Patentably Defined

© 2010, Michael E. Kondoudis

It is almost always in an Applicant’s best interest to maintain the best working relationship possible with an Examiner.   After all, a happy Examiner is more likely to be a helpful Examiner.  Also, despite the high turnover at the USPTO, you may very well be working with an Examiner again.  So, staying on an Examiner’s “good side” is often good business.

There are many ways to get on the bad side of an Examiner.  Some ways are obvious, while others may not be.  An exhaustive list is impossible because just like every application, every Examiner is different.  Nonetheless, from my many discussions with Examiners over the years, here are five sure-fire ways to get on your Examiner’s bad side.

 The List

#5 - File multiple after final papers. 

Remember - Examiners don’t get production credit for issuing Advisory Actions.

#4 - Present only a general argument with only generic citations to several pieces of art, without an explanation as to how the art supports the argument

Comment – It appears to me that leaving the grunt work to an Examiner is both unfair and a recipe for a poor Office action in response.  Besides, specific citations of evidence tend to make an argument more persuasive.   Also, keep in mind the requirements of 37 CFR 1.111(b):

In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.

Moreover, general arguments do not help a pre-appeal request for review because an Applicant cannot direct the panel back to the record when that record lacks specificity.

#3 - Submit a needlessly lengthy response inflated with numerous boilerplate paragraphs

Comment - No examiner needs a legal primer on the law of anticipation.  Responses with paragraph after paragraph of boilerplate explanations of §§ 102 and/or 103 tend to lack clarity and can pose a challenge to even the most interested reader.   Examiners are human and their natural inclination is to skip such paragraphs.  This means that they may miss relevant, persuasive arguments, if they are embedded in or near these paragraphs.  This also means that an Applicant is wasting resources writing paragraphs that will not be read by the Examiner. 

Here, I would suggest taking a look at my earlier blog post on this subject.

#2 - Use uncommon terminology when there

are perfectly good and commonly acceptable terms of art

Comment - Under MPEP § 2111.01(IV) an applicant is entitled to be his or her own lexicographer.  But, when an applicant chooses not to characterize an invention in terms that are consistent with commonly used and familiar terminology, he or she potentially impedes the examination of the application.  For example, uncommon terminology makes an Examiner’s searching more difficult (i.e., time consuming).  With limited time to examine an application, why force an Examiner to spend more time on the art search to the potential detriment of the Office action?

#1 - Attempting to bully an Examiner at an interview

With good fortune, you will be working in the patent profession for many years to come.  With some misfortune, you will be back before that Examiner you just tried to bully.  Enough said.

Honorable Mentions

1.  Asserting that a rejection is somehow incorrect/deficient because claim features you just amended or added were not addressed in the rejections and/or are not found in the art.  It seems both illogical and insulting to assert error based on claim features that were not present when the rejection was made.  Instead, consider the following approach:

Without conceding the propriety of the Office’s characterization of the Smith widget, Applicant respectfully submits that Smith cannot teach the widget of claim 1, as presently amended.

2.   Responding to a rejection by adding more claims with different combinations of previously presented limitations just to see if the new claims might be patentable, especially when (1) the original claims are left unchanged and/or (2) the applicant has argued that a rejection is traversed because the previously presented claims define over the cited art.

3.   Reaching an agreement during an interview and then doing something completely different in the next response, without any explanation at all. 

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

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© 2009, Michael E. Kondoudis

In my earlier post in this series, I discussed a few sections of the MPEP that I have found to be useful in some specific circumstances.  This post discusses a few more.

Some Help For When Patentability Arguments Are Ignored

We have all received Office actions in which the Office seems to have ignored patentability arguments.  In these situations, take a look at the following sections of the MPEP:

707.07(f) Answer All Material Traversed
In order to provide a complete application file history and to enhance the clarity of the prosecution history record, an examiner must provide clear explanations of all actions taken by the examiner during prosecution of an application….Where the applicant traverses any rejection, the examiner should, if he or she repeats the rejection, take note of the applicant’s argument and answer the substance of it.

706 Rejection of Claims
After the application has been read and the claimed invention understood, a prior art search for the claimed invention is made. With the results of the prior art search, including any references provided by the applicant, the patent application should be reviewed and analyzed in conjunction with the state of the prior art to determine whether the claims define a useful, novel, nonobvious, and enabled invention that has been clearly described in the specification. The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity. The examiner then reviews all the evidence, including arguments and evidence responsive to any rejection, before issuing the next Office action. Where the examiner determines that information reasonably necessary for the examination should be required from the applicant under 37 CFR  1.105, such a requirement should generally be made either prior to or with the first Office action on the merits and should follow the procedures in MPEP §   704.10 et seq.

*****

(emphasis added).

Some Help When There Appears To Be A Policy of Rejecting All Claims

I have been asked on more than one occasion to offer suggestions on how to respond to Examiners who appear to simply refuse to allow claims.  This happens from time to time in various art groups, for a variety of reasons.  While there is no “silver bullet” so to speak, the MPEP does provide some help.

706 Rejection of Claims

*****
Although this part of the Manual explains the procedure in rejecting claims, the examiner should never overlook the importance of his or her role in allowing claims which properly define the invention.

Some Help For When Office Actions Do Not Apply Cited Art

For any number of reasons, some Office actions fail to apply cited art against the claims, except to say that the cited patent teaches or suggests every feature of the claims.  In these situations, take a look at 37 CFR 1.104(c)(2), which is replicated in § 707 of the MPEP:

707 Examiner’s Letter or Action

*****
(2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.

(emphasis added).

Some Help for Pro Se Applications

For all of you inventors out there prosecuting your own cases, keep the following section of the MPEP in mind:

707.07(j)(I) State When Claims Are Allowable

I.    INVENTOR FILED APPLICATIONS
When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.

This practice will expedite prosecution and offer a service to individual inventors not represented by a registered patent attorney or agent. Although this practice may be desirable and is permissible in any case deemed appropriate by the examiner, it will be expected to be applied in all cases where it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications.

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

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The USPTO has unveiled a series of proposals that would bring significant change to the examiner “count system” – the methodology for determining the time a patent examiner has to complete a patent examination and how much credit is given for each stage of an examination. The proposals were developed by a task force comprised of senior USPTO patent managers and representatives of the Patent Office Professional Association (POPA), the union that represents patent examiners.

The proposed changes would be the most significant in more than 30 years. The last revision to the count system was in 1976.

According to the USPTO, the proposals provide the following:

• Improved working conditions:  While the proposal increases the time examiners have overall, it provides incentives to encourage examiners to do a high-quality first action, and shifts resources from a focus on examiner recertification to front-end quality improvements. This change in incentives will ultimately encourage examiners to dispose of applications more quickly.
• More time for examiners:  The proposed changes will give examiners more time overall, more time for a first action on the merits, and time for examiner-initiated interviews, while decreasing credits on requests for continued examination (RCEs)* and providing consistent credits for transferred or inherited amendments.
• Process changes:  These changes will increase work credit certainty for examiners, increase fairness to applicants, and balance the load on IT systems.

The USPTO’s press release on the proposed changes can be found here.

The USPTO’s full proposal can be found here.

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

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© 2009, Michael E. Kondoudis

Post Bilski, only methods “tied to a particular machine or apparatus” or that “transform a particular article into a different state or thing” remain patent-eligible.  One option to satisfy this “machine-or-transformation test” is to define a method so that it is tied to a device.

An efficient way to accomplish this is to tie a single operation of the claimed method to a device.  And, according to the BPAI, in the case of a computerized method, this may be accomplished merely by reciting the output of a solution from the system.  That’s right.  In Ex Parte Dickerson, a final decision issued by the Board earlier this month, a § 101 rejection of the following claim was reversed:

23. A computerized method for identifying a solution to address exposed performance gaps of a company in a specific industry, comprising:

first identifying a plurality of operational metrics for the specific industry, wherein the operational metrics includes a factor used to measure health or viability of a generic company in the specific industry, wherein the specific industry is a grocery store industry, wherein the operational metrics include at least one of a rate of inventory turnover and a number of customers per day;
assembling a set of solutions for application by the specific industry, wherein the set includes one of a decision, an action, a product, and a service;

assessing impacts of application of the set of solutions on the operational metrics for the specific industry, wherein the assessing includes determining which of the set of solutions has a negative impact on an operational metric and determining which of the set of solutions has a positive impact on the operational metric;

after identifying, assembling, and assessing, then comparing a current operational performance of the company to an operational performance of another company within the specific industry to obtain at least one performance gap, wherein the operational performance includes a performance of a company based upon the operational metric for the specific industry;

identifying a solution based upon the impacts to address the exposed performance gaps, wherein the solution is at least one of a decision, an action, a product, and a service that impacts a problem in a positive manner; and

outputting the solution from the computer system.

The Board’s rationale:

“We find that claims 23, 29 and 30 a computerized method which includes a step of outputting information from a computer (FF 7 and 9-10) and therefore, are tied to a particular machine or apparatus.”

My question to you, the readers of this blog, is could satisfying § 101 be this simple?  And, if not, what other strategies have you found effective?  Please leave a comment if you have a successful strategy to share in a follow up post.

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

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© 2009, Michael E. Kondoudis

As several patent blogs have recently discussed, the backlog at the Board of Patent Appeals and Interferences (BPAI) has topped 20 months and shows few signs of decreasing any time soon.  New appeals are being filed at a rate of about 2.5 times the disposal rate.  Also, new rules limiting continuing practice may still be put into effect, which would certainly increase the rate of future appeals.

One way to avoid further extending the time to have an appeal heard is to avoid having to submit an amended appeal brief because the original was deemed non-compliant.  Knowing the requirements set forth in the Rules and the MPEP may not be enough, however.  This is because an appeal brief may fully satisfy each and every requirement set forth in the Rules and the MPEP and still be returned as non-complaint.

Sections 1205 - 1205.03 of the MPEP address appeal briefs.  In those sections, one will find:

    1205 - the Rule governing appeal briefs, 37 CFR 41.37;

    1205.01 - the timing for filing the appeal brief;

    1205.02 - the required content for an appeal brief; and

    1205.03 -  how the Office deals with non-compliant appeal briefs.

Obviously, MPEP § 1205.02 is a good place to start when preparing an appeal brief.   Relying solely on the MPEP and Rule 37 CFR 41.37 may not be advisable, however.

Not widely known is that the USPTO Appeal Center uses an internal checklist to judge whether an appeal brief is compliant (and accepted) or is non-compliant (and returned to the appellant for resubmission).  Following this link to download the Checklist.

A review of the Checklist is illuminating.  For example, it instructs Appeal Center reviewers that an appeal brief should not be held non-complaint merely because:

     1.  the required sections are “not in the order indicated”;

     2.  there is no statement of the real party in interest (because the Office will assume the named inventors are the real part in interest;

     3.  there is no statement of related cases (because the Office will assume that there are no related cases; and

     4.  there is no evidence section (because the Office will assume that that there is no evidence.

The Checklist, however, does much more than just identify various minor deficiencies that do not alone rise to non-compliance.  In fact, a review of the checklist reveals possible additional requirements that are not found in 37 CFR 41.37 or in the MPEP.  The following are a few examples.

Status Identifiers in the Claim Appendix
Item 9 of the Checklist inquires about whether the claims listed in the Claims Appendix are accompanied by status identifiers. MPEP § 1205 and 37 CFR 41.37 only require a claim appendix that includes a clean, accurate version of all pending claims in numerical order, however.   Specifically, 37 CFR 41.37, subsection (c)(1)(iii)(“Status of claims”) only requires:

A statement of the status of all the claims in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled) and an identification of those claims that are being appealed.

Nonetheless, the Checklist instructs a reviewer to return to the appellant as non-compliant any appeal brief that lacks status identifiers in the Claims Appendix.

Table of Contents
Item 3 of the Checklist inquires about the presence of a table of contents and instructs the Appeal Center reviewer to hold an appeal brief non-compliant if a table or its heading is omitted.  But, neither Rule 41.37 nor the MPEP requires a table.  In fact, MPEP § 1205.02 actually characterizes tables of contents or authority as merely desirable and instructs that an appeal brief may comply with 37 CFR 41.37 even when those tables are absent.

Page Numbering
Item 13 of the Checklist inquires about the page numbering, which is a requirement not found in either the MPEP or Rule 41.37.  Nonetheless, according to the Checklist:

The pages of the appeal brief, including all sections of the appendix, shall be numbered consecutively … beginning  with the first page of the appeal brief, which shall be numbered page 1.

While admittedly imprudent to submit an Appeal Brief without consecutive page numbers, this is not the only formatting requirement that is found in the Checklist but not in the MPEP.

Conclusion
The bottom line, whether supported or unsupported, every appellant needs to be aware of the Checklist and the additional requirements that it appears to impose on appeal briefs.  Ignoring these additional requirements increases the chances that an appeal brief will be returned as non-compliant, which would extend the already lengthy wait for a BPAI decision.

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

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© 2009, Michael E. Kondoudis

Based on the number of requests I have received since my first post on enablement, I know that many of you have been waiting for this follow up.  The following are a few examples employing the principles I discussed in my earlier post.  A word of caution, as is the case with most technical (non-art) rejections, enablement rejections are usually highly fact specific.  Consequently, there are almost an infinite number of ways to respond to any single enablement rejection.  The following are examples of two basic responses.  

Examples Of Responses To Enablement Rejections

Example 1 - Failure to Make Out A Prima Facie Case – No Analysis of Wands Factors.

The Office Action rejected claim 2 for allegedly failing to satisfy the enablement requirement of the first paragraph of 35 U.S.C. § 112.  This rejection is respectfully traversed.

Applicant respectfully submits that the Office has, by only providing a mere conclusion of nonenablement, failed to satisfy its burden to articulate a prima facie case.  And, without adequate notice of the basis of this rejection, the burden to rebut with evidence and/or argument has not yet shifted to Applicant.

The MPEP repeatedly warns that the Office bears always an initial burden of establishing a prima facie case when making an enablement rejection. (See, e.g., MPEP §§ 706.03, 2164.04).  A prima facie case of nonenablement is only satisfied when the Office establishes a reasonable basis as to why the scope of protection provided by a claim is not adequately enabled by the disclosure. (MPEP § 2164.04)(emphasis added).  This requires that the Office make specific findings of fact, supported by evidence, and then draw conclusions based on those findings of fact.  (MPEP § 2164.04).  This requires, at a minimum, discussion of those Wands factors, reasons, and evidence that lead the Examiner to conclude that the specification fails to teach how to make and use the claimed invention without undue experimentation, or that the scope of any enablement provided to one skilled in the art is not commensurate with the scope of protection sought by the claims.  (Id.).  Simply put, mere conclusory statements are insufficient to support an enablement rejection and must be based on evidence, not mere opinion.  (MPEP § 2164.05).

It is also well settled that the burden to respond only shifts to an Applicant after the Office has established a prima face case, which requires that the Office: (1) weigh all the evidence; and (2) establish a reasonable basis to question the enablement provided for the claimed invention.   (MPEP § 2164.05).

A review of the Office Action reveals only the mere conclusion that “there is no enabling disclosure of an incipient component”.  (Office Action, page 3).  Missing, for example, is any discussion of even a single Wands factor or any indication that any evidence has been weighed, as the MPEP expressly requires.  (MPEP § 2164.01(a)).  Indeed, the rejection is devoid of any evidence or technical reasons as to why the disclosure fails to enable the claimed invention.   Rather, the provided “reason” is a mere conclusion, which the MPEP expressly warns is insufficient to support this rejection. (MPEP §§ 706.03, 2164.05).

The Office’s failure to meet its burden to articulate a “reasonable basis” challenging the enablement of claim 2 alone is fatal to this rejection since Applicant is under no burden to rebut it. (MPEP §§ 706.03, 2164.05). For this reason, this rejection is traversed.

Accordingly, Applicant respectfully requests favorable reconsideration and withdrawal of the rejection of claim 2 under the first paragraph of 35 U.S.C. § 112.

In the event that the Office maintains this rejection, Applicant respectfully requests, in accordance with the principles of compact prosecution, that the Office fully develop the reasons for this rejection by articulating, on the record, those factors, reasons, and evidence that lead it to conclude that the specification fails to teach how to make and use the claimed invention without undue experimentation, or that the scope of any enablement provided to one skilled in the art is not commensurate with the scope of protection sought by the claims.  (See MPEP § 2164.04)(emphasis in original).

Example 2 - A Substantive Response

Claim 1 stands rejected under the first paragraph of 35 U.S.C. § 112 as allegedly not being enabled.  Specifically, the Office Action rejected this claim because of the recitation of an outer terminal that restricts an upper movement of a movable portion of a support structure.  (Office Action, page 2).  This contention is respectfully traversed for at least the following reasons.

The enablement requirement of § 112 is satisfied when an application describes a claimed invention in a manner that permits one of ordinary skill to practice it, without undue experimentation. (MPEP § 2164.01).   Thus, the mere fact that experimentation might be required is insufficient to support an enablement rejection.  Further, even complex experimentation is not necessarily undue.  (MPEP § 2164.01).

Applicant respectfully submits that no experimentation is required to make and use the invention of claim 1.  Nonetheless, even if experimentation might be required, it would not be undue.  In this regard, it is important to be mindful that the question of enablement is one of predictability in view of what is known in the art.  Consequently, 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).

The specific question of 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)).  Further, a proper analysis of whether any experimentation is undue requires an analysis of all of the pertinent Wands factors.  (MPEP § 2164.01(a))(emphasis added).  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.).

Claim 1 is directed to a novel semiconductor substrate.  It is submitted that the level of ordinary skill in the relevant art, the scope of which is not addressed in the Office Action, is relatively high.  In addition, Applicant’s FIGS. 1-3 illustrate an example of the invention of claim 1.  Further, Applicant describes a method of manufacturing the substrate of claim 1, a fact evidenced by the Restriction Requirement imposed by the Office Action mailed on 02/15/2008.  As a result, at least the following Wands factors weigh in favor of enablement:

• the state of the prior art;
• the level of ordinary skill in the art; and
• the presence of working examples.

These are not the only Wands factors weighing in favor of enablement, however.

Attention is respectfully directed to page 12, lines 13-24 of the present application, which in conjunction with FIG. 1(B), explains:

When it is not necessary to seal the movable structure 15 in a closed space, the first sealing portion 20 may be formed of a plurality of first sealing portions 20a arranged in a comb shape with gaps as shown in FIG. 2(B). In this case, each of the first sealing portions 20a has a mountain shape having slopes. Each of the first sealing portions 20a individually seals a set of the outer terminal 17, the wiring portion 17a connected to the outer terminal 17, and the electrode pad 18 connected to the wiring portion 17a. As shown in FIG. 1(B), the outer terminal 17 has a height E such that the movable structure 15 is adjustable in the arrow direction A to measure specific acceleration upon mounting.

(Emphasis added).  Thus, Applicant explains that the height of the outer terminal permits vertical adjustment of the movable structure (the A direction in FIG. 1(B)).  This at least implies restricting movement.  Consequently, the following Wands factors also favor enablement:

• such as quantity of experimentation needed relative to the disclosure; and
• the amount of direction provided in the specification also favor enablement.

In view of the foregoing, Applicant respectfully submits that ordinarily skilled artisans would be able to make and use the claimed invention, despite any experimentation that might be required.  Applicant further submits that this conclusion is buttressed by the amount of knowledge in the state of the art as well as the predictability of the art, as well as the majority of Wands factors that weigh in favor of enablement.  Therefore, the present application adequately enables the claimed invention.

Applicant thus respectfully requests favorable reconsideration and withdrawal of the rejection under 35 U.S.C. § 112.

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

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© 2009, Michael E. Kondoudis

As regular readers of this blog know, I advocate using the USPTO’s Manual of Patent Examining Procedure (MPEP) as primary authority during prosecution.  I discussed my reasons for doing so in this earlier post.  Basically, it is the USPTO’s official manual, so its instructions to Examiners are beyond dispute.

From time to time, when responding to an Office action or preparing a post for this blog, I come across interesting, useful MPEP sections that I think that other practitioners may not know about.   Admittedly, these sections are not useful in everyday prosecution.  Nonetheless, in certain, specific circumstances, these sections of the MPEP may be helpful.

Some help for older applications
Often, the prosecution of an application extends into third Office actions.  In these cases, as well as “mature” cases, take note of §707.02 of the MPEP.

707.02 Applications Up for Third Action and 5-Year Applications
The supervisory patent examiners should impress their assistants with the fact that the shortest path to the final disposition of an application is by finding the best references on the first search and carefully applying them.

The supervisory patent examiners are expected to personally check on the pendency of every application which is up for the third or subsequent Office action with a view to finally concluding its prosecution.

Any application that has been pending five years should be carefully studied by the supervisory patent examiner and every effort should be made to terminate its prosecution. In order to accomplish this result, the application is to be considered “special” by the examiner.

Some help for a generic rejection of a group of claims
We have all seen rejections in which an Examiner has erroneously characterized several independent claims, grouped them together, and generically rejected the group.  In situations like this in which an Examiner has grouped claims together to make a generic, omnibus rejection, §707.07(d) of the MPEP may be of interest.  That section warns:

707.07(d) Language to be Used in Rejecting Claims

*****

A plurality of claims should never be grouped together in a common rejection, unless that rejection is equally applicable to all claims in the group.

Some help for inventor filed (pro se) applications
The MPEP expressly instructs Examiners to offer specific help to pro se applicants by writing proposed claims.  If you are a pro se applicant, keep §707.07(j) in mind.

707.07(j)(I) State When Claims Are Allowable

When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.

Coming Next - More Help from the MPEP

The Law Office of Michael E. Kondoudis, PC
DC Patent Attorney
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© 2009, Michael E. Kondoudis

An application data sheet (ADS) is a document that provides the bibliographic data for an application to the USPTO.  The USPTO prefers, but does not require, the use of an ADS.  An ADS can be advantageous, however, because it tends to reduce errors in the conversion/recordation of application data into the  USPTO’s official electronic  data record.  While electronic filing via the USPTO’s EFS-Web has certainly reduced some errors, the USPTO relies on the uploaded documents (e.g., declaration, specification), rather than a user’s input, to create its official electronic record.  For example, in a national stage application filed under 35 USC § 371, the USPTO might look to the publication of the international application for the title and to other documents for the listing of inventors and the correspondence address.   The use of an ADS, because it provides this information in a single document and in a specified format, improves the accuracy of this conversion and the resulting electronic record.

Examples of What Can Happen Without an ADS
The USPTO’s procedures for converting the application data of paper applications and for recording electronic data into its official data record are surprisingly accurate, in view of the number of application data records it must create.  Nonetheless, as with any system, errors do occur.  And, even when they are remedied early in the prosecution process, they still take time and can cause processing delays.  Worse yet, sometimes errors in the USPTO data records are not corrected.  Consider the following U.S. patents, which could have benefited from an ADS:

1. U.S. Patent Nos. 6,112,451, 6,631,400, and 6,637,044, each for a “Statement Regarding Federally Sponsored Research or Development”;
2. U.S. Patent No. 7,263,562 for a “Method and System for Describing Uploaded Files Statement Regarding Federally Sponsored Research or Development”; and
3. U.S. Patent No. 6,389,215 for “Low Birefringent Polyimides for Optical Waveguides Statement Regarding Federally Sponsored Research or Development”.

And then there are:

1. U.S. Patent No. 6,930,045 for “Cross Reference to Related Application”;
2. U.S. Patent No. 6,829,526 for a “Train Detection System and a Train Detection Method Cross Reference to Related Application”; and
3. U.S. Patent No.  6,786,734 for an “Electrical Adapter With a Foldable Housing Cross-Reference to Related Application”.

Clearly, there are instances when an ADS would have helped the USPTO more accurately convert bibliographic information into an official data record.

The Requirements for an ADS
37 CFR § 1.76 governs application data sheets and sets forth specific requirements for each ADS.  The following are some of the more noteworthy.

1.  An ADS may be used in provisional and nonprovisional applications.  37 CFR § 1.37(a).

2.  The USPTO offers a fillable pdf form (Form PTO/SB/14) on its website here.  CAUTION - The USPTO ADS fillable form must be submitted as a text-based PDF file. A scanned version of the ADS fillable form will be rejected via EFS-Web because EFS-Web will not be able to auto-load scanned in data into backend systems.   (Answer to USPTO.GOV EFS-Web Help FAQ # 252).

3.  An ADS must be in a specific format.  An ADS must be titled “Application Data Sheet” and must contain all of the following section headings, with any appropriate data for each section heading:

1. Applicant information (i.e., the name, residence, mailing address, and citizenship of each applicant);
2. Correspondence information (i.e., the correspondence address, which may be indicated by reference to a customer number);
3. Application information (i.e., the title of the invention, a suggested classification, by class and subclass, the Technology Center to which the subject matter of the invention is assigned, the total number of drawing sheets, any docket number assigned to the application, the type of application);
4. Representative information (i.e., the registration number of each practitioner having a power of attorney in the application);
5. Domestic priority information (i.e., the application number, the filing date, the status, and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c));
6. Foreign priority information (i.e., the application number, country, and filing date of each foreign application for which priority is claimed) (NOTE - providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and § 1.55(a); and
7. Assignee information.

37 CFR §§ 1.76 (a) and (b).

4.  Providing domestic priority information in an ADS constitutes the specific reference required by 35 USC § 119(e) or 120, and 37 CFR §§ 1.78(a)(2) or 1.78(a)(5), such that this information need not otherwise be made part of the specification.  37 CFR 1.76 (b)(5).

5.  The USPTO will interpret any blank section in an ADS to mean that there is no corresponding data for that label anywhere in the application.  37 CFR § 1.76(a).

6.  In the event of an inconsistency between the ADS and other submitted documents, the timing of the submission of the conflicting information controls.

• When the conflicting information is submitted at different times - the latest submitted information governs regardless of how it is supplied, except that an oath or declaration governs inconsistencies in the naming of inventors or their citizenship.
•  When the conflicting information is submitted at the same time - the ADS will govern when the inconsistent information is supplied at the same time, except that an oath or declaration governs inconsistencies in the naming of inventors or their citizenship.

37 CFR 1.76 (d)

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

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© 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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