Patentably Defined

© 2009, Michael E. Kondoudis

The USPTO recently published a Notice to applicants filing applications under the PCT in the United States Receiving Office (RO/US) to exercise care in selecting a competent International Searching Authority (ISA) for claimed subject matter.  The USPTO reminds applicants that:  (1)  the EPO will not act as an ISA/IPEA for applications with one or more business method claims; and (2)  the AU-IPO will not act as an ISA/IPEA for applications with one or more claims drawn to certain fields of technology specified in Annex A of the Arrangement between IP Australia and the United States Patent and Trademark Office, which was published in the USPTO’s Official Gazette at 1337 OG 263.

From the USPTO’s website …

Limited Competency of Certain International Searching
Authorities With Respect to Applications Filed in the USPTO

The USPTO has noticed a significant number of international applications filed in the United States receiving Office (RO/US) under the Patent Cooperation Treaty (PCT) where the applicant has chosen an International Searching Authority (ISA) which is not competent for the subject matter of the claimed invention.  This can result in significant delays in the issuance of the International Search Report and Written Opinion of the International Searching Authority.  When such an application is filed it is forwarded by the RO/US to the ISA selected by applicant.  After processing the application, the ISA will return the application to the RO/US with an indication that it is drawn to subject matter for which the ISA is not competent to act. The RO/US will then notify applicant of such and invite applicant to select a competent ISA.  Once the RO/US receives a new indication from applicant as to a new ISA, the RO/US will forward the application to the newly selected ISA where it will undergo further processing and will eventually receive a search in accordance with Chapter I of the PCT.

Applicants are hereby reminded that certain ISAs have limited their competency for applications filed with the RO/US.  Specifically, the European Patent Office (EPO) will not act as an ISA/IPEA for applications with one or more claims to a business method (citation omitted).  Further, the Australian Patent Office (IP Australia) has declared that it is not competent for applications with one or more claims drawn to subject matter set forth in Annex A of the Arrangement between IP Australia and the United States Patent and Trademark Office (see 1337 OG 263).  To avoid significant processing delays, applicants filing international applications naming either the EPO or IP Australia as the ISA should take care to ensure that the application does not contain any claims for which the selected ISA is not competent.

The relevant portion of Annex A is reproduced below.

Annex A of the Arrangement between IP Australia and the USPTO

Subject matter for which the Australian Patent Office is NOT a competent International Search Authority or International Preliminary Examination Authority for international applications filed with the RO/US by International Patent Classification (8th edition):

A01-AGRICULTURE; FORESTRY; ANIMAL HUSBANDRY; HUNTING; TRAPPING; FISHING, all classes except:  A01H, A01N, A01P(i.e. new plants or processes of obtaining them thereof, Preservation of human, animals bodies or plants, biocidal, pest repellent, pest attractant or plant growth regulatory activity of chemical compounds or preparations)
A21-BAKING; EQUIPMENT FOR MAKING OR PROCESSING DOUGHS; DOUGHS FOR BAKING all classes except:  A21D, (i.e. Treatment of flour or dough for baking)
A22-BUTCHERING; MEAT TREATMENT; PROCESSING POULTRY OR FISH
A23N-MACHINES OR APPARATUS FOR TREATING HARVESTED FRUIT, VEGETABLES OR FLOWER BULBS IN BULK
A23P-SHAPING OR WORKING OF FOODSTUFFS
A24-TOBACCO; CIGARS; CIGARETTES
A41-47 PERSONAL AND DOMESTIC ARTICLES (eg. headgear (A42), footwear(A43),
haberdashery (A44))
A61-MEDICAL OR VETERINARY SCIENCE, all classes except:  A61K, A61L, A61P and A61Q (i.e. preparations for medical, dental or toilet purposes, methods, apparatus for sterilising materials or objects, chemical aspects of bandages, dressings, absorbent pads, or surgical articles, therapeutic activity of chemical compounds, use of cosmetics or similar toilet preparations)
A62-LIFE-SAVING all classes except:  A62D (i.e. chemical means for extinguishing fires, processes for making harmful chemical substances harmless, or less harmful, by effecting a chemical change, composition of materials for coverings or clothing for protecting against harmful chemical agents; composition of materials for transparent parts of gas-masks, respirators, breathing bags or helmets; composition of chemical materials for use in breathing apparatus)
A63-SPORTS; GAMES; AMUSEMENTS

B06-GENERATING OR TRANSMITTING MECHANICAL VIBRATIONS IN GENERAL
B21, B23-B27 all except: B23K (i.e. soldering or unsoldering; welding; cladding or plating by soldering or welding; cutting by applying heat locally, e.g. flame cutting; working by laser beam)
B31-MAKING PAPER ARTICLE WORKING PAPER
B60-B68 all except: B60L, B60M and B60Q (i.e. electric equipment or propulsion of electrically-propelled vehicles; magnetic suspension or levitation for vehicles; electrodynamic brake systems for vehicles, in general, power supply lines, or devices along rails, for electrically-propelled vehicles, arrangement of signalling or lighting devices, the mounting or supporting thereof or circuits therefor, for vehicles in general)

D01-D07 Textiles all except:  D06L, D06M, D06N,  D06P, D06Q (i.e. bleaching, treatment of fabrics, dyeing or printing textiles, decorating textiles)

E01-E06 FIXED CONSTRUCTION
E21-EARTH OR ROCK DRILLING; MINING

F01-F04 MACHINES
F15-F17 ENGINEERING ELEMENTS, ACTUATORS, STORAGE OR DISTRIBUTION OF GASES OR LIQUIDS
F41-F42 WEAPONS, AMMUNITION

G04-HOR0LOGY
GO6-COMPUTING; Calculating; Counting
G10-MUSICAL INSTRUMENTS
G11-INFORMATION STORAGE

The UPSTO’s announcement can be read here.

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

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© 2009, Michael E. Kondoudis

Gene Quinn of IPWATCHDOG.COM has a troubling an interesting post about the USPTO from the inside.  For anyone curious as to why the allowance rate has dropped below 50% (it is presently at 42%), and why the quality of examination has declined so much in recent years, I recommend taking a few minutes to read Mr. Quinn’s post entitled “Perspective of an Anonymous Patent Examiner“.  A few nuggets from the anonymous Examiner:

 [The USPTO’s] “reject, reject, reject now” policy is encouraged by management’s policy of issuing a written warning on an examiner’s permanent file for allowance error percentage above 10%.

Additionally, there is a lack of motivation to get cases allowed, because there is no incentive for the examiner to do the extra work required to arrive at claim language which can be allowed.

Over the years, I too have heard many of the same views from multiple Examiners.  It is little wonder why morale at the USPTO is so low.  I leave you with Mr. Quinn’s final question from his post, which I second:

With so many Czars and hundreds of billions of dollars being thrown around Washington, DC, can’t we get just a little attention at the agency that is tasked with promoting the progress of science and useful arts?  I don’t think that is too much to ask for, is it?

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

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© 2009, Michael E. Kondoudis

This post is the first of a two-part series on the enablement requirement. This first installment discusses some of the fundamentals of the requirement, relevant law, and the standards for compliance. The second installment will provide examples of responses to enablement rejections.

The Basis for the Enablement Requirement

The enablement requirement arises from the first paragraph of 35 U.S.C. § 112, which states in relevant part:

[t]he specification shall contain a written description of the invention, and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . .

The purpose of the enablement requirement is to ensure that patented inventions are communicated to the public in a meaningful way.

Fundamentals of the Enablement Requirement

1.    The USPTO’s guidelines for examination of patent applications for compliance with the enablement requirement are found in Section 2164 of the MPEP. This should be an Applicant’s primary resource for authority when articulating responses to enablement rejections.

2.      All questions of enablement are evaluated against claimed subject matter. (MPEP 2164.08).

3.     The test for enablement is whether one of ordinary skill would need to engage in undue experimentation to practice the claimed invention. (MPEP 2164.01).

4.    Whether experimentation is “undue” is determined based on the following eight Wands factors:

1. Breadth of the claims;
2. Nature of the invention;
3. State of the prior art;
4. Level of ordinary skill in the art;
5. Predictability of the art;
6. Amount of direction provided in the specification;
7. Any working examples; and
8. Quantity of experimentation needed relative to the disclosure.

(MPEP 2164.01(a), citing In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)).

5.  A proper analysis of whether any experimentation is undue requires an analysis of all of the Wands factors.  (MPEP 2164.01(a)).  It is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others.  (Id.).

6.  The amount of guidance or direction needed to satisfy the enablement requirement is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. (MPEP 2164.03).  Thus, the question of enablement is one of predictability in view of what is known in the art.

Additional Points

1.  The fact that experimentation may be complex does not necessarily make it undue, if the art typically engages in such experimentation.  (MPEP 2164.01).

2.   A patent need not teach, and preferably omits, what is well known in the art.  (MPEP 2164.01).  Further, an Applicant need not “enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect.” (MPEP 2164).

3.  Any part of the specification can support an enabling disclosure, even a background section that discusses, or even disparages, the subject matter disclosed therein. (MPEP 2164.01, citing Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 77 USPQ2d 1041 (Fed. Cir. 2005)(discussion of problems with a prior art feature does not mean that one of ordinary skill in the art would not know how to make and use this feature)).

4.   The specification need not contain an example if the invention is otherwise disclosed in such manner that one skilled in the art will be able to practice it without undue experimentation.  (MPEP 2164.02).

5.  As long as the specification discloses at least one method for making and using the claimed invention that bears a reasonable correlation to the entire scope of the claim, then the enablement requirement of 35 U.S.C. 112 is satisfied.  (MPEP 2164.01(b)).

6.   Claims must be enabled as of their filing date.  (MPEP 2164.05(a)).

7.    Enablement is judged from the perspective of an ordinarily skilled artisan.  (MPEP 2164.05(b)).

The Office’s Burden

1. It is always incumbent on an Examiner to fully develop the reasons for a technical rejection (enablement, written description, etc.).

• Section 706.03 of the MPEP warns Examiners that “[w]here a major technical rejection is proper (e.g., lack of proper disclosure, undue breadth, utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion coupled with some stereotyped expression.” Thus, mere conclusory statements are insufficient to support a rejection under Section 112. Consequently, the Office must arguably provide a reasonable basis to reject a claim for failing to satisfy the enablement requirement, and this requires “a full development” of the reasons for the rejection.

• This obligation to establish a prima facie case is affirmed by the MPEP in its discussions of each requirement of the first paragraph of 35 U.S.C. § 112. (See, e.g., MPEP § 2163 (III)(A) (written description); MPEP § 2164.04 (enablement)).  A prima facie case requires a reasonable basis to challenge the adequacy of the written description. (MPEP § 2164.04).

• In accordance with the principles of compact prosecution, if an enablement rejection is appropriate, the first Office action on the merits should present the best case with all the relevant reasons, issues, and evidence so that all such rejections can be withdrawn if applicant provides appropriate convincing arguments and/or evidence in rebuttal. The principles of compact prosecution also dictate that if an enablement rejection is appropriate and the examiner recognizes limitations that would render the claims enabled, the examiner should note such limitations to applicant as early in the prosecution as possible.  (MPEP 2164.04).

2.   An Examiner should always look for enabled, allowable subject matter and communicate to applicant what that subject matter is at the earliest point possible in the prosecution of the application.  (MPEP 2164.04).  Thus, if a rejection is made based on the view that the enablement is not commensurate in scope with the claim, the examiner should identify the subject matter that is considered to be enabled.  (MPEP 2164.08).

3.  The Examiner’s analysis must consider all the evidence related to each of these factors, and any conclusion of nonenablement must be based on the evidence as a whole.  (MPEP 2164.01(a)).

4.    Only after the Examiner has weighed all the evidence and established a reasonable basis to question the enablement provided for the claimed invention, does the burden fall on applicant to present persuasive arguments, supported by suitable proofs where necessary, that one skilled in the art would be able to make and use the claimed invention using the application as a guide.  (MPEP 2164.05).  The evidence provided by applicant need not be conclusive but merely convincing to one skilled in the art. (Id.).

5. The MPEP instructs Examiners that they must assume compliance with the enablement requirement when an application includes a teaching of how to make and use invention “in terms which correspond in scope to the claims.”  This mandate may be only ignored when there is a basis to doubt the objective truth of the teaching.   (MPEP 2164.04).

So, unless a rejection articulates “evidence or some technical reasoning” that either (i) an enabling teaching does not correspond to the claims or (ii) a reason to doubt the objective truth of such a teaching, the mere presence of a teaching requires that the Office assume that this requirement is satisfied.

Coming Soon in Part II - Examples of Responses to Enablement Rejections

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

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