A Case For Citing To The Manual Of Patent Examining Procedure

December 10, 2007

in Prosecution Strategy

I recently had a debate with a colleague about whether it is preferable to cite the Manual of Patent Examining Procedure (MPEP) or to court/board decisions in support of a patentability argument. Although this is an open question, in my experience, citing the MPEP has been more effective. Furthermore, almost every practitioner with whom I have ever discussed this topic has seconded this experience.

But why is this so? Legally, court/board decisions should be at least as persuasive as the MPEP, especially when similar fact patterns are present. The reasons for the effectiveness of the MPEP, at least anecdotally, range from the suspicions that Examiners: dislike analyzing case law; believe that almost any decision can be distinguished on the facts; and/or believe that for any decision there is another with a contrary holding.

Without opining on these suspicions, when one stands in the shoes of an Examiner, the reasons for the effectiveness of citing the MPEP become clearer.

First, only a fraction of the PTO’s examining corps are attorneys. Few Examiners have the legal training to comfortably and confidently interpret case law; it is probably a foreign process to many of them. Consequently, many Examiners tend to discount court/board decisions and take the default position that if a decision had merit, the Office would have supplied guidance on its application in the MPEP (or another official publication).

Second, and related to the first point, it can be difficult and time consuming for Examiners to look up and to analyze decisions. With the PTO’s production quotas, this fact should not be ignored. Also, language issues of some of the examining corps may amplify this difficulty.

Third, I suspect that reliance on case law can be a risky proposition for an Examiner, especially with second reviews of allowances. Imagine having to defend an allowance based on an interpretation of case law, especially without corroboration in the MPEP. Reliance on the MPEP, in contrast, is the safest bet for an Examiner looking toward this review. After all, the MPEP describes itself as providing guidance and instructions to Examiners about the prosecution of patent applications. What could be safer?

In view of these practicalities, when you need authority for a position, it may be a good idea to consider looking first to the MPEP. Citing the Office’s own instructions seems to avoid most of the aforementioned complications. That being said, sometimes it may be more appropriate to cite a decision. In these cases, I suggest considering providing the Examiner with an annotated copy of the decision as an attachment to a response.

What do you think? I would like to hear other’s opinions and/or experiences. I am particularly interested in what members of the PTO’s examining corps have to say about this issue (and I suspect that my fellow patent attorneys and agents might be as well).

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© 2007, Michael E. Kondoudis

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

{ 14 comments… read them below or add one }

Babel Boy December 11, 2007 at 5:08 pm

Michael
More often than not I find that the case I want to cite has been cited by the MPEP. Check the MPEP case index, see if the case or it’s predecessor are listed, they will probably point you to the MPEP section you want to cite. Then cite “In re Gartside as per MPEP XXXX” or “MPEP XXX citing In re Gartside” etc.

BTW, I am finding the examiners not the least bit shy about citing KSR!

JD December 11, 2007 at 6:38 pm

Michael,

I agree with you. I very rarely cite case law to the examiner and favor citing the MPEP. Usually, it will go something like this: …according to MPEP whatever, which states [fill in here] (discussing In re Whomever).

Most examiners will not withdraw an objection/rejection based on arguments including case law, but will if you cite the MPEP. And I think examiners regard your argument as weak if you cite to a case, almost as if you’re saying your arguments are just re-treads of arguments somebody else made previously. I actually sort of agree with that. I prefer to argue the claims on the facts, i.e. the differences between the claims and the reference and why it would not have been obvious to combine the applied references. Citing to column and line numbers of the references is more persuasive than some case the examiner’s never read. (Not that they read the references either, but you can hope.)

On the other side, I’ve found that examiners love to cite case law in their OA’s. It’s particularly frustrating as the vast majority of them have no idea what they are doing. Most think the snippets in MPEP 2100 are dispositive of issues that the cases don’t really address. (It’s not really surprising when you consider how ridiculously the PTO “interpreted” Bogese and Symbol Technologies in their wayward effort to limit applicants to 2 continuations. Nobody who’s ever practiced law would have made such ridiculous arguments about those cases as the PTO did. To their credit, they made those ludicrous arguments with straight faces.)

The PTO should really issue a general ban on the use of case law in OA’s, and require the examiner to get approval of somebody in the PTO with a law degree before citing it.

I can dream, can’t I?

Random.Examiner December 12, 2007 at 4:22 am

Michael -

Enjoy the blog, congrats on the new practice. I agree with most of what has been said above (could I be agreeing with John Darling?), but here are my two bits: First to preface, I came to the office after law school, having learned enough (or guessed well enough on the multistate) to pass a bar exam. My thoughts might be skewed in that I’m not a run-of-the mill examiner.

(1) you are correct in that there really isn’t proper time to distill a case to what it really means (law vs. dicta, etc). The MPEP is sitting on every examiner’s shelf and of course, online. Right when I started at the office, I inherited a case where the attorney had repeatedly cited to the MPEP. Doing so got me to the rule, quick and easy in a case that had a lot of issues. Sure enough, based on what my predecessor had done, he was right. Had to send out another action.

(2) At some level, you have to recognize that damn near every case has some negative authority. Thats how companies like West and Lexis make their $. Throwing “In re Whatever” at me doesn’t say much (and thats what alot of attorneys do, see infra). I’m not impressed by that because if you give me 10 minutes with a volume of Shepards Citations, I could find “In re Whoever” to throw back at you.

But if I see “see MPEP 21xx (quoting In re Whatever),” then at least I know the Office has given the case its imprimatur. (How bastardized their interpretation, as JD points out, is another issue.) But then, I might take a look at said section for CYA purposes (i.e., in case the the 7th set of eyes catches something I didn’t).

(3) What ever happened to IRAC? I swear 90% of patent attorneys chucked it in the trash with their crim law texts and the like. The “I” is pretty easy: “Claim 1 is rejected under 35 USC whatever.” Most attorneys can rattle off the “R.” But then we jump straight to “C:” Wherefore Applicant respectfully requests the rejection be withdrawn. Where’s the “A” guys? I’m not gonna do it for you. There are close calls in this business. You get paid to push them in favor of your client.

Festo, argument estoppel, etc. I get it, but at some level there needs to be some dialogue between the applicants and the examiner. (I like a little convincing.) Seeing “IRAC” in a response is actually a breath of fresh air.

Finally, I think (unless I haven’t fully explored every icon on my desktop at work), examiners only have access to the BNA (USPQ) reporters. Maybe we have access to Lexis, but I remember it being a pain in the a– to get logged on and I dropped it. As such, if you want to cite case law, give us a parallel cite to USPQ. Trying to find a pin cite to the federal reporters in USPQ is annoying.

For the record JD, I have not had a case of yours. I am not talking about you. I am only speaking of my experiences, which is what MK wanted, so lets try to keep this informative blog flame free!

JD December 12, 2007 at 2:13 pm

No flames here. And as I’ve said repeatedly, my responses always comply with Rule 3 and I’m very nice. If you want IRAC, you’ll get it from me. Unfortunately, I don’t get much “A” in response. I get a lot of “C” and boilerplate form paragraphs about how the examiner recognizes that hindsight can’t be used to determine obvious and about how references can’t be attacked individually, but I don’t get a lot of “A.” And I get a lot of ignorning of my arguments. Had an examiner use In re Aller against 8 of my claims, spent TWO pages discussing In re Aller, the claims, and why it wasn’t relevant, and yes I did cite MPEP 2144.04. What did I get in response? DEAD SILENCE and a final rejection. There’s way too much of that at the PTO. Way too much.

I agree with your post. When faced with case cites in OA’s, I have actually had the case copied (sometimes right out of the F.2d or USPQ bound books) and included with my response. I’m sure it gets a lot of consideration. :-)

MPEP 2100 is a great addition. Unfortunately, the people who write the MPEP have never practiced law, so they have the same approach to citing case law as the average examiner. “Just cite In re Aller. Everybody knows it’s widely regarded as holding that it’s inherently obvious to optimize everything in the prior art through routine experimentation.” Great.

I return to my suggestion: no citing case law in OA’s unless somebody with a law degree has reviewed it first. We want some “A” too. How about, “In the case of In re Japikse, the claims at issue involved the placement of a switch, which differed from the prior art in the placement of the switch. The court found that as the placement of the switch did not effect the operation of the apparatus, its placement would have been within the level of ordinary skill in the art. Similarly, in the instant application, the difference between claim 1 and Jones is the …” At least with that, I can make an argument that modifying Jones as suggested would affect the operation of the prior art apparatus and the case doesn’t apply (assuming I have a good faith basis for the argument, of course).

Is that so hard? (And I’m not absolutely certain that Japikse is the case I’m thinking of. But you get the point.)

And I’m not sure I’m the only registered practitioner with the initials “JD”, but I’m starting to think I may be the most well known.

Not that I’m seeking any recognition. :-)

And if you do get a case from me, you will be able to confirm that what I’ve posted is true.

Babel Boy December 14, 2007 at 4:59 pm

Along this vein, loosely — does anyone have a solid reply w/ case law as to how to respond to a 103 rejections that says: “D1 combined with D2 and/or D3, and/or D4 . . .”

This is not in the general grounds for rejection paragraph, where the “or” is almost always used, but then the firm combination is stated for each rejected claim. This is the language used to reject each individual claim.

Throw together a few references connected by “and/or” or “either/or” and the permutations start to count up pretty quick. Such a rejection appears to me to be a per se violation of Rule 104 as indefinite, but I’m having trouble finding point-on case law.

JD December 14, 2007 at 8:36 pm

BabelBoy,

Try Ex parte Blanc, 13 USPQ2d 1383 (BPAI 1989) from MPEP 2143.

Not a sermon, just a thought.

JD

Brian December 15, 2007 at 1:25 am

I generally cite to the MPEP instead of case law as well. The one exception is where the examiner is clearly acting in an arbitrary and capricious manner. I will cite Zurko to put him on notice that his or her office action is unacceptable. I will then also cite case law to the extent appropriate, to bring up issues early and ensure that they are preserved for appeal. (A case like that is almost certain to be appealed.)

Babel Boy December 17, 2007 at 4:51 pm

Thanks, JD

MPEP 2142 also cites the Blanc case for the proposition that the examiner can’t just throw a bunch of references at the wall hoping that two will stick to make the combination. Of course, the walls of the examiners’ offices are all covered with Velcro, so everything sticks, according to them.

But I wonder how far I’m going to get with the BPAI on the narrow argument that “either/or” and “and/or” combinations of multiple references are too indefinite to make a record under APA or for purposes of Rule 104.

confused SCOTUS December 19, 2007 at 1:17 am

I question the merit of citing either case law or the MPEP, particularly for substantive issues that may experience change over time. Ask any lawyer seeking to invalidate a patent what s/he likes to see most, and s/he will tell you a wordy prosecution history. If you cite case law or the MPEP, you feed the litigator more opportunities to attack the validity of the patent. Pre-KSR patents that cited pre-KSR cases or MPEP sections is a case in point. Pre-KSR issued patents that cited cases or MPEP sections hammering home the then-status of obviousness law are today exposed to high risks of being invalidated. If, instead, the pre-KSR prosecutor did not cite case law or the MPEP, then there is at least some room to argue today that the facts are unique and cannot be interpreted according to a particular case or MPEP section. In fact, there may be after-patent-issuing case law that more strongly support validity. Prosecutors should not saddle the patent with case law or MPEP sections that face the risk of later being overruled or otherwise bearing negative baggage. A patent must endure 20 years (theoretically) of changes in the law. One cannot predict what those changes may be over 20 years, but one can certainly take actions that minimize the risks of changes by not littering the prosecution file with the then-trend of the case law and MPEP. Of course, some will argue that that is all we have to go by. Yes, but argue the facts in view of the law (keeping in mind future flexibility); do not argue the facts and the law. The facts will not change. The law will, especially with each new case on novelty and nonobviousness. Another point is that I often wonder the worth in citing the MPEP, because examiners do not like to be told what there job there is.

Babel Boy December 21, 2007 at 6:26 pm

I have just come across a very help article by Harry Shubin of Millen White that deals with this question in the context of appeal briefs.

http://www.aipla.org/Content/ContentGroups/Speaker_Papers/Annual_Meeting_Speaker_Papers/200717/Shubin-paper.pdf

Michael Hull January 25, 2008 at 10:02 pm

I have routinely cited MPEP 2142 or 2143 when responding to 103 rejections. Commonly, the examiner’s analysis misses and element or two of the claim and both 2142 and 2143 make it clear that the combination of references must teach every element of the claim. Curiously (make that frustratingly), the new post-KSR guidelines do not cite 2142, 2143 or a requirement that every element must be found in the combination of references. Will MPEP 2142 and 2143 be rewritten, redacted or will they survive itact? Is an argument that the examiner’s hypothetical combination is missing one or more claim elements a good argument? I have yet to see an office action using one of the seven rationales (A)-(G)of the post-KSR guidelines, FR, vol. 72, no. 195, p.57529, left column.

TJM February 27, 2008 at 11:09 pm

Re: Michael Hull’s discovery of what was left out of the new MPEP 2100. It is, in fact, disconcerting to find the requirement that 103 combination rejections must teach or suggest each and every element of the claimed invention missing from the new MPEP 2100. It is equally disconcerting to think that the PTO thought that the KSR court was holding such a departure from legal precedent going back further than the TSM test. In my opinion, the one thing that the practitioner can fall back on, though, is that the KSR Supreme Court came out undeniably and unwaiveringly reaffirming Graham v. John Deere. If you actually go back and read Graham v. John Deere, there are two cases combined in its decision. In both cases, the prior art was acknowledged by the Supreme Court to have specifically disclosed ALL of the limitations of the claimed invention. The majority of the Court’s discussion in the John Deere portion of the opinion dealt with how the patentee’s arguments were based only on the benefits of the invention – benefits which were NOT in the claims. So, the Court ultimately held that the patentee’s arguments were insufficient to overcome the prior art references teaching each claimed limitation. I haven’t actually had a response to this argument/statement yet, but I still believe it has merit.

Anonymous February 7, 2012 at 10:46 pm

I’m an examiner. I’m not an attorney, and don’t pretend that I am, I’m an expert in my art.

I think your analysis is correct, particularly “reliance on case law can be a risky proposition for an Examiner, especially with second reviews of allowances.”

With our production quotas, examining is a difficult job with constant pressure. (If you want us to give your application the attention it deserves, petition the patent office to back on the quotas a bit.) We’re not out to reject your application, the Patent Office is actually in the business of issuing patents. But we’re so overwhelmed by production, especially in light of the fact that there’s an entire crew of QAS’s who are ranked by how many “errors” they find, that we’re A) terrified of allowing something without doing a “thorough” search, and B) don’t ever have time to do a “through” search. It’s a no sum game, for us.

But if you provide us with a well-reasoned argument, based on the MPEP, those QAS “errors” go away.

Please, don’t say I can’t combine references. I can. I have a form paragraph, for that.

Say the rules that I’m required to play by don’t allow that. That get’s the QAS off my back, and saves us both a lot of time.

James K. Poole April 16, 2012 at 6:10 pm

Haven’t had time to read all these responses yet, but it can be helpful to cite MPEP to examiners, especially when they’re off base. When they cite it, one should Shepardize the cases and even check the statutes discussed; I know of at least one section of the MPEP which cites to a now nonexistent section of the statutes. Some examiners shamelessly cite MPEP sections and then defy the letter and spirit of the case law contained therein. For example, I have an examiner and SPE citing MPEP 2111 for “broadest reasonable interpretation” to allege that two well-established (and different) terms of art in polymer science are synonymous. This despite our citing applicable ASTM Standards, a Rule 132 Dec by inventor (a well-qualified expert in his own right), with a select few of the abundant literature refs, plus definitions in spec. Unless one can convince an official up the line to intervene, the only possibility of resolution seems to be an appeal.

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