “the conventional widget”).
* * * * *
The Office Action contends that the conventional widget includes the aforementioned feature of independent claim 1.
There are two schools of thought about referring to “the Examiner” in communications to the patent office. One says it is a better practice to not make an Applicant’s arguments personal by personally challenging an Examiner’s positions. The other school says it is acceptable. I subscribe to the former school because I do not believe that a patentability argument will be any more effective when it is made personal. In fact, if there is any effect of making a response personal, I submit that it would most likely be detrimental. So, when I have the option, I choose to use alternative sentence/argument constructions that do not require reference to “the Examiner,” such as “the Office Action” or “the Office.” So, for example, I may write:
The Office Action rejects claim 1 as anticipated by …
The Office Action states …
The Office contends …
Of course, every rule has an exception. When thanking the Examiner or when an Examiner has taken the time to suggest a solution to a rejection or objection, I submit that it can only be advantageous to acknowledge this effort. In doing so, I may write:
The Office Action objected to claim 5 on formal grounds. In response, Applicant has amended this claim in the manner kindly suggested by the Examiner.
The Office Action objected to paragraph  of the Specification for an informality. In response, Applicant has amended this paragraph to improve its idiomatic English form in view of the Examiner’s comments.
It is my belief that use of the phrase “prior art” in prosecution yields a less valuable prosecution history than one which avoids use of this phrase. The primary reason is that the phrase “prior art” is a phrase of art that arguably constitutes an admission of the status of asserted art as prior art, undermining any later argument to the contrary. Thus, when the option is available, I use the alternative phrases “cited art” or “asserted art.” This phrase is equally as accurate and persuasive, but without the potential liabilities associated with the use of the phrase “prior art.” As is the case with the term “reference,” there is no rule that asserted art must be called “prior art,” so why not select the least disadvantageous alternative term?
© 2007, Michael E. Kondoudis
The Law Office of Michael E. Kondoudis
DC Patent Attorney