Patentably Defined

© 2009, Michael E. Kondoudis

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

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

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

And then there are:

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

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

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

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

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

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

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

37 CFR §§ 1.76 (a) and (b).

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

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

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

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

37 CFR 1.76 (d)

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

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© 2008, Michael E. Kondoudis

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

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

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© 2008, Michael E. Kondoudis

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.

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

Patent Attorney in Washington DC

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© 2008, Michael E. Kondoudis

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.

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© 2008, Michael E. Kondoudis

This post discusses strategic considerations concerning identifications of support for claim amendments.

New Matter is Prohibited

Section 706.03(o) of the Manual of Patent Examining Procedure (MPEP) addresses rejections based on new matter (matter not supported by the disclosure at the time of filing). This section of the MPEP, citing 35 U.S.C. § 132, articulates the rule that no amendment may introduce new matter into the disclosure of an invention.

The question of what constitutes new matter may sometimes be difficult to resolve. After all, an Applicant may rely on every part of the application as originally filed for support for a claim amendment. Additionally, an Applicant is entitled to rely on any inherent or implied teachings of the specification, drawing(s), and claims, in addition to the express teachings. Still further, because there is no in haec verba requirement, an Applicant is not constrained to the terminology used in the application as filed.

In view of the occasional difficulty in resolving new matter issues, and the objection/rejection an Examiner is instructed to make if there is a question of whether a claim amendment might introduce new matter, it may be prudent to consider including identifications of support for claim amendments to help avoid good faith, but ultimately incorrect, new matter rejections.

Identifying Support For a Claim Amendment May Have Risk

A cautious prosecutor, however, will recognize that every identification of support carries with it some risk. For example, there is a possible risk of error. This is of particular concern since an Applicant is correlating claim features to portions of the disclosure. Also, unless all support is identified, an Applicant risks an implication that only the identified portion(s) of a disclosure support an amendment. Both the argument estoppel of the former example and the implication of the latter can be problematic in litigation.

Because of the issues, it may be worth considering reserving identifications of specific support for situations when doing so will be advantageous to the Applicant.

A Risk/Reward Analysis Is Useful to Minimize Unnecessary Identifications of Support

A prosecutor can provide value to a client by engaging in a risk/reward analysis and, when the analysis weighs in favor of identifying support, doing so strategically. Here, the analysis might be whether the likelihood of an objection/rejection outweighs the risk of potential litigation issues, in view of factors such as whether: an Examiner has a history of questioning support for claim amendments; claim terminology deviates from what was used in the application as filed; and support will be difficult to locate in the originally filed disclosure.

Strategic Examples

1. A Generic Identification
When a risk/reward analysis does not weigh in favor of identifying support, the following paragraph might be used:

Applicant submits that support for these amendments can be found in the disclosure as originally filed, and therefore no new matter has been added.

2. A Specific, Non-Limiting Identification of Support
When a risk/reward analysis weighs in favor of identifying support for a claim amendment, the question becomes “how to do it?” An adequate way might be to state:

Applicant has amended claim 1. Paragraph [0025] of the Specification supports this amendment. Thus, no new matter has been added.

This identification is acceptable; it is efficient and direct. I submit, however, that this statement does little to address some of the risks inherent to identifications of support. Thus, there is room for improvement. Consider the following example:

Applicant has amended claim 1. Support for this amendment may be found at least at, for example, paragraph [0025] of the Specification as originally filed. Thus, no new matter has been added.

I submit that the latter paragraph is an improvement over the former because it is non-limiting. Consequently, it at least arguably avoids the potential litigation issues discussed above. First, the latter paragraph uses the word “may” instead of “is” or “can.” The word “is” conveys certainty. The word “can” expresses the ability to do something. In contrast, according to many authorities, the word “may” indicates only a measure of likelihood or possibility. Thus, “may” is arguably more appropriate, since the specified location is “an example.” Second, the latter paragraph is crafted to state only that paragraph [0025] provides an example of support, which can be beneficial if other, better, or more advantageous support is identified later in prosecution or litigation.

In the end, the way an applicant identifies support is not as important as understanding when it is necessary and the risks involved. These considerations will dictate how and when to identify support for a claim amendment.

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©  2007 Michael E. Kondoudis

On August 21, 2007, the long awaited final rules (“the new rules”) substantially changing (limiting) continuation practice and requests for continued examination (RCEs) were published. This post is the first of a series discussing practice suggestions and prosecution strategies to consider in response to these changes.

A Summary of the New Rules Regarding Continuation Practice

The new rules limit the the number of continuations to which an Applicant is entitled to two. The new rules also limit the number of RCEs to which an Applicant is entitled to one. After these quotas are exhausted, an Applicant will be required to show why the content of further filings could not have been previously submitted. Importantly, these restrictions apply to each claim family, which the Patent Office defines as including an initial application and its continuation or continuation-in-part applications. Consequently, an Applicant is entitled to just a single RCE for the an entire claim family, as a matter of right.

The New Rules Are An “Amplification” Of The Patent Office’s Policy Of “Compact Prosecution”

The Patent Office says that these new rules will improve application quality and prevent piecemeal and protracted examination, thereby enhancing the quality and timeliness of both the examination process and issued patents. Commissioner for Patents John Doll has been quoted as saying that “[these changes] will lead to a more focused examination process that will effectively promote innovation.”

Commentary On The New Rules

I find it difficult to see how limiting continuations and RCEs will effect the Office’s desired result. In fact, it seems to me (and many others) that the new rules almost guarantee protracted examination by ensuring that more cases will be appealed to the Board of Patent Appeals. It is my belief that the companies that have the resources to file multiple continuations are the ones who will easily have the resources to appeal final rejections. The end result, I believe, will be a tremendous bottleneck at the Board. One of the best discussions of the problems with the new rules was put forth by the AIPLA in a letter to the Patent Office commenting on the new rules when they were proposed last year. I agree with the AIPLA, deliberate and cautious prosecution should not be punished.

Practice Suggestions And Prosecution Strategies

It is axiomatic that one way to minimize the effects of the new rules is to try to avoid final Office Actions, while still deliberately and cautiously prosecuting applications. The following are a few ways to increase the likelihood of achieving this goal.

1. Use the Office’s policy of “compact prosecution” to the Applicant’s advantage

The Office’s policy of “compact prosecution” imposes obligations on Examiners that have important practical ramifications that can be of strategic value in prosecution. So, I suggest getting reacquainted with the policy and exercise every opportunity to use it to try to preclude the finality of second (and/or subsequent) Office Actions. Aspects of the policy of “compact prosecution” as well as examples of how to advantageously use the policy are discussed here.

2. Maximize persuasiveness by avoiding the temptation to make every possible argument in every response

A natural reaction to the new rules is to make every possible patentability argument in every response. I suggest avoiding this temptation. Instead, try to think like the writer of an appeal brief and present to the Examiner only the best two or three patentability arguments available. In other words, follow the adage “less is more.” This approach tends to avoid inadvertently diluting or “burying” the best arguments. Just make certain to take steps to avoid any implication of a waiver of selectively withheld arguments. I discussed some techniques for avoiding any such implications in a couple of earlier posts here and here.

3. Include a summary when multiple patentability arguments are presented

To increase the likelihood that every argument will be considered, I suggest including a summary of the arguments being presented. This will alert the Examiner that multiple, discrete patentability arguments rather than one long argument will follow. One way to accomplish is might be to use the following technique.

Presume that independent claim 1, recites features of an apparatus that includes, among other features, a curved widget with a center passage. Then, an appropriate summary might look like the following.

Applicant respectfully submits that independent claim 1 patentably defines over the asserted combination of the patents to Smith and Jones for at least the following reasons.

1. The asserted combination is deficient because it does not disclose at least the aforementioned features of claim 1, at least because:

(i) the Smith and Jones patents expressly teach that the widget must be flat; and

(ii) the Jones patent does not disclose the center passage.

2.The asserted combination is improper at least because each of the combined citations teaches against the asserted combination.

Also, Applicant respectfully submits that the Office has failed to make out a prima facie case of obviousness against independent claim 1 because it has failed to sufficiently articulate why one of ordinary skill in the art would have been motivated to make the asserted combination.

Coming Up In Part II - Examiner Interviews, After Final Practice, and Pre-Appeal Requests for Review

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© 2007, Michael Kondoudis and Christopher Paul Mitchell (Chris) (www.ipipblog.com)

In McKesson Information Solutions, Inc., v. Bridge Medical, Inc., No. 06-1517 (Fed. Cir. 2007), the Federal Circuit affirmed a dismissal of an infringement suit after finding that the patent in suit was unenforceable due to inequitable conduct. In doing so, the Federal Circuit reaffirmed that a patent may be rendered unenforceable for inequitable conduct if an applicant, with intent to mislead or deceive the examiner, fails to disclose material information or submits materially false information during prosecution.

At issue in McKesson was whether the failure to cite information from one of two similar applications in the other during their pendency constituted inequitable conduct. The information at issue included: a prior-art patent; office actions; and the allowance of the first case.

The McKesson decision is a fact intensive one that does not necessarily break new legal ground. Nonetheless, the decision is significant; not for its general guidance about determining whether a decision to withhold information constitutes inequitable conduct, but for its illustration of the complexities that may arise in the context of “associated” applications, that is, unrelated applications directed to similar technology.

The following are some practice suggestions to promote compliance with the duty of candor in both the narrow context of a particular application and in the broader context of associated applications.

Suggestions For Patent Practitioners

1. Read the McKesson Decision and Rule 56; Understand the Duty of Candor and the Affirmative Defense of Inequitable Conduct

37 CFR 1.56 (“Rule 56”) imposes a duty of candor and good faith in dealing with the United States Patent and Trademark Office (USPTO). This duty generally requires, during the pendency of an application, that each individual associated with the filing and prosecution of that application disclose to the USPTO all known information that is “material to patentability.”

“Inequitable conduct” is an affirmative defense to patent infringement that requires: (1) an affirmative misrepresentation of material fact, a failure to disclose material information, a submission of false information, and/or an attempt to “bury” material information; and (2) an intent to deceive. Materiality may be judged by the “reasonable examiner” standard. An intent to deceive is necessary; an intent to withhold material information is not sufficient. And, the burden of establishing inequitable conduct requires that the asserting party prove a threshold level of materiality and intent by clear and convincing evidence.

2. Educate Clients About the Duty of Candor and Periodically Remind Clients of the Duty

Consider notifying your clients about the “duty of candor” at least at the time of filing and perhaps at other specified stages of prosecution. Whether this notice is via a separate letter or a portion of a reporting letter, it would appear prudent to consider including:

a. a copy of Rule 56 along with a plain English explanation of the rule;

b. examples of potentially material information and possible sources of such information such as co-pending applications directed to similar subject matter, related applications, communications from foreign patent offices regarding associated applications, abstracts, offers for sale, brochures, litigation, and instances of public use; and

c. a reminder that the duty continues until issuance.

3. Establish and Implement a Procedure to Identify “Associated” Applications and to Ensure That “Associated” Applications are “Cross-Pollinated”

A prerequisite to complying with the duty of candor in the context of “associated” applications is to identify these applications. One way to increase the likelihood that applications directed to similar subject matter will be identified is to have a formal policy in place that effects a centralized “association review” of applications, sets a threshold or articulates criteria to evaluate just how similar in subject matter applications must be to render them “associated,” and specifies a procedure to follow when “associated” applications are identified. Some specific components to consider including in this procedure may include:

a. immediately notifying the client of the apparent association of applications so that the client may take internal steps to facilitate compliance with the duty of candor (see number 2 below).

b. drafting memoranda for each of the “associated” applications that identifies the associations. In paperless offices, the memo can be titled “MEMO OF ASSOCIATION” so that it is noticeable when one looks at a file directory. With physical files, a paper memorandum identifying the associations may suffice. Alternatively, on physical files, it may be prudent to consider writing an indicia such as “APPLICATION ASSOCIATED WITH FILE NUMBER XXXX.XXXX” on the cover of the file itself.

c. citing “associated” applications and the information of record therein to the USPTO as early as possible in prosecution.

d. when appropriate, “cross-pollinating” the “associated” applications. Once “associated” applications are identified, information from each application may need to be made of record in each of the other “associated” applications. And, after this initial cross-pollination is completed, it may more easily maintained if a record is made of what has been cited in/from “associated” applications and when.

e. Adding appropriate indicia to your docketing system. Some docketing systems, such as the Intellectual Property Case Tracking System by FlexTrac Systems, Inc., include a related cases tracking feature that may be suitable for tracking “associated” applications.

These steps may be implemented in any number of ways. For example, when two applications are determined to be associated, they may be clearly marked as such on their file covers. Concurrently, the docketing system could be updated to indicate the association. Then a standard letter may be sent to the client explaining the reasons for categorizing the applications as “associated,” the significance of this determination, and how the applications will be prosecuted by the attorney. Next, an information disclosure statement (IDS) could be filed in each “associated” application identifying the other as a co-pending application. In conjunction with the preparation of these IDSs, the information in each “associated” application could be reviewed to determine whether it would be appropriate to make that information of record in the other “associated” application. Thereafter, every time an Office Action is received in one of the “associated” applications, the other “associated” application may be reviewed to determine whether an IDS is appropriate in that application.

Suggestions For Clients

1. Review Advice from Your Attorney about the Duty of Candor and Follow that Advice

(see number 1 above) Make sure that you fully understand the duty of candor. If you are not sure, ask your attorney.

2. Implement Procedures for Ensuring That “Associated” Applications are Appropriately “Cross-Pollinated”

(see number 3 above). This is of particular importance when corresponding foreign applications are being concurrently prosecuted. Information from such corresponding applications may need to be cited in a corresponding U.S. application and those applications that have been determined to be “associated.” In these situations, the necessity of client input is self-evident.

3. Work with your Outside Counsel to Ensure the Duty of Candor is Met

a. Consider directing applications relating to similar technologies to the same office. Along these same lines, consider specifically requesting that applications directed to similar subject matter be handled by the same attorney or team.

b. Consider specifically advising your outside counsel when applications may be sufficiently similar as to warrant an “association review.” (see number 3 above).

c. Never avoid advising your attorney about potentially unfavorable art simply because it may be unfavorable.

Conclusion

The McKesson decision emphasizes the importance of compliance with the duty of candor in the context of unrelated applications directed to similar subject matter. By implementing a thoughtful procedure including components like those outlined above, compliance may be promoted in the broader context of unrelated applications directed to similar subject matter.

On a final note, the authors recognize that treating unrelated applications directed to similar subject matter as “associated” may entail some potential complications in litigation. And, these complexities should certainly be considered when setting the threshold or articulating evaluation criteria used to determine whether applications are sufficiently similar so as to be treated as “associated.” Nonetheless, by carefully and selectively categorizing applications as “associated,” these potential complications, which are the cost of complying with the duty of candor, can be minimized.

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

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©  2007, Michael E. Kondoudis

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?

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

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©  2007, Michael E. Kondoudis

This is the second of a two part series on maximizing patent value by minimizing prosecution time before the U.S. Patent Office.

As in Part I, several strategies to minimize the prosecution time of an application to achieve the earliest possible issue date are presented.

File a Nonprovisional Application Instead of a Provisional Application Whenever Possible

Provisional applications are NEVER examined; only nonprovisional applications are examined. And a utility application that claims the benefit of a provisional filing date is examined according to its own actual filing date, not the provisional filing date. As a result, the period from a provisional application filing date until the filing of a corresponding nonprovisional application delays the start of examination. Only the filing of a nonprovisional application places the application into line for examination.

This is not to say that provisional applications should always be avoided. To the contrary, provisional application can be both useful and necessary because a provisional filing date closes off later prior art from being cited against the application, and may be necessitated by business considerations (i.e., the ability to say “patent pending”), or to avoid a bar to patentability under 35 U.S.C. § 102. Thus, when considerations that outweigh speedy examination are present, a provisional application should be considered. Nonetheless, when possible, it is generally best to avoid filing a provisional application. And, when a provisional application is filed, it is generally best to start the conversion process as soon as possible.

Prosecute Applications Efficiently

Responding to all Office Actions as early as possible (hopefully within the typical three month response deadline set by most Office Actions) tends to speed up patent prosecution. To be sure, responding early to an Office Action yields a benefit measurable in days. This benefit, however, is amplified by routinely responding early to Office Actions. Indeed, routinely responding sooner than required can have a significant cumulative effect, especially when one considers those applications that cause several Office Actions to be generated.

Maintaining efficient communication with the examiner by interview also tends to speed up patent prosecution. Interviews help applicants better understand how an examiner is interpreting cited art, the basis for rejections, and how an examiner will respond to potential claim amendments, often without many of the estoppel effects of paper prosecution. In these ways, interviews may greatly advance prosecution by at the very least making responses to Office Actions more effective.

Filing responses by Express Mail or Facsimile can also reduce prosecution time. Even though responses filed by first class mail are considered to have been filed on the day they are deposited in the mail, they must still be delivered to the PTO before they can be processed and may be lost. In contrast, papers filed electronically or by facsimile are virtually immediately received. In sum, filing electronically or by facsimile is safer and faster.

Take Advantage of Formal Examiner Amendments

MPEP § 1302.04 specifically limits changes to an image file wrapper (IFW) application to either: (1) a formal examiner’s amendment; or (2) an amendment made by the applicant. Also, this section authorizes the use of a formal examiner’s amendment to informalities in the body of the written portions of the specification as well as all errors and omissions in the claims. When faced with a the necessity for modest formal changes, a formal examiner amendment can avoid at least the time the PTO will take to process a response, even if that response is filed electronically.

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

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© 2007, Michael E. Kondoudis

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.

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

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