Have you ever had a question about an application in prosecution but have been unable to find the correct person to assist you?  Have you ever been unsuccessful in obtaining assistance from an examiner or Supervisory Patent Examiner?  If so, you will want to take note of the USPTO’s new Ombudsman Pilot Program.

The Ombudsman Pilot Program is designed to assist in getting the process back on track when there is a breakdown in the normal prosecution process.  This program is not intended to circumvent normal communication between applicants and/or their representatives and examiners or SPEs, however.  Rather, it is intended to serve as an additional resource to practitioners and applicants.

The Ombudsman Pilot Program began yesterday and will continue for at least 12 months.

>> Click here to visit the homepage for the Ombudsman Pilot Program Ombudsman, which includes an electronic contact form.

>> Click here to view some FAQs on the Ombudsman Pilot Program.

>> Click here to download the Federal Register notice for the Ombudsman Pilot Program.

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2010, Michael E. Kondoudis

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

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.

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2010, Michael E. Kondoudis

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

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.

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2009, Michael E. Kondoudis

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

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.

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2009, Michael E. Kondoudis

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

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.

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2009, Michael E. Kondoudis

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

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.

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2009, Michael E. Kondoudis

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

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

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2009, Michael E. Kondoudis

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

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)

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2009, Michael E. Kondoudis

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

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.

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2009, Michael E. Kondoudis

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

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?

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2009, Michael E. Kondoudis

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

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

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2009, Michael E. Kondoudis

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

This is the second part of a two-part discussion of RCEs and the submission requirement.  In my earlier post here, I discussed legal principles about RCEs and some RCE strategy.  This post presents and discusses some additional strategic uses for RCEs beyond reopening/continuing prosecution after a final Office action.

An RCE can be used to have art considered and made of record when the statement under 37 CFR § 1.97(e) is required but cannot properly be made.

Consider a circumstance where an Applicant seeks to have art considered by the Office (i) after a final Office action and (ii) more than three months after the art was cited in a corresponding foreign application.  If the Examiner declines to consider the art (the Rules do not prohibit the Examiner from considering art at any time during prosecution), filing an RCE with an IDS will require the USPTO to consider the art as a matter of right.

In this circumstance, the Applicant may consider foregoing a Response After Final and file an RCE with two submissions, a fully responsive Response and an IDS.

Two Comments About RCEs and IDSs
1.  Keep in mind that 37 CFR 1.97 specifies when an IDS shall be considered by the Office.  Thus, compliance with this rule ensures consideration of submitted art as a matter of right.  A failure to satisfy the requirements of this rule does not preclude the consideration of the cited art, just consideration as a matter of right.

2.  The three-month window of 37 CFR 1.53(b) (an IDS will be considered if filed within three months after the filing date) does not apply to RCE applications.  An IDS after an RCE will, however, be considered without a statement and fee so long as the IDS is filed before the first action after the RCE.

An RCE can be used to withdraw an appeal.

After a Notice of Appeal, an Applicant/Appellant sometimes (i) decides to amend claims or (ii) discovers new art that is material to patentabilty.  In either of these situations, filing an RCE would withdraw the appeal and reopen prosecution so that the amendments or art can be made of record.

An RCE can be used to withdraw an allowed application from issue.

After a Notice of Allowance, but before payment of the Issue Fee, an Applicant begins to evaluate whether the claims are of adequate scope or whether additional claims are warranted.  If there is a risk of the application issuing, an RCE will stop it.  In this circumstance, filing an RCE with a submission that merely amends the Abstract to change as little as a single word can be used to buy the Applicant time to decide whether to permit the application to issue.

An RCE may also be used to avoid paying an Issue Fee but maintaining pendency  when it is unclear whether an Applicant wants to pay an Issue Fee.

Here again, a submission that merely amends the Abstract to change as little as a single word can be used.

A Comment on Reporting Issue Fees
To avoid the latter situation illustrated above in which it is unclear whether the Applicant wants to pay the Issue Fee, one might consider a paragraph such as the following in a Notice of Allowance and Notice of Allowability reporting letter:

The Issue Fee and Publication Fee are due no later than January 1, 2009, and we will pay those fees on the due date unless we receive your instructions otherwise.  In that regard, if you instruct us to file a request for continued examination (RCE), we must have your proposed amendment or other submission before the due date.

Such a paragraph makes clear that the fees will be paid in the absence of further instructions.

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2009, Michael E. Kondoudis

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

This post discusses requests to withdraw finality.  Under the USPTO’s policy of compact prosecution discussed here, a second office action may properly be made final under most circumstances.  The circumstances are set forth in §706.07(a) of the Manual of Patent Examining Procedure (MPEP), entitled Final Rejection, When Proper on Second Action, which states:

Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

The MPEP, in §706.07(d), also provides a remedy when a final Office Action is issued and the conditions of §706.07(a) have not been satisfied.  That section, entitled Final Rejection, Withdrawal of, Premature, provides:

If, on request by applicant for reconsideration, the primary examiner finds the final rejection to have been premature, he or she should withdraw the finality of the rejection. The finality of the Office action must be withdrawn while the application is still pending. The examiner cannot withdraw the final rejection once the application is abandoned.

The following are a few examples of successful Requests to Withdraw Finality.

—- EXAMPLES —-

This first example was submitted in response to a final Office action that mischaracterized a claim.

REQUEST FOR WITHDRAWAL OF FINALITY

Applicants are in receipt of a final Office Action mailed March 13, 2007, in this application. Applicants respectfully request that the finality of the subject Office Action should be withdrawn because the Office has expressly and erroneously misinterpreted claims and, as a result, has failed to consider the patentability arguments presented in the most recently filed Amendment. Further, the Office’s express, incorrect claim characterization precludes the Office Action from addressing the merits of the argument presented concerning one of the presented independent claims.

In support of this request, Applicants state the following:

1. On December 20, 2006, Applicants filed an Amendment that presented independent claim 15 with the following claim recitation:

a disk protector disposed at an outer edge of the disk damper….

2. In response to the Amendment filed December 20, 2006, the Office mailed a final Office Action on March 13, 2007, which explained that all rejections were maintained because:

Applicant argues the limitations which are not in the claim language” because Applicants only claim “…arranged/disposed along an outer edge of the disk damper…Applicant does not claim “… at an outer edge of the disk damper.”

(Office Action, page 3).

3. The aforementioned statement of paragraph 2 is manifestly incorrect and without basis in fact. Indeed, Applicants’ independent claim 15 expressly recites “at.”

4. Section 707.07(f) of the Manual of Patent Examining Procedure (MPEP) instructs that:

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.

5. The Office repeated the rejections of all of the claims. The Office, however, neither “took note” of Applicants’ argument nor “answered the substance” of Applicants’ argument. Thus, the final Office Action is deficient because the Office failed to satisfy the requirements of MPEP § 707.07(f).

6. Also, it is submitted that the outstanding Office Action has taken an improper and unreasonable interpretation of claim terms. And, for this additional reason, Applicants respectfully submit that the outstanding Office Action is improper.

In view of the foregoing, Applicants respectfully request withdrawal of the finality of the outstanding Office Action and further request a new non-final Office Action that addresses the merits of claim 15.

This second example was submitted in response to a final Office action that first rejected features that were previously presented for examination.

REQUEST FOR WITHDRAWAL OF FINALITY

Applicant is in receipt of a final Office Action mailed December 25, 2007, in this application.  Applicant respectfully submits that the finality of the subject Office Action is premature and therefore requests withdrawal of that finality, pursuant to Section 706.07(d) of the Manual of Patent Examining Procedure (MPEP).

Grounds
As grounds for this Request, Applicant states as follows:

1.  The final Office Action rejects independent claim 1 on new grounds.  As the Office itself states, “Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action.”  (Final Office Action, page 6).

2.  The sole amendment to independent claim 1 was made in an Amendment filed October 25, 2008.  In that Amendment, Applicant cancelled original claim 2 and amended independent claim 1 to recite the features of cancelled claim 2.

3.  The features of claim 2 that were added to independent claim 1 were previously presented for examination.  Thus, the added features could have been rejected in an earlier Office action but were not.

4.  Section 706.07(a) of the MPEP specifies the conditions under which the finality of a second or subsequent Office action is proper, providing that:
Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement….

5.  Applicant submits that because the features added to independent claim 1 were presented for examination in the preceding Office Action, the new ground of rejection of claim 1 made in the final Office Action cannot reasonably be said to be either necessitated by a claim amendment or an Information Disclosure Statement.

Conclusion
The conditions set forth in § 706.07(a) of the MPEP have not been satisfied.  Accordingly, for that reason alone, as well as the interests of fairness, the finality of the final Office Action should be withdrawn.

This final example was submitted in response to a final Office action that rejected a claim for the first time.

REQUEST FOR WITHDRAWAL OF FINALITY <

Applicant is in receipt of a final Office Action mailed December 25, 2007, in this application.  Applicant respectfully submits that the finality of the subject Office Action is premature and therefore requests withdrawal of that finality, pursuant to Section 706.07(d) of the Manual of Patent Examining Procedure (MPEP).

Grounds For Request
As grounds for this Request, Applicant states as follows:

1.  The final Office Action rejected independent claim 20.

2.  The non-final Office Action that immediately preceded the final Office Action did not reject independent claim 20.

3.  Section 706.07(a) of the MPEP specifies the conditions under which the finality of a second or subsequent Office action is proper, providing that:

Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement….

4.  Applicant submits that the rejection of independent claim 20 is a new ground of rejection.  Also, because Applicant neither amended claim 20 nor filed an IDS between the subject non-final and final Office actions, the conditions required by MPEP § 706.07(a) cannot yet be satisfied.

Conclusion
The conditions set forth in § 706.07(a) of the MPEP have not been satisfied.  Accordingly, for that reason alone, as well as the Office’s policy of compact prosecution, the finality of the final Office Action should be withdrawn.

Two last comments.  First, I prefer to file these Requests as separate, stand alone documents.  Second, each of the examples in this post is based on successful Request.  They are by no means appropriate for every final Office action.  But, when finality is premature, this type of Request can be an effective remedy.

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2009, Michael E. Kondoudis

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

This is the second in a two-part series on Official Notice and strategies for responding to rejections based on Official Notice.  In part one of this series, I discussed basic principles of Official Notice.  What follow are a few examples of responses to rejections based on the principles discussed in my earlier post.

Example 1 – An Improper Taking of Official Notice

Applicant respectfully traverses the rejection of independent claim 1 at least because the Office has failed to establish a prima facie case of obviousness.

In rejecting independent claim 1 under 35 U.S.C § 103, the Office Action contends:

It would have been obvious to one having ordinary skill in the art at the time the invention was made to replace the printer of Smith with the plotter of Jones since the Examiner takes Official Notice of the equivalent use in the art and the selection of any of these known equivalents to write information on a plastic card would be within the level of ordinary skill in the art.

Applicant respectfully traverses this attempted use of Official Notice as improper.  Consequently, a necessary element of a prima facie case is absent.

Firstly, it is to be appreciated that the Office Action attempts to officially notice legal conclusions, –namely “the equivalent use in the art and the selection of any of these known equivalents to write information on a plastic card would be within the level of ordinary skill in the art.”  Official Notice, however, is only proper for facts.  (MPEP § 2144.03).  Indeed, Official Notice is only permissible for those few facts that are of a “notorious character” and that are “capable of instant and unquestionable demonstration”.  (MPEP § 2144.03(A)).  It is improper to use Official Notice for conclusions of law.

Secondly, the Office Action relies on Official Notice as the “principal evidence” upon which the rejection of claim 1 is based.  Official Notice cannot be used in this manner.  As Section 2144.03(A) of the MPEP expressly warns, it is never appropriate to rely solely on Official Notice as the principal evidence upon which a rejection was based.  Instead, Official Notice is only appropriate for facts and that serve to “fill in the gaps” in a rejection.  (MPEP § 2144.03(A)).  This is why official notice is to be judicially applied.  (MPEP §  2144.03).  It is unreasonable to conclude that the Office has used Official Notice to “fill in” a gap in this rejection.

Thirdly, the Office attempts to take Official Notice of matter that is not “capable of instant and unquestionable demonstration”, as expressly required by section 2144.03(A) of the MPEP.  Indeed, even assuming arguendo that the equivalence of the subject printer and plotter is a fact, this fact would be neither of notorious character nor instantly and unquestionably demonstrable.  Moreover, courts have long rejected the notion that official notice can be taken on the state of the art.  (See Memorandum to Patent Examining Corps from the Deputy Commissioner for Patent Examining Policy regarding Procedures for Relying on Facts Which are Not of Record as Common Sense or for Taking Official Notice, n.6, citing In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973)).   Thus, the Office’s attempt to officially notice the level of ordinary skill in the art is improper as a matter of law.

In sum, the Office’s attempts at Official Notice are improper and traversed.  Consequently, there are evidentiary gaps in the rejection of independent claim 1 that are fatal to a prima facie case of obviousness.

Example 2 – An Ambiguous Taking of Official Notice

Lastly, Applicant notes, at page 4 of the Office Action, an apparent attempt to officially notice a fact.  If the Office has intended to take Official Notice, such an attempt is traversed, at least because it is not in compliance with the Office’s own procedures.

Proper use of Official Notice requires compliance with several obligations expressly set forth in the Manual of Patent Examining Procedure.   The Office has failed to meet these obligations.  Specifically, the Office has failed to satisfy its obligations under MPEP § 2144.03.  MPEP § 2144.03 (B), for example, expressly requires the Office to provide specific factual findings predicated on sound technical and scientific reasoning to support taking Official Notice. The MPEP goes on to explain that this means that the Office should present an Applicant with the explicit basis on which Official Notice is based so that the Applicant is able to challenge the assertion in the next reply after the Office action. (MPEP §2144.03(B)).  Naked assertions about what is allegedly known in the art, like those made at page 4 of the Office Action, cannot satisfy these requirements.
In the event that the Office is not attempting to take Official Notice, Applicant respectfully requests confirmation of this fact.

Finally, I recommend reviewing the cited Memorandum to Patent Examining Corps from the Deputy Commissioner for Patent Examining Policy from the first example.  It is a useful summary of the USPTO’s policies and instructions to its Examiners.

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2008, Michael E. Kondoudis

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

Official Notice is a principle in U.S. patent prosecution that authorizes an Examiner to depart from the general requirement to present evidence on the record to support a claim rejection.  By “taking official notice”, an Examiner may rely on facts beyond the record to reject claims.  Official Notice is intended for facts that are common knowledge or capable of unquestionable demonstration.

Background

Federal Courts, pursuant to the Administrative Procedure Act, review USPTO findings of fact under “the substantial evidence” standard, as a result of the Supreme Court’s decision in Dickinson v. Zurko.  This standard obligates the USPTO to provide a record that includes sufficient documentary evidence to enable judicial review.  This obligation, in turn, constrains the USPTO’s reliance on Official Notice to only facts that are “capable of such instant and unquestionable demonstration as to defy dispute.”

Additionally, there is a due process argument that an Applicant is entitled to appropriate notice as to why claims are rejected and why submitted patentability arguments are deemed unpersuasive.

A Memorandum from the Deputy Commissioner for Patent Examination Policy on the Procedures for Taking Official Notice is available here.

A leading decision concerning Official Notice is In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420-421, (CCPA 1970) (stating that assertions of technical facts in areas of esoteric technology must always be supported by citation of some reference work and allegations concerning specific knowledge of the prior art, which might be peculiar to a particular art, should also be supported).

General Principles

1.    Section 2144.03 of the Manual of Patent Examining Procedure (MPEP) provides guidelines for relying on Official Notice and personal knowledge.  This should be an Applicant’s primary resource for responding to a use of Official Notice.

2.    Official Notice is permissible only in limited circumstances. For example, use of Official Notice should be rare when an application is under final rejection or action under 37 CFR 1.113. (MPEP § 2144.03(A)).

3.    Official Notice is permissible only for certain types of facts; those that are capable of instant and unquestionable demonstration as being well-known.  Examples of such facts include those that are of common knowledge in the art. (MPEP § 2144.03(A)).

4.    It is never appropriate to rely solely on Official Notice as the principal evidence upon which a rejection was based. Instead, Official Notice is only appropriate for facts that are of “notorious character” and that serve to “fill in the gaps” that might exist in the evidentiary showing to support a particular ground of rejection. (MPEP § 2144.03(A)).

5.  The proper time for taking Official Notice is the first Office Action or as early as possible after a claim feature is presented for examination.  Ex parte Gambogi, 62 USPQ2d 1209 (BPAI, 2001)(unpublished).

6.    An Applicant must timely traverse an assertion of Official Notice or the noticed facts will be deemed to be admitted prior art. (MPEP § 2144.03(C)).  A timely traversal is one presented in the reply to the Office action.

7.    To traverse Official Notice, an Applicant must specifically point out the supposed error(s) in the Examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.  So, a general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate.  (MPEP § 2144.03(C)).

The USPTO’s Burden

1.    The Office must provide specific factual findings predicated on sound technical and scientific reasoning to support taking Official Notice. (MPEP §2144.03(B)).

2.    The Office should present an Applicant with the explicit basis on which Official Notice is based so that the Applicant is able to challenge the assertion in the next reply after the Office action. (MPEP §2144.03(B)).

3.    An Examiner may rely on facts within his or her own knowledge to support a rejection.  When relying on personal knowledge, however, the Examiner must provide an affidavit or declaration setting forth specific factual statements and an explanation to support the finding.  (MPEP §2144.03(C)).  Such an affidavit is subject to contradiction or explanation by the affidavits of the Applicant and/or other persons. (See 37 CFR §1.104(d)(2)).

4.    When an Applicant challenges a factual assertion as not properly officially noticed or not properly based upon common knowledge, the Office must support the finding with adequate documentary evidence in the next Office action if the rejection is to be maintained.  (MPEP §2144.03(C)).

Proper Finality After Traversal

If an Examiner adds a document in the next Office action after an Applicant’s rebuttal, and that document is added only as evidence to support the maintenance of a rejection, the addition of a new document does not result in a new ground of rejection.  Accordingly, the Office action may properly be made final. If, however, the Examiner relies on the newly cited document in any other way, and no amendments are made to the claims, the finality of an Office action should be questioned.  See MPEP §2144.03(D).  Remember, a second or any subsequent action on the merits may properly be made final, unless an examiner introduces a new ground of rejection that is not necessitated by a claim amendment or an IDS.  (MPEP §706.07(a)).

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2008, Michael E. Kondoudis

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

Inherency is a doctrine in U.S. patent prosecution by which unstated or unillustrated aspects of cited art are treated as if they are expressly disclosed.  The basis for this doctrine is that some things that will, as a matter of scientific fact, always flow from what is disclosed in art.

This doctrine permits the USPTO to rely on more than just the mere express disclosures of applied art to reject claims under 35 U.S.C. §§102 and 103.

The doctrine of inherency is generally appropriate only in limited circumstances.

General Principles

1.    Subject matter is only inherent when extrinsic evidence makes it clear that the subject matter is necessarily present in (i.e., necessarily flows from) the disclosure of cited art, and that ordinarily skilled artisans would recognize it.  (MPEP 2112).

2.    Ordinarily skilled artisans, however, need not recognize this presence at the time of invention.   (MPEP 2112 (II)).

3.    Inherency cannot be established by mere possibilities or even probabilities.  The fact that a certain result or characteristic may occur or may be present in cited art is not sufficient to establish the inherency of that result or characteristic.  (MPEP 2112 (IV)), citing In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993) (reversing a rejection based on inherency because result due to optimization of conditions was not necessarily present in the prior art).

4.    The Patent Office’s guidelines for using inherency are found in Sections 2112 – 2112.02 of the MPEP.  This should be an Applicant’s primary resource for authority when responding to rejections based on inherency.

The Patent Office Always Bears an Initial Burden to Establish Proper Reliance on Inherency

It is always incumbent on an Examiner to develop reasons supporting a reliance on inherency.   (MPEP 2112 (IV)).

To fully develop reasons, the Office must provide reasonable support for invoking inherency.  This reasonable support requires “a basis in fact” (evidence) and/or reasoning tending to show that an allegedly inherent feature necessarily flows from the teachings of the applied art.  (MPEP 2112 (IV), citing Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original)).  Only after providing this reasonable support does the burden to rebut a claim rejection based on inherency shift to an Applicant.  (MPEP 2112 (V), 2112.01(I))).

The Office enjoys a few logical presumptions to help it provide reasonable support.  For example, reasonable support is presumed to be present when:

1. a claimed structure is substantially identical to that of applied art;
2. a claimed product is produced by a process substantially identical to that of applied art (identical processes produce identical products);
3. a claimed composition is physically identical to that of applied art (identical compositions must have the same properties).

When these circumstances are established, a prima facie case of anticipation or obviousness is made.  (MPEP 2112.01 (I)).

An Approach for Responding to Rejections Based on Inherency

An Applicant should always first consider whether the Office has met its burden under MPEP 2112 (IV) to provide a reasonable basis justifying a reliance on inherency.  Only after the Office has met this burden is it absolutely necessary to address the ultimate question of whether the evidence or reasoning is correct.  Nonetheless, as a practical matter, it is often advantageous to explain why allegedly inherent subject matter does not necessarily flow from cited art, even when the Office fails to justify its reliance on inherency.

Illustrative Examples

1.  A Failure to Articulate a Prima Facie Case

In rejecting claim 1 under 35 U.S.C § 102, the Office Action concedes that the Smith patent does not expressly or impliedly teach the aforementioned claim feature of a widget.  (Office Action, page 3).  Nonetheless, the Office rejects claim 1, contending that the feature of a widget is inherently taught by Smith.  Applicant respectfully traverses this rejection at least because the Office has not met its burden to fully develop reasons supporting its reliance on the doctrine of inherency.

The Office always bears the initial burden to develop reasons supporting a reliance on inherency.   (MPEP 2112 (IV)).  To satisfy this burden, the Office must identify some basis in fact or articulate some reasoning at least tending to show that allegedly inherent subject matter necessarily (i.e., inevitability) flows from cited art.  Indeed, the MPEP expressly instructs that:

“In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”  Further, since a basis in fact and technical reasoning is required when inherency is invoked, a failure to provide such evidence or rationale is fatal to the reliance on this doctrine.  This is only logical since evidence “must make clear” that the allegedly inherent subject matter is necessarily present in (i.e., necessarily flows from) the disclosure of cited art.  (MPEP 2112).

A review of page 3 of the Office Action reveals the absence of the required rationale or evidence at least tending to show that the feature of a widget inevitably flows from the disclosures of Smith patent.  Indeed, the Office Action merely asserts that a red widget is inherently present in the Smith patent.  (Office Action, page 3).  This naked assertion, a mere conclusory statement, cannot reasonably be said to be a development of any reason supporting the Office’s reliance on inherency.  Consequently, the Office Action’s reliance on inherency is unsupported and thus improper.

In sum, the Office Action concedes that the Smith patent does not teach the feature of claim 1 of a widget and any reliance on the doctrine of inherency to provide this necessary teaching is improper.

2.  A Substantive Response

In rejecting claim 1, the Office Action concedes that the Smith patent does not expressly or impliedly teach the aforementioned claim feature of a red widget.  (Office Action, page 3).  Nonetheless, the Office rejects claim 1 under 35 U.S.C. § 102, contending that a red widget is inherent from the disclosures of the Smith patent.  This contention is respectfully traversed, at least because express teachings of the Smith patent preclude reliance on the doctrine of inherency, as a matter of law.

It is well settled that subject matter is inherent only when extrinsic evidence makes it clear that the subject matter necessarily (i.e., inevitably) flows from a disclosure of cited art.  (MPEP 2112).  This requirement is a prerequisite to invoking the doctrine of inherency and cannot be avoided.  Consequently, inherency may never be established by mere probabilities or even possibilities and the mere fact that a certain thing may be present (or may result) is always insufficient.  (MPEP 2112).

A review of the Smith patent reveals no less than three separate teachings that the Smith widget cannot be red.  Applicant respectfully submits that these express teachings so heavily weigh against the inevitable presence of a red widget that they preclude reliance on the doctrine of inherency as a matter of law.  Stated another way, the presence of these express teachings means that the subject matter alleged by the Office Action to be inherent can never reasonably be said to necessarily flow from the Smith patent.  Thus, the Office’s current reliance on inherency can never satisfy the standard set forth in MPEP § 2112 for proper reliance on inherency.

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2008, Michael E. Kondoudis

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

Listings of claims are required in most, but not all responses to Office actions.  This post discusses when they are required and why it may be prudent to include them even when they are not.

The Rules
The manner of making amendments in a patent application is governed by 37 CFR. 1.121 entitled “Manner of Making Amendments in Applications”.  Sections (C) and (C) (1) of that rule addresses claim listings, and state:

(c) Claims. … Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application.

(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement (e.g., Claims 1-5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.

Thus, every filing that includes a change to a claim, a cancellation of an existing claim, or an addition of a new claim, must include a complete listing of all claims ever presented in that application.

A failure to include a listing of the claims when required renders a filing non-compliant.

What about filings in response to an Office action in which no claim changes are made and a listing of the claims is not required (e.g., a Response to a Restriction Requirement of a Request for Reconsideration)?  I have seen such filings prepared both ways; with and without a listing of the claims and I suppose that a case could be made for either approach.  I suggest, however, that it may be a better practice to include a listing of the claims in every response, regardless of whether or not it is required.  Here are a few reasons why.

1. Including a Listing of Claims Makes Examination Easier. When a response does not include a listing of the claims, anyone reviewing the arguments presented will have to refer to at least one other document (e.g., a previous amendment or the original application) to find a listing of the claims.  In other words, omitting a listing requires the reader to sift through the file wrapper to find a listing of the claims.  At a minimum, this is inefficient and inconvenient.  I prefer not putting an Examiner through this trouble.  The Office’s current production quotas are difficult enough for an Examiner to meet.
The bottom line: making the Examiner’s job easier is in everyone’s best interests and can only help improve the quality of examination.  Besides, every Applicant can benefit from some Examiner goodwill.

2.  The USPTO Encourages Inclusion of a Claim Listing In Every Response.
The following is from a frequently asked questions page on the USPTO Website about current amendment practice:

(A10)Q:   May I submit a complete claim listing in a reply when I am not making any changes to the claims, such as responding to a restriction requirement or merely arguing a rejection?A:  Yes. Although a complete claim listing is only required whenever changes are made to any claims, one may be submitted in a reply to an Office action where no changes are being made. It is beneficial to the examiner (and all viewers of the electronic file) to have the most up-to-date set of claims in the most recent paper submitted by the applicant. Note that the claim listing in this situation would not include any claims with markings or any claims with the status identifiers of (new) or (currently amended).

3.  Including a Listing of Claims Promotes Accuracy.
The inclusion of a listing of the claims in every filing makes identifying the most current version of the claims easier for everyone who may pick up the file.   This, in turn, tends to reduce: errors in drafts prepared by support staff; the time needed to review such drafts; and non-compliant amendments.

4.  Including a Listing of Claims Promotes Faster (and Smoother) Review of Work Product.
Including a listing of the claims in every response makes review easier.  And, an easier review tends to be a shorter review.  Shortening the time required for review lessens the overall expense for preparing a filing, especially when the reviewer has a higher billing rate than the practitioner who prepared the filing. Besides, making review easier on the reviewer seems to make that review go a little smoother for the practitioner.

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2008, Michael E. Kondoudis

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

RCE Basics

A Request for Continued Examination (RCE) is a request to continue prosecution of an application.  Essentially, RCE practice can be thought of as a mechanism to buy another full examination of an application without having to refile it. An application in which an RCE is filed stays with the same Examiner and keeps the same serial number. RCEs are available for utility and plant applications, but not for design or provisional applications. RCE practice is governed by 37 CFR 1.114.

The Rules Concerning RCE Practice

37 CFR 1.114 sets forth three requirements/conditions for a proper RCE.

1. Prosecution of the application must be closed.  The prosecution of an application is closed when: a final Office action; a Notice of Allowance; or a Quayle Action has been issued.
2. A “submission” must accompany the RCE.
   
3. The requisite government fee(s) must accompany the RCE.

A “submission” as used in 37 CFR 1.114 includes:

1. an information disclosure statement (IDS);
2. an amendment to a disclosure (i.e., the specification, claims, or drawings);
3. new patentability arguments; or
4. new evidence in support of patentability.

See MPEP 706.07(h)(II).

Some Important Points About RCE Submissions

1.    When any reply to an Office action is outstanding, a submission must meet the requirements of 37 CFR 1.111.  That is, the reply must be “fully responsive” to the last outstanding Office action.  A submission that is not fully responsive renders an RCE deficient and thus improper.

2.    Not every one of the examples set forth in 37 CFR 1.114 will constitute a submission in every circumstance.   Rather, the adequacy of any submission depends on the circumstances in which the RCE is filed.

Example
An IDS filed with an RCE in an application that has been allowed satisfies the submission requirement, since there is no requirement to be fully responsive to any Office action.  That same IDS, however, when filed with an RCE after a final Office action, will not satisfy the submission requirement since it cannot be fully responsive to any Office action.

3.    There is a Pseudo Safe Harbor for Some Submissions that are Not Fully Responsive.
RCEs filed with submissions that are not fully responsive to a last outstanding Office action may sometimes be salvaged, depending on whether the submission was a bona fide attempt to respond to the Office action.

• If the submission is deemed a bona fide attempt to provide a complete reply, the Applicant will be advised of the deficiency and given a new shortened statutory period of one month or thirty days (whichever is longer) to complete the reply.
• If the submission is not deemed a bona fide attempt to provide a complete reply, the RCE will not toll the period for reply and the application will go abandoned after the expiration of the statutory period for reply.

See MPEP 706.07(h)(VI).

4.    A Reply/Request for Reconsideration after a final Office action may satisfy the submission requirement, even when the Reply/Request has been entered and an advisory action indicates that the arguments are not found persuasive.  The fact that the previously submitted arguments were not found persuasive does not preclude them as a submission under 37 CFR 1.114, provided that such arguments are fully responsive.  Consideration of whether any submission is fully responsive to the last outstanding Office action is done without factoring in the “final” status of such outstanding Office action. An Applicant risks a final first Office action, however, so further action would only be prudent.

5.    An appeal brief or reply brief never satisfies the submission requirement.  An RCE that contains a statement that incorporates by reference the arguments in a previously filed appeal brief or reply brief may constitute a submission, however. See MPEP  706.07(h).

6.    An improper RCE in an application under appeal may result in an abandonment or an unwanted allowance. The USPTO treats the filing of an RCE in a case under appeal as a withdrawal of the appeal by the applicant, regardless of whether the RCE includes the appropriate fee or a submission.  Consequently, when an RCE is filed without the appropriate fee or a submission, the application will either be allowed or abandoned, depending on the status of the claims.  If there is at least one allowed claim, the application will pass to issue with the allowed claim(s).  Conversely, if there are no allowed claims, the application will be considered abandoned.   See MPEP  1215.01.

Coming soon – strategic uses of RCEs and submissions

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2008, Michael E. Kondoudis

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

The USPTO website has a new story about the inclusion of USPTO Director Jon Dudas in Managing Intellectual Property Magazine’s 2008 “Top 50 Most Influential People in IP.”  Apart from the merits of the story (forgive me, but I think it is self-evident that such a list would necessarily include the Director of the USPTO), I found a quote attributed to Mr. Dudas to be of particular interest.  On the alleged merits of requiring Applicants to undertake an art search and provide the Office with a search report as part of a “quality initiative,” he stated:

the applicant knows more about their invention that [sic] anyone else.

There it is.  The Director of the USPTO has now acknowledged that the balance of knowledge in an application weighs in an Applicant’s favor.  A creative patent prosecutor can envision any number of ways this admission might be usable in proceedings before the USPTO.  Just a thought.

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2008, Michael E. Kondoudis

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

In an earlier post, I discussed the Office’s policy of compact prosecution and how that policy affects patent prosecution in the USPTO. Under that policy, second Office actions are usually made final, except in limited circumstances. Consequently, except for an allowance or an indication of allowable subject matter, a response that triggers a non-final Office action is often the best result an Applicant can expect. After all, forcing the Office to deviate from its policy of compact prosecution is usually evidence of effective patent prosecution, particularly when a non-final Office action is triggered without a claim amendment.

A Problem – Successive Non-Final Office Actions That Do Not Advance Prosecution

In some cases, however, second, third, or fourth non-final Office actions are arguably the result of poor Office action quality rather than the quality of the patentability arguments. These Office actions are problematic because they don’t advance an application or even provide practical measures of potential patentability, yet they require formal responses. Thus, Applicants incur the expenses of responses without the benefit of advancing prosecution.

A common example of this circumstance is a first non-final Office action that applies poor art. Sometimes, after an Applicant traverses the art rejections with patentability arguments and/or claim amendments that amount to no more than a rewrite of an original independent claim to incorporate an original dependent claim, the Applicant receives another non-final Office action (with new art) and the cycle is repeated.

This post addresses this atypical but vexing situation in which an Applicant is required to respond to successive non-final Office actions that aren’t advancing prosecution. To be clear, this post is NOT intended to address all successive non-final Office Actions. Rather, this post discusses some suggestions for escaping the administrative “purgatory” of successive non-final Office Actions that do not advance prosecution.

By Design or the Result of Ex Parte Prosecution?

Some practitioners, at least anecdotally, seem to be of the opinion that this could be an intentional practice by some art groups in the USPTO, intended to wear down applicants and get them to either: unduly limit their claims rather than seeking protection for the full scope of their inventions; or to abandon their cases. Others are of the opinion that this is the result of the sometimes inefficient process of ex parte prosecution and that Examiners cannot allow claims that they believe to be unpatentable.

Options to Consider

1. Consider An Appeal
One option might be to appeal at least some of the rejections. An applicant whose claim has been twice rejected may appeal, regardless of whether the claim is under a final rejection. See MPEP § 1204.  So, if any claim has faced the same rejection two times, appeal is an option.

2.  Consider an Interview
An Examiner interview is almost always an effective tool to advance prosecution.  Sometimes an Examiner misses novel features of the claims or misunderstands a patentability argument.  An interview is opportunity to meet the Examiner and to refocus prosecution.

3. Remind the Examiner of The Office’s Instructions for Art Searches
The MPEP establishes guidelines for art searches and the goals of these searches. For example, Section 904.02 of the MPEP, entitled General Search Guidelines, advises Examiners that:

The search [for citable art] should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed.

Further, Section 904.03 of the MPEP, entitled Conducting the Search, instructs that:

It is a prerequisite to a speedy and just determination of the issues involved in the examination of an application that a careful and comprehensive search, commensurate with the limitations appearing in the most detailed claims in the case, be made in preparing the first action on the merits so that the second action on the merits can be made final or the application allowed with no further searching other than to update the original search.

This section goes on to warn that:

It is normally not enough that references be selected to meet only the terms of the claims alone, especially if only broad claims are presented; but the search should, insofar as possible, also cover all subject matter which the examiner reasonably anticipates might be incorporated into applicant’s amendment. In doing a complete search, the examiner should find and cite references that, while not needed for treating the claims, would be useful for forestalling the presentation of claims to other subject matter regarded by applicant as his or her invention, by showing that this other subject matter is old or obvious.

(emphasis added).  Finally, Section 904 warns that the examiner should cite only the best discovered art.

If anyone else has other strategies or suggestions to address this circumstance, I invite you to share them with other readers in the comments section.

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2008, Michael E. Kondoudis

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