There is an old saying that “sometimes, less is more.” This advice has particular applicability to patent prosecution where, with each word written, an Applicant risks generating argument estoppel. Additionally, each written word presents with it an inherent risk of introducing error. Further, extended arguments are generally more expensive since they require additional time to draft and edit. Moreover, extended arguments tend to be less persuasive than shorter arguments, perhaps because the argument gets “watered down” or perhaps because it is harder to keep a reader’s attention. In the end, in a risk/benefit analysis, the risks associated with unnecessarily extending a patentability argument generally outweigh any potential benefits. For this reason, I submit that not only is it a generally better practice to present the shortest, most efficient patentability arguments possible, but that it is also worth the time to develop and continually refine approaches that promote this objective.

For instance, a rejection under 35 U.S.C. §103 on the basis that the asserted combination is deficient may be efficiently traversed using the following approach:

1. expressly identifying the claim language on which the patentability argument is based;

2. expressly summarizing the patentability argument being presented;

3. identifying the Office’s concession/admission that one of the cited documents does not disclose all of the claim features (hence the need for the combination);

4. identifying the Office’s contention that the missing claim feature(s) is/are in another cited document and expressly stating that it is this specific contention that is being traversed; and

5. explaining why the Office’s contention is incorrect.

This approach focuses on the claim feature(s) at issue, articulates the specific point of contention, and explains the specific deficiency in the asserted combination. This approach, advantageously, avoids unnecessary characterizations of the claims and the cited art along with the dangers of potential argument estoppel resulting from such unnecessary characterizations.

Examples

Consider the following hypothetical response to a rejection under 35 U.S.C. §103 based on a combination of a primary citation to a patent to Smith and a secondary citation to a patent to Jones.

Independent claim 1 recites, inter alia, a widget on a frame.

Applicant submits that neither Smith nor Jones discloses at least the aforementioned feature of independent claim 1. In particular, it is submitted that secondary citation to Jones does not remedy the conceded deficiency in the primary citation to Smith. Accordingly, without conceding the propriety of the asserted combination, the asserted combination of Smith and Jones is likewise deficient, even in view of the knowledge of one of ordinary skill in the art.

The Office Action concedes that the primary citation to Smith does not disclose a widget on a frame. (Office Action, page 2). Nonetheless, the Office Action rejects independent claim 1, contending that the secondary citation to Jones provides this necessary disclosure. (Office Action, page 3). This contention is respectfully traversed.

Jones relates to a perpetual motion machine and discusses an arrangement including a main board 10, a frame holding the main board 20, and a widget 30. (Jones, Col. 3, lines 3-13; Fig. 2). Jones, however, expressly teaches that widget 30 cannot be located on frame 20. (Jones, Col. 3, lines 25-35). Thus, Jones does not provide a disclosure that remedies the aforementioned, conceded deficiency in the primary citation to Smith.

Of course, this technique works equally as well when there is a deficiency in the primary document. In this case, an efficient response might be:

Independent claim 1 recites, inter alia, a widget on a frame.

Applicant submits that neither Smith nor Jones discloses at least the aforementioned feature of independent claim 1. In particular, it is submitted that the primary citation to Smith does not disclose the claimed widget. Accordingly, without conceding the propriety of the asserted combination, the asserted combination of Smith and Jones is likewise deficient, even in view of the knowledge of one of ordinary skill in the art.

The primary citation to Smith relates to a method of perpetual motion and discusses a process including energizing a moving unit and employing a widget on a substrate to conserve energy. (Smith, FIG. 3).

The Office Action contends that the widget described as being used to conserve energy meets the aforementioned feature of independent claim 1. (Office Action, page 3). This contention is respectfully traversed.

Smith, at column 4, lines 1-18, expressly teaches that the widget must be disposed at a central location on a printed circuit board. Thus, Smith cannot reasonably be interpreted to disclose the aforementioned feature of independent claim 1.

The secondary citation to Jones relates to a perpetual motion machine and is cited for its alleged disclosure of a frame holding a main board. (Office Action, page 3). Applicant submits that Jones does not add anything that would remedy the aforementioned deficiency in Smith. Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under 35 U.S.C. §103 are respectfully requested.

Approaches like these can promote the parallel goals of efficiency and accuracy, which also tends to enhance persuasiveness. Firstly, they minimize argument estoppel by expressly identifying: the claim language relied upon; the specific argument being traversed; and the patentability argument being presented. Thus, ambiguity later usable as alleged argument estoppel is minimized. Secondly, these approaches avoid the temptation to summarize or characterize the claim features at issue by identifying the express claim language once, and thereafter referring to the feature as “the aforementioned feature of claim X.” Lastly, these approaches minimize the length of the argument so as to yield efficiencies and promote a generally more focused and persuasive argument.

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© 2007, Michael E. Kondoudis

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

This is the second of a two-part series on words/phrases that should be used with extreme caution in patent prosecution before the United States Patent Office.

Limitation

It is my belief that a prosecution history that avoids use of the term “limitation” when referring to a claim feature is of greater value in litigation than one in which a prosecutor has used this term. Based on my experience, for some reason, judges and juries seem to attach increased significance to the word “limitation” in legal arguments; perhaps it is because the very word “limitation” has a narrowing connotation that makes it easier for them to adopt a narrower claim construction. For this reason, when I have the option, I prefer not to use the term “limitation,” regardless of how the Examiner characterizes claim elements. Instead, I submit that a better choice is to use the term “feature,” a term that is rather benign and equally as accurate as “limitation.” So, for example, I might write:

The Office Action contends that the widget of the Smith patent meets the aforementioned feature of independent claim 1.

* * * * *

For at least these reasons, the Smith patent cannot teach at least the feature of independent claim 1.

Applicant’s Admitted Prior Art (AAPA)

Many applications, not incorrectly or improperly, discuss known art when explaining the need for the solution provided by a claimed invention. Typically, these discussions, located in the background section of the application, are fair game to apply against the claims of the application. And, when cited by an Examiner, these discussions are commonly characterized as “Applicant’s Admitted Prior Art (AAPA).”

Even if this characterization by the Examiner is not incorrect, a practitioner, as an advocate for an applicant, can produce a far more valuable prosecution history by using a more benign characterization of any such discussion. Like the term “limitation,” based on my experience, for some reason, judges and juries seem to attach increased significance to the word “admitted.” So, when possible, I usually characterize art discussed in an application as “conventional.” Thus, for example, I may write:

Claim 1 stands rejected under 35 U.S.C. 102 as anticipated by the widget discussed in the background section of Applicant’s disclosure (hereinafter “the conventional widget”).

* * * * *

The Office Action contends that the conventional widget includes the aforementioned feature of independent claim 1.

The Examiner

There are two schools of thought about referring to “the Examiner” in communications to the patent office. One says it is a better practice to not make an Applicant’s arguments personal by personally challenging an Examiner’s positions. The other school says it is acceptable. I subscribe to the former school because I do not believe that a patentability argument will be any more effective when it is made personal. In fact, if there is any effect of making a response personal, I submit that it would most likely be detrimental. So, when I have the option, I choose to use alternative sentence/argument constructions that do not require reference to “the Examiner,” such as “the Office Action” or “the Office.” So, for example, I may write:

The Office Action rejects claim 1 as anticipated by …

or

The Office Action states …

or

The Office contends …

Of course, every rule has an exception. When thanking the Examiner or when an Examiner has taken the time to suggest a solution to a rejection or objection, I submit that it can only be advantageous to acknowledge this effort. In doing so, I may write:

The Office Action objected to claim 5 on formal grounds. In response, Applicant has amended this claim in the manner kindly suggested by the Examiner.

or

The Office Action objected to paragraph [0032] of the Specification for an informality. In response, Applicant has amended this paragraph to improve its idiomatic English form in view of the Examiner’s comments.

Prior Art

It is my belief that use of the phrase “prior art” in prosecution yields a less valuable prosecution history than one which avoids use of this phrase. The primary reason is that the phrase “prior art” is a phrase of art that arguably constitutes an admission of the status of asserted art as prior art, undermining any later argument to the contrary. Thus, when the option is available, I use the alternative phrases “cited art” or “asserted art.” This phrase is equally as accurate and persuasive, but without the potential liabilities associated with the use of the phrase “prior art.” As is the case with the term “reference,” there is no rule that asserted art must be called “prior art,” so why not select the least disadvantageous alternative term?

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© 2007, Michael E. Kondoudis

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

This is the first of a two-part series on words/phrases that should be used with extreme caution in patent prosecution before the United States Patent Office.

I’ve come across a recent series of interesting discussions on the “Anything Under the Sun Made by Man” blog by Russ Krajec. In the series, Mr. Krajec makes a convincing case against the use of certain terms/phrases that all too often make their way into patent applications. Specifically, Mr. Krajec explains why the terms/phrases “prior art,” “invention,” and “must” should never be used in patent application because they needlessly expose an application to attack and complicate prosecution. This series of discussions can be respectively found here, here, and here.

This series got me thinking about the terms/phrases I often see used in responses to Office Actions that needlessly create estoppel, complicate litigation, and thus lessen the value of a resulting patent. I submit that patent prosecutors should always carefully consider the language that they select, and should very carefully (re)consider any use of the following terms/phrases in particular.

The Invention/Embodiments of the Invention

The focus of examination is on the claims of an application. It is axiomatic then that an Applicant’s focus should also be on the claims. Accordingly, patentability arguments should always focus on why claims, not “the invention,” patentably define over the cited art. (See for example Section 714.04 of the Manual of Patent Examining Procedure). Statements/characterizations about the invention are inapposite, are often ignored by examiners who are focusing on the claims, and can result in significant, needless argument estoppel.

Take the example of the recent Federal Circuit Decision in Pods, Inc. v. Porta Stor et al. (Fed. Cir. 2006-1504 decided April 27, 2007). In that case, the patentee, in attempting to traverse a rejection of a claim through argument, characterized the invention as allowing “the carrier frame to be elevated and positioned at a rectangular-shaped frame with respect to the container, the vehicle and the ground.” This assertion, the Court reasoned, supported the construction of a separate claim that recited only “a carrier frame” to mean a four-sided frame.

As the Pods case illustrates, with a blanket statement about “the invention,” a prosecutor can risk “grafting” limitations onto each and every claim in the application, even claims that were previously allowed or are later presented, since each claim defines “the invention.” Further, even if this estoppel is successfully avoided in later litigation, it will surely cause a complication that could have been avoided. Still further, these explanations tend to gain very little ground during examination, and very often provoke a form paragraph from the examiner explaining that the asserted features are not in the claims.

For these reasons, using the example of the Pods case, IF one entertains presenting a discussion about an invention, a better practice might be the following approach:

Independent claim 1 recites a carrier frame including right and left longitudinal elements [and] having front and rear transverse elements . . .

By at least these claim features, a carrier frame can be elevated and positioned at a rectangular-shaped frame with respect to a container, a vehicle and the ground. As a result, increased utility and durability can be realized.

I submit that the latter approach, focused on claim features instead of “the invention,” more safely presents an advantage by more likely limiting any argument estoppel that may result to only this claim 1.

A final note, ALWAYS be mindful of Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570 (Fed. Cir. 1995) in which the Federal Circuit held that clear assertions made during prosecution, whether or not those assertions were even necessary to secure allowance, may create estoppel.

Reference/References

The word “reference” is a term of art that tends to imply status as prior art, since litigators and, more importantly, federal courts very commonly describe art cited against claims as “prior art” or a “prior art reference.” When given the option, therefore, I prefer not to use the term “reference” when referring to cited art. I submit that a patent prosecutor, as an advocate for an applicant, can be equally as accurate and persuasive during prosecution by using the alternative terms “citation” or “cited art,” while at the same time producing a prosecution history avoids any negative implications that may be associated with the term “reference.” Remember, there is no rule that any item cited against the claims must be called a reference, so why not select the least disadvantageous term?

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© 2007, Michael E. Kondoudis

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

This is the second of a two part series about efficient and cost effective ways to avoid potentially critical implications by silence during prosecution of an application.

The first part of this series presented techniques for generating a prosecution history that rebuts an implication that additional patentablity arguments were not believed to be available or meritorious. These techniques protect an Applicant (and the prosecutor) from troublesome implications that can arise when patentability arguments are selectively presented.

Implications by silence, however, may also arguably arise from failures to rebut in the prosecution history implied agreement with an Examiner. For example, if an Applicant argues only that an asserted combination of art does not disclose a claim feature, does that mean that the Applicant agreed with the Examiner that the asserted combination was proper (e.g., that there was the requisite motivation to make the combination)? Maybe not. But why not avoid the risks of such an implication entirely, especially because it is so easy to do?

The following are a few additional opportunities in a prosecution history where convenient and cost-effective techniques to accomplish this objective can be applied.

Responses to Rejections Under § 112

Consider the following example concerning a rejection of a claim under the second paragraph of 35 U.S.C. § 112. Assume that the Examiner has rejected the claim as indefinite. After a thorough review, you conclude that it is a close call but one that may very well be traversed by argument. For strategic/business reasons, however, the applicant opts not to fight the rejection but instead to amend the claim.

An adequate explanation in the remarks about applicant’s claim amendment might be:

Claim 5 stands rejected under the second paragraph of 35 U.S.C. § 112, as indefinite. In response, claim 5 has been amended in view of the Examiner’s comments. Applicant respectfully submits that the amendments to claim 5 traverse this rejection. Accordingly, favorable reconsideration and withdrawal of this rejection are respectfully requested.

A better response, however, might be the following paragraph:

Claim 5 stands rejected under the second paragraph of 35 U.S.C. § 112, as indefinite. By the present Amendment, Applicant has amended claim 5 in view of the Examiner’s comments. Applicant respectfully submits that claim 5 now even more fully satisfies the requirements of the second paragraph of 35 U.S.C. § 112. Accordingly, favorable reconsideration and withdrawal of this rejection are respectfully requested.

I submit that the latter response is superior to the former in several ways. First, the latter example reserves the possible future argument that the Applicant did not agree that rejected claim 5 was definite as it was originally presented. This could be of value, for example, if similar claim constructions are presented in parallel applications. In contrast, I think that it the former response needless makes this future argument more difficult to make. Secondly, it may also be of value if the Applicant presents a similarly constructed claim later in prosecution. If that later added claim is similarly rejected, and the Applicant has a change of heart deciding to traverse the rejection by argument, it is far easier to craft a persuasive patentability argument. Thirdly, it is a polite way to “save the argument” that avoids offending or directly challenging the Examiner, which is almost always in an Applicant’s best interests.

This approach can be applied to other non-art rejections as well as objections, such as objection to the title (e.g., Applicant has amended the title to even more accurately describe the claimed subject matter).

Avoiding an Implication that Applicant Agrees that an Asserted Combination is Proper

One of what I believe to be the very most important arguments to expressly reserve in the prosecution history is a challenge to the propriety of any asserted combination. Litigators have far more time to study art and may find support for a challenge to the propriety of a combination or modification. Staying silent on this point during prosecution can arguably blunt the effectiveness of this later argument. For this reason, when I choose to challenge only the sufficiency of a combination in response to a rejection, it is my usual practice to the expressly reserve any argument about whether the combination is proper. One technique I employ is shown by the following example:

Claim 1 recites, among other features, a widget on a vertical surface.

Without conceding the propriety of the asserted combination, however, Applicant respectfully submits that the asserted combination does not disclose at least the aforementioned feature of claim 1, for at least the following reason.

Patent A discusses an arrangement that includes a smidget 20. (Patent A, Col. 5, lines 1-10; FIG. 1).

The Office Action contends that this smidget meets that aforementioned feature of claim 1. (Office Action, page 4).

A review of Fig. 1 of patent A reveals, however, that the smidget 20 is on a horizontal surface. (Id.). Further, patent A expressly teaches that the smidget 20 must be on a horizontal surface. (Patent A, Col. 5, lines 10-12).

Patent B is cited for its alleged disclosure of various features of claim 1 other than the aforementioned feature. Applicant respectfully submits that Patent B does not add anything to the disclosure of Patent A that would remedy the aforementioned deficiency.

Also, Applicant respectfully submits that one of ordinary skill would not have been motivated to combine patent A with patent B.

Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under 35 U.S.C. § 103 are respectfully requested.

The value added by the techniques may be difficult to measure. After all, it is impossible to see the future. I look at it, however, from a cost/benefit perspective. The cost is at most the time required to type these few extra words. Thus, I submit that almost any potential benefit of these techniques, regardless of how remote, outweigh the cost. Additionally, as a former litigator, I submit that it is always a better practice to try to arm future litigators with as many arguments and/or counterarguments as possible. For this reason, when I have the opportunity to at least imply that the Applicant does not agree with an Examiner, I take it.

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© 2007, Michael E. Kondoudis

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

This is the first of a two part series discussing various techniques that take advantage of opportunities in a prosecution history to rebut/preclude disadvantageous implications that often tend to arise in patent litigation. These techniques tend to yield prosecution histories that are more difficult to assail while also providing future litigators asserting the patent with enhanced tactical flexibility.

The Implication That Only The Arguments Presented Were Believed to Be Meritorious

One of the important strategic decisions in responding to a claim rejection is to identify which argument(s) should be presented. This is especially true when it appears that any of several arguments would be successful. Sometimes, it may be advantageous to present every argument believed to have merit. This approach, however, increases possible argument estoppel and can be expensive. For these reasons, it is often advantageous to present fewer than all possible meritorious arguments. This argument selection process can be based on myriad factors. For example, will it be more effective to present the shortest, most efficient argument or a legal argument against, for example, motivation to make a combination? How about discussing the easiest claim feature not taught or suggested by the cited art? How about the first claim feature? For some prosecutors, this is where their analysis often ends. I submit, however, that when fewer than all possible arguments are presented, it can be a better practice to make it clear in the prosecution history that other possible arguments were believed to have merit. In this regard, consider the following:

1. There is nothing to be gained by exposing an Applicant in future litigation to the argument that the Applicant only believed that claims were patentable only for the reason(s) presented while there is much that might be gained by avoiding the argument entirely.

2. This approach is prudent, unless a prosecutor is confident that the argument presented is by far the best one, and liberates a prosecutor to more safely selectively discuss the feature most likely to win the day (e.g., the easiest to explain to an Examiner, the first feature, or the feature requiring the shortest argument).

3. This approach makes it easier for litigators to make alternative/additional patentability arguments in the future, if later evaluation of the cited art in litigation reveals such arguments have merit.

Specific Techniques

Having established that avoiding an implication that only those arguments presented in prosecution were believed to have merit is important, I have found the following techniques to be subtle, efficient, and effective for avoiding this implication.

1. When Allowed/Allowable Subject Matter is Indicated

Perhaps the most elegant and efficient technique is to add a phrase/statement in the following exemplary paragraph I use when allowable/allowed subject matter is indicated.

Applicant acknowledges with appreciation the indication that claims 1-10 are allowed and that claims 11-20 recite patentable subject matter and would be allowable if rewritten in independent form to include all of the features of their respective base claims and any intervening claims. By the present Amendment, Applicant has not amended any of allowed claims 1-10. Accordingly, Applicant respectfully submits that claims 1-10 should remain allowed. Also, Applicant has respectfully maintained claims 11-20 in dependent form because it is believed that their respective base claims patentably define over the cited art, for at least the reasons discussed herein.

It is to be appreciated that this exemplary paragraph serves three functions. First, it expressly implies that other meritorious reasons for patentability are possible. Second, it is hyper-accurate; representing only that the allowed claims, which may have been previously amended, are not amended by the present Amendment. Thirdly, it is an attempt to subtly and politely disagree with an Examiner who has identified allowable subject matter in some claims.

2. In a Traversal

Another technique is to insert specific phrases in the traversal of the rejection that rebut the presumption. Consider an oversimplified example in which a claim 1 is rejected under 35 U.S.C. § 103 over the combination of patent A and patent B that, after review, is determined to be deficient, failing to disclose a feature of the claim. An adequate response might include the following paragraphs:

Claim 1 recites, among other features, a widget on a vertical surface.

Applicant respectfully submits, however, that the asserted combination does not disclose the aforementioned feature of claim 1.

Patent A teaches a widget 20. (Patent A, Col. 5, lines 1-10; FIG. 1). The Office Action contends that Patent A discloses a widget on a vertical surface. (Office Action, page 4). This contention is respectfully traversed.

Patent A expressly teaches that widget 20 is on a horizontal surface. (Id.).

Patent B is cited for its alleged disclosure of various features of claim 1 other than the aforementioned feature. Applicant respectfully submits that Patent B does not add anything to the disclosure of Patent A that would remedy the aforementioned deficiency.

Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under 35 U.S.C. § 103 are respectfully requested.

Such a response adequately presents the argument that the asserted combination is deficient. The response, however, arguably implies that the Applicant believed that the asserted combination was proper. Also absent is any indication that the Applicant might have believed, for example, that claim 1 patentably defined over the cited art for any other reason. Consequently, the resulting prosecution history does not provide a strong defense against these implications. Thus, a better approach might be the following:

Claim 1 recites, among other features, a widget on a vertical surface.

Applicant respectfully submits that the asserted combination does not disclose at least the aforementioned feature of claim 1, for at least the reasons discussed below.

Patent A teaches a widget 20. (Patent A, Col. 5, lines 1-10; FIG. 1). The Office Action contends that Patent A discloses a widget on a vertical surface. (Office Action, page 4). This contention is respectfully traversed.

Patent A expressly teaches that widget 20 is on a horizontal surface. (Id.).

Patent B is cited for its alleged disclosure of various features of claim 1 other than the aforementioned feature. Applicant respectfully submits that Patent B does not add anything to the disclosure of Patent A that would remedy the aforementioned deficiency.

Accordingly, for at least the aforementioned reasons, reconsideration and withdrawal of the rejections of claim 1 under 35 U.S.C. § 103 are respectfully requested.

I submit that the latter response yields potentially significant advantages over the former, without increased cost or effort. The latter response, if it results in an allowance will, in the absence of any statement of reasons for allowance, provide future litigators with several options on which to argue the patentability of claims or several arguable bases on which the claims were allowed. This can be advantageous if any one patentability argument is later proven to be incorrect, which can happen during litigation when prosecution histories are often studied in great detail. In this regard, the latter approach also provides a “safety net” for the prosecutor, since it can be argued that at least one of the arguments presented was properly persuasive.

3. An Omnibus Paragraph

Still another technique is to add a paragraph after all of the traversals in an Amendment that expressly explains that the absence of additional patentability arguments should not be construed as either a disclaimer of such arguments or that such arguments are not believed to be meritorious.

I submit that the techniques presented thus far provide the prosecutor the flexibility to selectively present the most appropriate argument (e.g., the easiest to explain to an Examiner, the first feature not present, or the feature requiring the shortest argument). Second, I submit that this approach makes it easier for litigators to make other patentability arguments in the future. Thirdly, these techniques provide an extra layer of safety to the prosecutor in the unlikely event that the prosecutor did not present the strongest argument.

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© 2007, Michael E. Kondoudis

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