How To Use The U.S. Patent Office’s Policy Of “Compact” Prosecution To Your Advantage

June 18, 2007

in Examples of Responses,Practice Suggestions,Prosecution Strategy,The MPEP

The Policy of “Compact” Prosecution

Patent prosecution before the U.S. Patent Office is conducted under a policy of “compact” prosecution. Under this policy, prosecution of an application is generally designed to conclude with the Examiner’s consideration of one response to one non-final Office Action. That is, a second Office Action, responding to an applicant’s reply to a first Office Action, is usually final, unless an applicant places the application in condition for allowance. Stated goals of this policy of “compact” prosecution are to provide applicants with prompt and complete examination of their applications. To achieve these goals, the policy imposes specific obligations on Examiners. As the Office itself has explained, “[t]he Office’s policy of compact prosecution requires that both examiners and applicants provide the information necessary to raise and resolve the issues related to patentability expeditiously.” (Official Gazette of 07 November 2003).

The Office’s Obligations

A first Office Action on the merits should ordinarily identify every issue that stands between the applicant and allowance of the application. (See The Manual of Patent Examining Procedure (MPEP) §707.07(g)). And, the Office Action should do so by presenting the best case against patentability. (See, for example, MPEP §§2164.04 and 2106II). In theory, this provides an applicant with the opportunity to respond to each issue so that, if each issue is successfully rebutted or otherwise addressed, the application would be condition for allowance. Conversely, if the applicant not successful, the application should be in condition for appeal. A failure to provide the best case such that a new rejection, new art, and/or expanded arguments are required in a subsequent Office Action generally precludes the finality of that subsequent Office Action. (See MPEP §706.07(a)). In practice, this prevents piecemeal prosecution of the application, which the MPEP instructs should be avoided. (MPEP §707.07(g)).

The obligations imposed on Examiners by the U.S. Patent Office’s policy of compact prosecution have important practical ramifications. Firstly, in each Office Action, each claim should be reviewed for compliance with every statutory requirement for patentability, even if one or more claims are found to be deficient with respect to some statutory requirement. Additionally, whenever practicable, an Office Action should indicate how rejections may be overcome and how objections and informalities may be resolved. The rationale is that a failure to follow this approach can lead to unnecessary delays in the prosecution of the application. (See, for example, MPEP §2106II).

These obligations can be of strategic value in prosecution and should not be discounted. The following are just a few examples of ways an applicant may use them.

Examples of Using the Policy of Compact Prosecution

1. The Office Action merely asserts that claims are not enabled

* * * * *

Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under the first paragraph of 35 U.S.C. §112 are respectfully requested.

In the event that the Office maintains this enablement rejection, Applicant respectfully requests, in accordance with the principles of compact prosecution, that the Office articulate, one the record and with specificity sufficient to support a prima facie case of non-enablement, the factual basis on which it is alleged that it would be beyond the level of ordinary skill in the widget art to make and use the claimed invention without undue experimentation. (MPEP §2164.01).

2. The Office Action applies the cited art only against the independent claims

Lastly, it is noted that the Office Action fails to specifically address even the expressly recited features of the pending dependent claims. Under the Office’s policy of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. (MPEP §707.07(g)). It is submitted that the present application is not sufficiently informal, does not present an undue multiplicity of claims, or exhibit a misjoinder of inventions, so as to reasonably preclude a complete action on the merits. Thus, it is submitted that the Office’s failure constitutes a failure to expeditiously provide the information necessary to resolve issues related to patentability that prevents the Applicant from, for example, presenting appropriate patentability arguments and/or rebuttal evidence. (See The Official Gazette Notice of November 7, 2003). Additionally, it is submitted that the Office’s failure needlessly encourages piecemeal prosecution, which is to be avoided as much as possible. (MPEP §707.07(g)). Accordingly, in the event that the Office maintains the rejection of any of the dependent claims, Applicant respectfully requests, in the interests of compact prosecution, that the Office apply art against each feature of each rejected dependent claim, on the record, and with specificity sufficient to support a prima facie case of anticipation (or obviousness).

3. The Office Action makes only a general allegation that a claim feature is taught (or suggested) by cited art

An Office Action contends that a claim feature is taught by a patent to Smith but does not identify where/how the feature is taught. And, a careful review of that patent, however, reveals no such teaching. An appropriate response might be:

The Office Action contends that Smith teaches the aforementioned feature of “a widget” of independent claim 1. (Office Action, page 3). This contention is respectfully traversed.

Initially, it is noted that the Office has not identified where in Smith an alleged anticipatory teaching is to be found. Additionally, FIG. 1 of Smith, cited by the Office Action in support of the contentions that Smith teaches the features that immediately precede and follow the subject feature of “a widget,” as well as the written disclosure associated with that FIG. 1, are silent as to the subject feature. Still further, Applicant has carefully reviewed the remainder of patent to Smith, and finds no teaching of “a widget.” Thus, for at least this reason, Smith cannot anticipate independent claim 1.

Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under 35 U.S.C. §102 are respectfully requested.

In the event that the Office maintains the rejection of independent claim 1 under 35 U.S.C. §102, Applicant respectfully requests that the Office, in the interests of compact prosecution, identify on the record and with specificity sufficient to support a prima facie case of anticipation, where in the Smith patent the subject feature of independent claim 1 of “a widget” is alleged to be taught.

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© 2007, Michael E. Kondoudis

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

{ 2 comments… read them below or add one }

Jeff Lindsay September 10, 2007 at 1:34 am

Very valuable post. Thanks!

Do you think that KSR will complicate the issues on #3 above? Will the Examiner simply say, for example, that Smith might not explicitly teach it, but Smith in light of common sense makes is obvious. So we get a 103 rejection instead of 102 – and a final office action. We’ve seen problems of this nature before KSR, so I don’t see things improving.

mike September 13, 2007 at 11:44 am

Thank you for the compliment and for taking the time to ask your question.

The short answer is yes, the KSR decision will complicate the issues and will not improve the problems you describe. But, the principles discussed in the post still apply post-KSR.

The KSR decision certainly makes it easier for an Examiner to make a 103 rejection based on “common sense” or that a modification would have been “obvious to try.” The KSR decision, however, also emphasizes (at least 4 times as I recall) that the rationale for the necessary modification/combination must be explicitly stated on the record. So, if the Examiner is making only a general allegation that a common sense modification of Smith suggests a claim feature, the very decision that authorizes this type of rejection also renders the rejection deficient as a matter of law.

And, the failure to make out a prima facie case precludes finality of the next Office Action because the rejection would not be based on a claim amendment or information in an IDS. See MPEP 706.07. The argument in support of this preclusion may include the following:

MPEP 2142, which provides that: (i) the Examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness; and (ii) if the Examiner does not produce a prima facie case, the Applicant is under no obligation to submit evidence of nonobviousness.

MPEP 2143.01(III), which provides that the mere fact that a modification can be made is legally insufficient to establish a prima facie case of obviousness.

In an alternative circumstance, if the Examiner makes a deficient 102 rejection and then, in response to a patentability argument based on the absence of a prima facie case, makes a 103 in the next Office Action, that next action likewise cannot properly be made final because the rejection would not be based on a claim amendment or information in an IDS.

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