BTW, here I DO agree with JD’s analysis as to how to properly rebut the 112, 1, written desc. rej. Just point out where the elements are described in the manner claimed.

thanks,

LL

One thing that should be considered is the 2007 case of Hyatt v. Dudas, involving “legendary” inventor Gilbert Hyatt.

The Fed. Cir. basically ruled that the examiner can force an applicant to point out where in the spec a particular claim, or claim feature, is supported. That is all the examiner has to do: challenge the applicant. And the burden will be shifted to applicant.

However, my reading of Hyatt (and I’ll admit I haven’t read it very recently, but I have read it a couple times, but sometimes it takes more readings for things to sink in) is that the applicant only has to point out “where” the written description support can be found in the spec. Applicant does not have to explain “how” the claim is supported. Of course, explaining “where” the support is may not always be that different from explaining “how” it is supported.

Once the applicant explains “where” it is, my reading of Hyatt is that the applicant has successfully shifted the burden back to the examiner. But we’ll see.

I’m not sure if Hyatt v. Dudas has made it into the latest version of the MPEP (I don’t have a paper copy of the latest version, and scrolling through pdf’s on a monitor is so unsatisfying), but I’m sure it will make its way in there eventually. And I’m sure many examiners will latch onto it pretty quick.

Mr. Hyatt was clearly tilting at windmills and did all of us in the patent bar a disservice. Sometimes it’s better to just comply.

Pick your battles wisely.

JD

Thank you for your compliment. I am glad you find my blog of interest.

To answer your questions: no and no.

Responses are not like IRAC essays, although that format is a useful guide when presenting a technical or legal argument. Essays explore every aspect of a subject an author can think of. The art or patent prosecution is the opposite. That is, to be effective without damaging the case by saying or implying things that will limit the claims in future litigation and/or licensing. This is where knowledge of the law, tactical experience, and mentoring come into play, and where pro se applicants are at an EXTREME disadvantage. A skilled prosecutor handles a response (and the Examiner) with great care and respect. Anyone can get an application allowed. But, the scope of the protection (and thus value) is measured by the allowed claims and what was said about them during prosecution. So, rather than blindly adhering to any one form like IRAC, it is important to stay flexible and to employ an appropriate strategy to effectively and efficiently communicate what an applicant wants to communicate AND NO MORE.

Patent prosecution is not form-based work. The examples I provide are road maps or starting points. Every response is different because every application is unique in content and the way it is examined. Looking at the examples on my blog as form paragraphs ignores the dimensions of strategy behind them. These dimensions are the sum of my experience and that of numerous elder prosecutors and litigators. A perceptive prosecutor should be able to extrapolate from the strategies I explore and apply the underlying principles on which they are based to other situations, analogous or not.