Patentably Defined

© 2008, Michael E. Kondoudis

A colleague passed along the results of a brief survey of some recent Board of Patent Appeals and Interferences (BPAI) decisions in which the BPAI cited KSR and reversed claim rejections. Two aspects of the survey results stood out. Of the 43 reversals identified by the search, 24 were based on a failure of the cited art to meet every feature of a rejected claim while 11 were based on an Examiner’s failure to provide sufficient reasoning for an asserted combination/modification.

This admittedly incomplete survey appears to indicate two things about current appeal practice. First, some Examiners still fail to address each and every claim feature, so continue to argue that asserted combination(s) is/are deficient, when appropriate. Second, challenges to the sufficiency of a proffered rationale to combine/modify appear to still have some bite, despite KSR’s “affirmation” that the proper inquiry for motivation is not limited to the overly rigid teaching suggestion motivation (TSM) test and Leapfrog’s confirmation that “the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not.”

One last point, recent BPAI decisions provide useful guidance on how to effectively argue non-obviousness in light of KSR, and they are available at www.uspto.gov/go/dcom/bpai.

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There is a new website that may be of interest to the patent and trademark prosecutors who read this blog. It is called “USPTOExaminers” and looks to be a forum to discuss individual Examiners at the U.S. Patent and Trademark Office.

The developers of the website describe it as “a website that was developed specifically for intellectual property professionals, such as patent attorneys, patent agents, and trademark attorneys, to provide them with information about a particular Patent Examiner or a Trademark Examining Attorney who is examining a specific patent or trademark application. This website provides such information by forming an online collaborative environment in which members of professional organizations, corporations, and inventors may anonymously pool their experiences and opinions about a Patent Examiner or a Trademark Examining Attorney, including their knowledge of the law and technology, as well as their accessibility.”

You can visit “USPTOExaminers” by following this link.

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

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© 2008, Michael E. Kondoudis

I have received numerous comments, both public and private, about my earlier post on avoiding improper final rejections. In that post, I outlined a practice of advising the Office when a next Office action cannot properly be made final because of a deficiency in a current Office action.

In reading some of the comments, it appears that some nuances of a prosecution strategy might not be entirely clear.

A number of comments advocate resolving the issue by calling the Examiner to request a new Office action. This approach, they say, is cost-effective and obviates the need to advise the Office that finality is precluded.

I do not disagree that this approach should resolve the issue. I do, however, submit that in some circumstances the inclination to call the Examiner could squander what can be a significant tactical advantage.

Think about it. What might you do to rejected claims if you knew that the next Office Action could not properly be made final?

I believe that the best way to explore this issue is by an example. A significant number of the comments concerned what to do when the Office issues an Office action that fails to address a claim. Accordingly, I will use that example.

By way of review, this failure precludes the finality of a next Office action, if that Office action rejects the omitted claim. Also, in general, when the omitted claim is independent and/or of a significantly different scope/statutory class than substantively rejected claims, the omitted claim is less likely to be allowed in a next Office action.

When a next Office action cannot properly be made final if it rejects an omitted claim (and that omitted claim is not likely to be allowed on the next Office action), an Applicant has a rare opportunity to significantly amend the claims or even add new ones, without facing a final Office action in response. Also, the Applicant enjoys the advantage of modifying the presented claims based on the cited art, the Examiner’s application of that art, and the Examiner’s claim construction. Essentially, the Applicant gets “a second bite at the apple” to submit claims that, like originally filed claims, must be examined as a matter of right.

The potential benefits are self-evident.

Secondly, in view of the production quotas Examiner’s must satisfy, this approach might (even if only marginally) help obtain an allowance, since counts are not awarded for successive non-final Office actions.

In sum, calling the Examiner may be the most cost-effective way to resolve a deficient Office action but, unless overall cost and/or a speedy allowance are top priorities, it may be advantageous to consider a substantive response to such an Office action.

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