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.

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© 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

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© 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.

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© 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.

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© 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)).

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© 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.

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© 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.

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© 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

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© 2008, Michael E. Kondoudis

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

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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© 2008, Michael E. Kondoudis

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

In an earlier post, I discussed reasons why it is preferable to rely on the MPEP for authority during prosecution. An exception to this guideline is when the MPEP is either incorrect or incomplete, which I suggest is the case with newly revised Section 2143.03.

So what is an Applicant to do when the MPEP is incomplete? My suggestion, anecdotally seconded by many readers of this blog, is to cite decisions of the Board of Patent Appeals and Interferences (BPAI). Fortunately, the BPAI still enforces the all elements test.

For example, a January 2008 BPAI decision entitled In re Wada and Murphy (pdf) reversed a § 103 rejection because the Examiner did not explain where or how cited art taught or suggested all of the features of a claimed invention (thank you Yancey Hunter!). Of particular interest is the following BPAI articulation of applicable law:

When determining whether a claim is obvious, an examiner must make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis added). Thus, “obviousness requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). Moreover, as the Supreme Court recently stated, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (emphasis added)).

Authority such as this is difficult for an Examiner to dismiss.

Example of a Brief Legal Summary

The following is an example of a brief discussion of the current state of the “all elements test” that might be usable to advise an Examiner that the Office cannot simply ignore a claim feature in an obviousness determination. Presume that independent claim 1 has been rejected under § 103 as unpatentable over an asserted combination of two patents to Smith and Jones but that a specified feature has not been specifically addressed by the Office.

For any of these reasons, the aforementioned feature of independent claim 1 cannot reasonable be said to be present in the asserted combination.

The failure of an asserted combination to teach or suggest each and every feature of a claim remains fatal to an obviousness rejection under 35 U.S.C. § 103, despite any recent revision to the Manual of Patent Examining Procedure (MPEP).

Section 2143.03 of the MPEP requires the “consideration” of every claim feature in an obviousness determination. To render claim 1 unpatentable, however, the Office must do more than merely “consider” each and every feature for this claim. Instead, the asserted combination of the patents to Smith and Jones must also teach or suggest each and every claim feature. See In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974) (emphasis added) (to establish prima facie obviousness of a claimed invention, all the claim features must be taught or suggested by the prior art). Indeed, as the Board of Patent Appeal and Interferences has recently confirmed, a proper obviousness determination requires that an Examiner make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” See In re Wada and Murphy, Appeal 2007-3733, citing In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis in original). Further, the necessary presence of all claim features is axiomatic, since the Supreme Court has long held that obviousness is a question of law based on underlying factual inquiries, including … ascertaining the differences between the claimed invention and the prior art. Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966) (emphasis added). Indeed, Applicant submits that this is why Section 904 of the MPEP instructs Examiners to conduct an art search that covers “the invention as described and claimed.” (emphasis added). Lastly, Applicant respectfully directs attention to MPEP § 2143, the instructions of which buttress the conclusion that obviousness requires at least a suggestion of all of the features of a claim, since the Supreme Court in KSR Int’l v. Teleflex Inc. stated that “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

In sum, it remains well-settled law that obviousness requires at least a suggestion of all of the features in a claim. See In re Wada and Murphy, citing CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) and In re Royka, 490 F.2d 981, 985 (CCPA 1974)).

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© 2008, Michael E. Kondoudis

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

A while back, in response to my post on citing to the Manual of Patent Examining Procedure, reader Michael Hull of Miller, Matthias & Hull asked an astute question (thank you!) about whether section 2143 of the Manual of Patent Examining Procedure (MPEP) would be rewritten in response to KSR. Well, for those who may not be aware, this section has indeed been rewritten. One of the more noteworthy revisions is the removal of the so-called “all elements test” from section 2143.03, which requires the teaching or suggestion of every claim feature by an asserted combination/modification.

The specific changes to section 2143.03 are indicated below:

2143.03 All Claim Limitations Must Be Taught or SuggestedConsidered

To establish prima facie obviousness of a claimed invention, all the claim features must be taught or suggested by the prior art. In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974). All words in a claim must be considered in judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). If an independent claim is nonobvious under 35 U.S.C. 103, then any claim depending therefrom is nonobvious. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988).

It remains to be seen if this particular modification will have any significant effect on prosecution (except to lengthen it and possibly result in more appeals). Based on the following, however, I submit that the all elements test is still good law and should remain in a prosecutor’s arsenal. Consider the following:

1. The MPEP is not law. The Federal Circuit has repeatedly affirmed that the MPEP does not have the force of law. Rather, it is evidence the USPTO’s interpretation of statutes and regulations. Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180 (Fed. Cir. 1995).
2. The USPTO is bound by Federal Circuit precedent. This is blackletter law. 35 U.S.C. § 2(b) authorizes the Commissioner of the USPTO to establish regulations not inconsistent with law for the conduct of proceedings before the USPTO. Also, it is for this reason that the Federal Circuit has jurisdiction over appeals from decisions by the Board. See 35 U.S.C. § 141.
3. KSR did not overrule In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974). The KSR decision did not address the issue of the all elements test because all of the elements were present in the asserted combination. Instead, it was the propriety of the asserted combination that was at issue. I addressed KSR and some of its effects in an earlier post here. Thus, In re Royka is still good law.
4. New, revised section 2143.03 is not incorrect, just incomplete. Section 2143.03 instructs Examiners to consider each claim feature. This is not an incorrect statement of the law regarding 35 U.S.C. § 103. However, it is also correct that, in addition to consideration, In re Royka still requires that each claim feature must be present (i.e., taught or suggested) by an asserted combination.

Coming up – Examples of ways to assert the all elements test in view of the revision to section 2143.03.

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© 2008, Michael E. Kondoudis

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

This post is the second in a series addressing written description rejections. The following are basic examples of responses to written description rejections that apply some of the principles I discussed in my earlier post on the fundamentals of the written description requirement.

Examples

1. The Office Action Fails to Establish a Prima Facie Case

The Office Action rejected claim 2 for allegedly failing to comply with the written description requirement of the first paragraph of 35 U.S.C. § 112. Applicant respectfully submits that the Office has, by only providing mere conclusory statements, failed to satisfy its burden to articulate a prima facie case. Without adequate notice of the basis of this rejection, the burden to rebut this rejection with evidence and/or argument has not yet shifted to Applicant.

The MPEP repeatedly warns that the Office bears an initial burden of establishing a prima facie case when making a written description rejection. (MPEP §§ 706.07, 2163 (III)(A)). A prima facie case requires a reasonable basis to challenge the adequacy of the written description. (MPEP § 2163.04). The MPEP equates this reasonable basis with “a preponderance of evidence why a person skilled in the art would not recognize in an applicant’s disclosure a description of the invention defined by the claims.” (MPEP § 2163(III)(A)). Consequently, the Office must provide a reasonable basis to reject a claim for failing to satisfy the written description requirement, and this requires “a full development” of the reasons showing that, by a preponderance of the evidence, a person of ordinary skill in the art would not recognize a description of the claimed invention in the disclosure. In this regard, the MPEP; expressly instructs that merely conclusory statements are insufficient. Rather, every written description rejection “should be stated with a full development of the reasons rather than by a mere conclusion….” (MPEP § 706.03). Stated another way, the Office must adequately explain the perceived shortcomings of the application so that Applicant is properly notified and able to respond. Finally, until the Office establishes a prima facie case, an Applicant is not under an obligation to rebut the rejection. (MPEP § 2163.04). Applicant respectfully submits that such is the case here.

The written description rejection is set forth in its entirety at page 4 of the Office Action, and merely states that the radiator of claim 2 is not supported by the specification. Absent from this rejection, for example, are any “reasoned or supported statements” supporting this rejection, as the MPEP expressly requires. Indeed, the rejection is devoid of “evidence or reasons” as to why the disclosure fails to reasonably convey to one of ordinary skill in the art that Applicant possessed the claimed invention. Thus, the Office has failed to set forth express findings of fact that support the lack of written description conclusion as its own procedures require. (MPEP §2163.04). Rather, the provided “reason” is a mere conclusion, which the MPEP expressly warns is insufficient to support this rejection. (MPEP § 706.03).

The Office’s failure to meet its burden to articulate a “reasonable basis challenging the adequacy of the written description” with “findings of fact” is fatal to this rejection since Applicant is under no burden to rebut it. (MPEP §§ 706.07, 2163, 2163.04). 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, “properly reasoned and supported statements” that sufficiently explain what, in the Examiner’s view, is missing from the written description.

2. A Substantive Response

Claims 1-14 stand rejected under the first paragraph of 35 U.S.C. § 112 for allegedly failing to comply with the written description requirement. Specifically, the Office Action contends that Applicant’s disclosure does not sufficiently describe the steam valve controller features of amended claims 1, 6, and 10. This contention is respectfully traversed.

When a disclosure describes a claimed invention in a manner that permits one skilled in the art to reasonably conclude that the inventor possessed the claimed invention the written description requirement is satisfied. (MPEP §2163 (emphasis added)). This possession may be shown in any number of ways and an Applicant need not describe every claim feature exactly because there is no in haec verba requirement. (MPEP § 2163). Rather, to satisfy the written description requirement, all that is required is “reasonable clarity.” (MPEP § 2163.02). Also, an adequate description may be made in any way through express, implicit, or even inherent disclosures in the application, including words, structures, figures, diagrams, and/or formulae. (MPEP §§ 2163(I), 2163.02). Finally, it is important to be mindful of the generally inverse correlation between the level of skill and knowledge in the art and the specificity of disclosure necessary to satisfy the written description requirement. (MPEP § 2163(II)(A)(2)) (inventions in “predictable” or “mature” require a lesser showing of possession than inventions in more “unpredictable” arts).

As the Office Action notes, independent claims 1, 6, and 10 now recite a controller that operates steam valves to control the feeding of steam into feed pipes. Applicant submits that one of ordinary skill in the art would reasonably conclude that Applicant’s disclosure adequately described the claimed invention at the time of filing at least because:

(1) the feature of the controller is at least impliedly taught by the present application as it was originally filed; and

(2) art to which the claimed invention belongs is mature and the predictable nature of the art mandates a generally lower showing of possession.

A review of the present application reveals that Applicant describes using steam valves to control operations of steam feed pipes. (See application, e.g., paragraphs [0031], [0032], and [0036]-[0038]). Those of ordinary skill in the art would understand that such a disclosure at least implies the presence of some construct to control the steam valves, especially in view of the maturity and predictability of the subject art.

Applicant also described and illustrated a controller 13 that manages baking operations, including baking operations that include steam. (See application, e.g., paragraph [0039]; FIGS. 2 and 3). Those of ordinary skill in the art would understand that such a disclosure at least implies (and arguably expressly describes) that the controller controls the delivery of steam to the steam pipes. Further, it is respectfully submitted that one of ordinary skill in the art would have understood that such a controller could be used to control various operations of a steam oven through valve control.

In view of the foregoing, Applicant respectfully submits that ordinarily skilled artisans would reasonably conclude that Applicant possessed the claimed controller on the basis of the aforementioned at least implicit descriptions. Applicant further submits that this conclusion is buttressed by the maturity and predictability of the art and because an adequate disclosure need not be express or even implied. Thus, the present application adequately describes the claimed invention.

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

In the event that the Office maintains this rejection, Applicant respectfully requests, in the interest of its policy of compact prosecution, that the Office explain how the aforementioned portions of the present application fail to communicate to a skilled artisan that Applicant possessed the claimed invention.

3. Original Subject Matter is Rejected

Claim 5 stands rejected under the first paragraph of 35 U.S.C. § 112. Specifically, the Office Action contends that the claim recitation “a widget” is not adequately supported by the specification. (Office Action, page 5). This contention is respectfully traversed.

To satisfy the written description requirement of the first paragraph of 35 U.S.C. § 112, a disclosure need only describe a claimed invention in a manner sufficient to reasonably convey to those skilled in the relevant art that Applicant possessed the claimed invention. This possession may be shown in any number of ways and an Applicant need not describe every claim feature exactly. (MPEP §2163 (emphasis added)). Rather, all that is required is “reasonable clarity.” Also, original subject matter enjoys a “strong presumption” of compliance with the written description requirement. (MPEP §§ 2163 (I)(A), 2163(II)(A), 2163(II)(A)(3)(a)).

The MPEP, in section 2163 (I)(A), identifies several factors that are to be considered in a proper analysis of whether original subject matter complies with the written description requirement, including:

1) the level of skill and knowledge in the art;
2) any disclosure of partial structure;
3) any disclosure of physical/chemical properties;
4) any functional characteristics/correlation between structure and function; and

Initially, it is important to recognize that the rejected subject matter is original to this application. Thus, the Office must overcome a strong presumption that the rejected claims with the written description requirement. This is because a description as originally filed is presumed to be adequate, unless or until evidence or reasoning to the contrary has been presented by the examiner sufficient to rebut the presumption. (MPEP § 2163.04).

Applying these aforementioned factors to the present application reveals that the claimed feature of “a widget” is adequately described. [Application of factors regarding original subject matter].

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© 2008, Michael E. Kondoudis

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

Patent examination in the U.S. Patent Office is guided by the principles of compact prosecution, which I discussed in some detail in an earlier post here. Under the principles of compact prosecution, second Office actions are typically final.

The finality of second Office actions is addressed in section 706.07(a) the Manual of Patent Examining Procedure (MPEP), which provides 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 during the period set forth in 37 C.F.R. §1.97(c) with [the appropriate fee].”

37 C.F.R. §1.97(c) provides that [upon satisfying certain prerequisites] an information disclosure statement shall be considered by the Office if it is filed after a first or non-final Office action but before the mailing date of a final Office action, a notice of allowance, or an action that otherwise closes prosecution.

Thus, when the Office has to introduce a new ground of rejection and that new ground of rejection is not necessitated by either:

(1) a claim amendment; or

(2) information submitted by the applicant between the immediately preceding action and a current Office action

then the next Office action cannot properly be made final.

So, for example, when a non-final Office action wholly fails to address a claim or fails to explain the basis for a rejection and the basis is not already of record, the finality of a next Office action rejecting that claim may be precluded. In the latter scenario, there are two arguments for this preclusion. First, any detailed rejection of the subject claim(s) in a next Office action may constitute a new ground rejection that was not necessitated by a claim amendment or an IDS. Second, the failure to adequately articulate the basis for rejecting a claim is a failure to provide the adequate notice that shifts the burden of rebuttal to the applicant. This is especially important when technical (non-art) rejections (e.g., §101 (patentable subject matter) are at issue because of the specific instructions of sections of the MPEP such as § 706.03 (major technical rejections (e.g., lack of proper disclosure, undue breadth, utility, etc.) should be stated with a full development of the reasons rather than by a mere conclusion coupled with some stereotyped expression).

Also, when an applicant successfully traverses a rejection by argument alone (e.g., presents a persuasive patentability argument or disqualifies cited art), the finality of next Office action may be suspect. For example, it is not uncommon for an Office action to reject some claims based on art (e.g., 35 U.S.C. §102 (anticipation) and/or 35 U.S.C. §103 (obviousness)) and to reject other claims based on technical (non-art) grounds. When the technical rejection of a claim is traversed by argument alone and no other grounds for rejection of that claim are presented, the finality of a next Office action rejecting that claim is precluded.

These limited circumstances precluding finality are not common and other issues sometimes camouflage them. Nevertheless, when they are present, a well-informed applicant can help himself or herself avoid an improper final Office action (along with the cost and inconvenience of having to prepare a paper asking for the withdrawal of that finality).

The following are some examples of ways to advise the Office, in a response to a non-final Office action, that a subsequent Office action cannot properly be made final.

1. Example – The Office Action Wholly Fails to Acknowledge a Claim

In this circumstance, a response might include a section such as:

Finality of the Next Action Is Precluded

Lastly, Applicant respectfully requests that the Office confirm the status of independent claim 19, which was not addressed by the Office Action. Applicant respectfully submits that the Office’s failure to acknowledge claim 19 precludes the finality of a next Office action rejecting that claim, because such a rejection will not have been necessitated by either a claim amendment or based on information from an information disclosure statement. (See MPEP § 706.07(a)).

2. Example – The Office Action Fails to Specifically Reject a Claim in the Detailed Action – An Arguable Absence of a Prima Facie Case

In this situation, a response might include a statement like the following:

Finality of the Next Action Is Precluded

Applicant notes the Office Action does not specifically reject independent claim 19. Indeed, although the Summary of the Office Action indicates that claim 19 stands rejected, the Detailed Action omits any explanation of how any cited art anticipates [or renders obvious] this claim. Applicant respectfully submits that this omission amounts to a failure to articulate a prima facie case of unpatentablity and the burden to rebut this “rejection” has not yet shifted to the Applicant. Consequently, a next Office action rejecting claim 19 cannot properly be made final since only then would the Applicant be obligated to rebut the rejection, presuming that such an Office action sets forth a prima facie case. (See MPEP § 706.07(a)).

3. Example – The Office Action Makes Only a Rebutted Technical (Non-Art) Rejection Against a Claim

Here, an appropriate response might include a section like the following:

Accordingly, Applicant respectfully requests favorable reconsideration and withdrawal of the rejection under 35 U.S.C. § 101.

Finality of the Next Action Is Precluded

Applicant notes the absence of an art rejection against independent claim 19 and respectfully submits that a next Office Action rejecting this claim under any section of Title 35 of the United States Code other than 35 U.S.C. § 101 cannot properly be made final because such a rejection will not have been necessitated by a claim amendment or based on information from an information disclosure statement. (See Section 706.07(a) of The Manual of Patent Examining Procedure).

Conclusion

U.S. Patent Office rules preclude the finality of an Office action in certain limited circumstances. Keeping these circumstances in mind when responding to non-final Office actions, and using techniques like those discussed above, may help an applicant avoid improper final rejections, without having to incur the expense and inconvenience of having to request the withdrawal of improper finality. So, when appropriate circumstances are present, consider memorializing, in responses to non-final Office actions, reasons why finality of a next Office action would be improper.

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© 2008, 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 written description requirement. This first installment discusses the fundamentals of the requirement, relevant law, and the proper standards for compliance. The second installment will provide examples of how to more effectively respond to rejections based on the written description requirement.

The Basis for the Written Description Requirement

The written description requirement arises from the first paragraph of 35 U.S.C. § 112 states:

The specification shall contain a written description of the invention, and of 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, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

In ex parte prosecution, the written description requirement is most often applied against newly presented or amended claims. This requirement can also be applied against original claims and claims copied to provoke an interference, however.

Fundamentals of the Written Description Requirement

1. The written description requirement (WDR) requires an Applicant to demonstrate possession of each feature of a claimed invention. The Federal Circuit has described the function of the WDR as “[ensuring] that, as of the filing date, the inventor conveyed with reasonable clarity to those of skill in the art that he was in possession of the subject matter of the claims. Union Oil Co. of Calif. v. Atlantic Richfield Co., 208 F.3d 989 (Fed. Cir. 2000).

2. The Patent Office’s guidelines for examination of patent applications under the written description requirement are found in Section 2163 of the MPEP. This should be an Applicant’s primary resource for authority when articulating responses to WDR rejections.

3. An Applicant satisfies the WDR by describing all of the features of a claim in a manner that “reasonably conveys” to one of ordinary skill in the art that the Applicant possessed the claimed invention as a whole. (MPEP § 2163(I)). To do so, an Applicant may rely on words, structures, figures, diagrams, and formulae of the disclosure. (MPEP §§ 2163(I), 2163.02). A patent specification satisfies the WDR when it discloses a claimed invention in sufficient detail so that one skilled in the art can “reasonably conclude” that the inventor had possession of the claimed invention at the time of filing. (MPEP § 2163(I).

4. There is no one way to show possession of a claimed invention. (MPEP § 2163(I)). Rather, possession may be shown by any description of sufficient, relevant, identifying characteristics that would cause a person ordinarily skilled in the art to recognize that the inventor had possession. (MPEP § 2163(II)(A)(3)(a)).

5. Although originally filed subject matter does not ipso facto satisfy the WDR, originally filed subject matter enjoys a “strong presumption” of compliance with the WDR. (MPEP §§ 2163 (I)(A), 2163(II)(A), 2163(II)(A)(3)(a)). This is because a description as originally filed is presumed to be adequate, unless or until evidence or reasoning to the contrary has been presented by the examiner sufficient to rebut the presumption. (MPEP § 2163.04). The MPEP identifies some factors that are to be considered in a proper WDR analysis of original claims. These factors include:the level of skill and knowledge in the art;
the disclosure of partial structure or physical/chemical properties; and
any functional characteristics/correlation between structure and function.MPEP §2163 (I)(A). Note: This presumption is most often implicated in rejections contained in first Office Actions, but this presumption is something to keep in mind anytime originally presented subject matter is rejected for failure to satisfy the WDR.

6. Three more points.A. The first paragraph of 35 U.S.C. § 112 does not require that an Applicant to describe claim limitations exactly. (MPEP § 2163.02). Instead, an Applicant need only do so with “reasonable clarity” (MPEP § 2163.02) so that a skilled artisan can “reasonably conclude” the Applicant’s possession.B. Generally, there is an inverse correlation between the level of skill and knowledge in the art and the specificity of disclosure necessary to satisfy the written description requirement. (MPEP 2163(II)(A)(2)). Thus, inventions in “predictable” or “mature” arts are theoretically subject to less scrutiny under the written description requirement, and should require a lesser showing of possession than more “unpredictable” arts.C. An Applicant need not disclose in detail, and preferably omits, that which is conventional or well known in the art. (MPEP § 2163(II)(A)(2)).

The Office Always Bears An Initial Burden When Making a Written Description Rejection

1. It is always incumbent on an Examiner to fully develop the reasons for a WDR rejection. Firstly, 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. Secondly, 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))

2. A prima facie case requires a reasonable basis to challenge the adequacy of the written description. (MPEP § 2163.04). The MPEP equates this reasonable basis with “a preponderance of evidence why a person skilled in the art would not recognize in an applicant’s disclosure a description of the invention defined by the claims.” (MPEP § 2163(III)(A)). Consequently, the Office must arguably provide a reasonable basis to reject a claim for failing to satisfy the WDR, and this requires “a full development” of the reasons showing that, by a preponderance of the evidence, a person of ordinary skill in the art would not recognize a description of the claimed invention in the disclosure.

An Approach for Responding to Written Description Rejections

An Applicant should first consider whether the Office has met its burden to establish a prima facie case. The burden on an Examiner to establish a prima facie case cannot be overemphasized. In the absence of a prima facie case, an Applicant is under no obligation to present a rebuttal. So, until the Office has met this initial burden to “fully develop reasons for the rejection by providing “properly reasoned and supported statements,” the obligation to rebut a written description rejection does not shift to the Applicant. Generally then, when an Office Action provides merely conclusory statements, the rejection should be traversed on this ground alone so as to avoid argument estoppel and minimize expense.

Next, an Applicant should analyze every specific reason for its particular basis and reasoning. Flaws and inconsistencies in the reasoning can be used to traverse the rejection since faulty and/or incomplete reasoning likely does not rise to the level of a preponderance of the evidence.

A Basic Template For A Response To A Written Description Rejection

When traversing a WDR, it is usually useful to consider including the following five–point “roadmap”:

1. A “when / then” statement articulating the appropriate legal standard (e.g., when Applicant does this, then the requirement of 35 U.S.C. § 112 is satisfied);

2. Reminding the Office that it has the burden of establishing a prima facie case;

3. Advising the Office relevant examination guidelines including presumptions or instructions;

4. Explaining how the Office has not met burden; and/or explaining how the Applicant has satisfied the WDR.

The Patent Office’s Training Materials

The Patent Office has provided Examiners with several decision trees that are useful to measure the sufficiency of a WDR rejection as well as a quick reference to help understand what an Examiner might be trying to convey. These materials can be found here.

Coming up – Examples of responses to written description rejections that apply the fundamentals of the WDR and the basic template.

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© 2008, Michael E. Kondoudis

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

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

Generally, during the examination of an application, an Examiner attempts to rebut the novelty and non-obviousness of a claim by identifying, in the prior art, teachings or suggestions of each feature of that claim. Some claim features, however, may be ignored in this analysis. These features are said not to be entitled to any “patentable weight.”

One of the claim components that frequently gives rise to disputes about patentable weight is a claim’s preamble (e.g., a device for) which, along with a transitional phrase (e.g., comprising) and a body (e.g., a wheel), constitutes a claim.  Examiners generally decline to consider the novelty and non-obviousness of a claim’s preamble because preambles tend to only provide a context or a purpose for a claimed invention.Similarly, Examiners often dismiss as unpersuasive patentability arguments based on features recited in a preamble.This is, however, by no means a per se rule. Indeed, there are circumstances when features in a claim’s preamble must be given patentable weight.Consequently, when an Applicant relies on features in a preamble to traverse a claim rejection, it often becomes necessary to explain to the Examiner why those features are entitled to patentable weight.

The Test and the Law
There is no litmus test for determining whether a preamble should be given patentable weight. Basically, a claim preamble is said to be as important as the claim as a whole suggests.  Rather, A preamble is entitled to patentable weight when it is “necessary to give life, meaning, and vitality” to the claim.Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). The Federal Circuit has held that a preamble may give “life, meaning and vitality” to a claim either: (1) explicitly (the claim expressly uses the preamble and the body of the claim to define the claimed invention); or (2) implicitly (proper construction of the claim requires reference to the preamble).So, when an Applicant uses the body of a claim and the preamble to define the claimed subject matter, the preamble should be accorded patentable weight. Conversely, when the body of the claim “fully and intrinsically” sets forth the claimed invention, the preamble may not be entitled to patentable weight. As the Pitney Bowes court instructed, when a preamble “offers no distinct definition of any of the claimed invention’s limitations, but rather merely states . . . the purpose or intended use of the invention,” then the preamble cannot be read as a limitation on a claim. The MPEP addresses the patentable weight of preambles in section 2111.02, which provides the following limited, specific guidance:

1.Preambles that limit structure must be given patentable weight (MPEP 2111.02(I)); and
2.Preambles reciting a purpose or an intended use may be given patentable weight (MPEP 2111.02(II). Specifically, features in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the cited art. If so, the recitation serves to limit the claim.

An Example of an Argument that a Claim Preamble Should Be Given Patentable Weight
Presume that claim 1 recites the following:
A method of transmitting a packet over a system including a client and a source device, the packet including a source address and a destination address, the method comprising:
assigning, by the source device, one of plural trees to broadcast the packet to the destination address; …
associating with the packet an identifier indicative of one of the trees.

An appropriate response to an Office Action that dismisses a patentability argument based on features recited in the preamble (that the cited art does not teach or suggest a packet that includes a destination address), may be the following:

Applicant notes, at page 4 of the Office Action, the Office’s contention that features recited in the preamble of claim 1, and in particular a packet “including … a destination address” need not be accorded any patentable weight. This contention is respectfully traversed as being incorrect as a matter of law.

It is established law that when a preamble of a claim provides more than just context for the claimed invention, that preamble should be given patentable weight. Indeed, when , as is the case here, the body of the claim expressly refers to features in a preamble and uses those referenced features to define the claimed invention, it is legal error not to give that preamble patentable weight.

Claim 1 recites “assigning … [one tree] to broadcast a packet to a destination address.” And, this packet is expressly defined by the claim preamble to include that destination address. Thus, the body of claim 1 expressly incorporates by reference the preamble feature of a packet that includes a destination address. In this way, the body of the claim depends on the preamble for completeness and gives life, meaning, and vitality to this claim. For this reason alone, the preamble of claim 1 should be afforded patentable weight. See MPEP 2112.02(II).

The preamble of claim 1, however, should be afforded patentable weight for another reason.The MPEP instructs that preambles that limit structure must be given patentable weight.(See MPEP 2112.02(I)).The incorporation by reference of the preamble feature of a packet “including … a destination address” defines a packet that has a data structure not found in the applied art.Thus, the preamble of claim 1 must be given patentable weight.

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© 2007, Michael E. Kondoudis

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

This post concerns “after final practice,” that is, practice after a final Office Action has been issued in an application. A brief survey of some basics of after final practice follows, along with some suggestions, sample paragraphs, and practice tips for after final practice.

Prosecution After Final Rejection is Restricted

The most significant aspect of after final practice is that it is restricted. Once a final Office Action has issued, an Applicant is no longer entitled to further unrestricted prosecution on the merits, as a matter of right. This is the result of the Office’s policy of compact prosecution, which is discussed here.

The restricted nature of after final practice has some not insignificant ramifications. For example, the amendments in an Amendment After Final are actually proposed changes to that application, except in limited circumstances. And, entry of those proposed changes is generally at the Examiner’s discretion, with direction from Patent Office regulations and guidance from the Manual of Patent Examining Procedure (MPEP).

The Regulations and the MPEP

The regulations and the MPEP establish a conceptual hierarchy for the entry of after final responses. Section 714.13 of the MPEP, entitled “Amendments and Other Replies After Final Rejection or Action,” provides that

[e]xcept where an amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner, compliance with the requirement of a showing under 37 CFR §1.116(b)(3) is expected in all amendments after final rejection.

And, 37 CFR §1.116(b)(3) requires a showing of “good and sufficient reasons” why the amendment after final rejection is (1) necessary and (2) was not earlier presented. In this regard, the MPEP instructs that a “refusal to enter the proposed amendment should not be arbitrary” and that it should be given “sufficient consideration to determine whether the claims are in condition for allowance and/or whether the issues on appeal are simplified.” MPEP 714.13(II).

Part (b) of 37 CFR §1.116, entitled “Amendments and affidavits or other evidence after final action and prior to appeal” provides that

(b) After a final rejection or other final action … in an application … :

(1) An amendment may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action;

(2) An amendment presenting rejected claims in better form for consideration on appeal may be admitted; or

(3) An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.

Unfortunately, neither the MPEP nor 37 CFR 1.116 provide any examples, standards, or other guidance as to what constitutes “good and sufficient reasons.” And, this is a significant standard. Indeed, the Patent Office’s own electronic filing system (EFS-Web) tutorial wholly ignores the possibility of the existence of “good and sufficient reasons,” advising that an Amendment After Final “will not be entered if it requires an additional search or more than a cursory review.”

Additionally, section 714.13 (II) of the MPEP instructs Examiners to advise an Applicant when: (1) certain portions of the amendment would be acceptable as placing some of the claims in better form for appeal or complying with objections or requirements as to form, if a separate paper were filed containing only such amendments; and/or (2) proposed amendment(s) to some of the claims would render them allowable.

The After Final Hierarchy

The foregoing regulations and MPEP guidance establishes the following hierarchy:

1. Responses After Final that cancel claims or amend an application to address a formal requirement made earlier (e.g., adopting Examiner suggestions) are entered as a matter of right. No showing of “good and sufficient reasons” is required.

2. Responses After Final that require only a cursory review by the Examiner (e.g ., removing issues for appeal or presenting rejected claims in better form for appeal) may entered at the non-arbitrary discretion of Examiner with or without a showing of “good and sufficient reasons.”

3. Responses After Final that “touch on the merits” or otherwise do not require “only a cursory review by the Examiner” (e.g., necessitating further search) may be entered at discretion of Examiner with a showing of “good and sufficient reasons.”

In view of this hierarchy, it would appear to be a better practice to prepare after final responses that appeal to the discretion of the Examiner, when they are not to be entered as a matter of right. Such responses would ideally reflect the restricted nature of after final practice, satisfy the requirements of the relevant rules, and reflect the MPEP’s guidance, so as to maximize the likelihood of entry.

Suggestions

The following are examples of suggested modifications tailored for after final practice, including some examples of paragraphs to consider including in after final responses to maximize the likelihood of their entry.

1. Acknowledge The Restricted Nature Of After Final Practice And Ask The Examiner To Exercise His/Her Discretion To Enter Your Response

One way to accomplish this might be to begin an after final response with a paragraph like the following:

In response to the final Office Action mailed April 5, 2007, and having a period for response set to expire on July 5, 2007, Applicant respectfully requests that the Examiner amend the present application in the manner set forth in this Amendment.

Or alternatively,

In response to the final Office Action mailed April 5, 2007, and having a period for response set to expire on July 5, 2007, Applicant respectfully requests that the Examiner favorably consider the following remarks.

2. Determine Where A Reply After Final Rejection Should Be Categorized In The Hierarchy And Expressly Explain Why The Reply Should Be Entered

For example, an Amendment After Final that addresses formal matters raised by an Examiner should be entered as a matter of right. So, an appropriate explanation might be:

Applicant submits that this Amendment After Final Rejection only addresses formal matters raised a previous Office Action. Accordingly, Applicant is entitled to entry of this Amendment as a matter of right under 37 C.F.R. §1.116 (b)(1).

When an Amendment arguably places the application in better form for appeal, an appropriate explanation might be:

Applicant submits that this Amendment After Final Rejection at least places this application in better form for appeal. Applicant respectfully submits that this Amendment should only require a cursory review because the claim amendments presented herein do not add any new features and/or do not significantly alter the scope of the claims. Consequently, the claim amendments should not require any further search by the Examiner. This Amendment is necessary as it clarifies and/or narrows the issues for consideration by the Board and was not earlier presented because Applicant believed that the prior response(s) placed this application in condition for allowance, for at least the reasons set forth in those response(s). Accordingly, entry of the present Amendment, as an earnest attempt to advance prosecution and/or to reduce the number of issues, is requested under 37 C.F.R. §1.116.

When an Amendment touches on the merits, an appropriate explanation might be:

Applicant submits that this Amendment After Final Rejection places this application in condition for allowance by amending claims in manners that are believed to render all pending claims allowable over the cited art and/or at least place this application in better form for appeal. This Amendment is necessary because … and was not earlier presented because Applicant believed that the prior response(s) placed this application in condition for allowance, for at least the reasons discussed in those responses. Accordingly, entry of the present Amendment, as an earnest attempt to advance prosecution and/or to reduce the number of issues, is requested under 37 C.F.R. §1.116.

Of course, this type of paragraph should be modified to articulate the particular “good and sufficient” reason(s) specific to a particular application.

3. Include An Express Request For The Specific Notice That MPEP §714.13 Instructs Examiners To Provide An Applicant

For example

In the event that the Office declines to enter the present Amendment, and (i) any portion of the present Amendment would place some of the claims in better form for appeal if a separate paper were filed containing only such amendments or (ii) any proposed amendment to any claim would render that claim allowable, Applicant respectfully requests that the Office inform Applicant of the same pursuant to MPEP §714.13.

4. File After Final Responses Electronically

Filing electronically avoids the delay between the time documents are received by the Patent Office and the time they are converted and placed into the image file wrapper (IFW). And, since time can be of the essence in after final practice, knowing a document has been received and is in the IFW can be a great benefit. For example, if the after final reply is filed within 2 months of the date of the final Office Action, the shortened statutory period for response will expire either 3 months from the mailing date of the final rejection or on the date the advisory action is mailed, whichever is later. Still further, there are also patent term extension advantages to filing electronically, as I discussed here.

5. When Filing By Mail Or By Hand, Take Advantage Of The U.S. Patent Office’s Expedited Procedure For After Final Responses

The Patent Office has an expedited processing procedure for processing paper responses after final rejection under 37 CFR 1.116. To take advantage of the expedited procedure, after final responses under 37 CFR 1.116 need to be marked as a “Reply under 37 CFR 1.116 – Expedited Procedure – Technology Center (XXXX)” on the upper right portion of the paper. Also, if the response is filed by mail, the envelope must be marked “Mail Stop AF” in the lower left hand corner. The markings preferably should be written in a bright color with a felt point marker. If the reply is hand-carried to the Customer Window, the outside of the envelope should be marked “Reply Under 37 CFR 1.116 – Expedited Procedure – Technology Center (XXXX).” See MPEP 714.13(V).

Three Final Comments

1. If you are not filing electronically through the Patent Office’s EFS-Web, I suggest that you consider starting to. The system is surprisingly simple and easy to use.

2. Under Patent Office rules, every Amendment must include markings showing the changes relative to the last entered amendment. So, in Amendments After Final (or Amendments filed with a request for continued examination (RCE)), it is important to take care not to include markings that indicate changes relative to any unentered amendment. Doing so should result in a Notice Of Non-Compliant Amendment. Never assume that an after final amendment has entered because they are not entered as a matter of right.

3. In view of the U.S. Patent Office’s new rules changing continuation practice, it appears that getting the most out of every response, before and after final, is going to be more important than ever.

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© 2007, Michael E. Kondoudis

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

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

I have received several inquiries for the memorandum referenced in the first form paragraph of my earlier post on this subject. The following is the basic text I start with when drafting the memorandum for a new client.

2006 Memorandum Re: The Duty of Disclosure and Materiality

Every applicant for a U.S. patent has 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 certain individuals disclose to the USPTO all known information that is “material to patentability.” A failure to satisfy this duty of candor can have severe consequences, including the unenforceability of any patent that issues from the application. Therefore, it is important to be aware of who must comply with this duty of candor and what makes information “material.”

Section 1.56 of Title 37 of the Code of Federal Regulations (known as “Rule 56″) provides, among other things, that any individual who is associated with the filing or prosecution of a patent application must comply with this duty. In essence, this means that everyone involved in the procurement of a patent has a duty to disclose information material to the patentability of a claimed invention. This means that Rule 56 applies to, but is not limited to, named inventors, their attorney(s) or agent(s) involved in the preparation or prosecution of the application, any assignee(s), and anyone else who is substantively involved in the preparation of the application and who is associated with the inventor or any assignee. It is importation to appreciate that the application of Rule 56 is limited only those individuals who are involved in the patenting process. A copy of Rule 56 is attached for your review and future reference.

There is no “bright line test” for determining what information is “material.” Most courts, however, follow a relatively expansive test in which information is deemed material if it is arguably relevant to the issue of patentability of any claim. Rule 56 defines information as “material” when:

(1) it is not cumulative to information already of record in the application; and

(2) either (i) establishes a prima facie case of unpatentability of any claim, by itself or in combination with other information, or (ii) refutes, or is inconsistent with, a position that the applicant has taken relating to the patentability of any claim.

Information is generally considered cumulative when it is merely repetitive or is less relevant than information already of record in the application. A prima facie case of unpatentability exists when the information compels a conclusion that a claim is unpatentable based on a preponderance of evidence, when each term in the claim is given its broadest reasonable construction consistent with the specification, and before any patentablity argument.

Non-limiting examples of potentially material information include U.S. or foreign patents or published patent applications, communications from foreign patent offices in related applications, scientific and other journal articles, brochures, and web sites.

As a “rule of thumb,” we generally recommend erring on the side of caution and disclosing to the USPTO any information that may arguably be relevant to the issue of patentability, so long as it is not overly cumulative.

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© 2007, Michael E. Kondoudis

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

This post is a slight departure from previous posts on this blog in that it focuses on communications between prosecutors and clients rather than communications between prosecutors and the U.S. Patent and Trademark Office.

The duty of candor that every applicant and patent practitioner owes to the U.S. Patent and Trademark Office (USPTO) has been of increased attention since the Federal Circuit issued its opinion in McKesson Information Solutions, Inc. v. Bridge Medical, Inc., 06-1517 (2007). For now, I will leave the debate about the practical effects of that decision to others. Instead, this post focuses on ways a practitioner can advise and remind a client of this important duty.

A Review of the Duty of Candor (Rule 56)

The filing of a patent application in the USPTO imposes an obligation on all persons involved with the prosecution of that application to satisfy a duty of candor. This duty of candor is articulated by Section 1.56 of Title 37 of the Code of Federal Regulations (commonly referred to as Rule 56) and requires that all information “material to patentability”  must be cited to the USPTO. Information is “material to patentability” when (1) it is not cumulative to information already of record in the application, and (2) either: establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or refutes, or is inconsistent with, a position the applicant has taken in (i) opposing an argument of unpatentability relied on by the Office, or (ii) asserting an argument of patentability.

A failure to satisfy this duty can have severe consequences, including the unenforceability of any patent that issues from the application. I submit, therefore, that it is only prudent to expressly advise clients of this continuing duty, and to do so at multiple stages of prosecution. The following are examples of the different form paragraphs I find useful.

1. Upon Filing Of An Application

Please be advised that every applicant for a U.S. patent has a duty of candor and good faith in dealing with the United States Patent and Trademark Office. This duty extends to all persons involved with the filing and prosecution of an application and requires, during the pendency of the application, the submission of all known information that is material to the patentability of any claim. Accordingly, if you are presently aware of any information that may be material, please let us know so that we may submit that information in an Information Disclosure Statement (IDS). Also, if you become aware of any information that may be material, please let us know as soon as practicable after it is discovered so that we may submit that information in an IDS. A copy of the rule setting forth this duty, along with a memorandum about the duty of disclosure, are enclosed for your convenience and future reference. If you have any questions about this duty, please let us know so that we may answer them for you.

2. After A First Or Non-Final Office Action Has Issued

We remind you that information material to patentability must be cited to the U.S. Patent and Trademark Office. Since an Office Action has been issued in this application, any information cited at this time will be considered as a matter of right only if accompanied by either (i) a government fee or (ii) a statement that the information was first cited in any foreign counterpart, or first discovered, within the last three months. Accordingly, if you are or become aware of any information material to patentability that has not yet been cited, please inform us as soon as possible.

3. After A Final Office Action Has Issued

We remind you that information material to patentability must be cited to the U.S. Patent and Trademark Office. Since a final Office Action has been issued in this application, any information cited at this time will be considered as a matter of right only if accompanied by both (i) a government fee and (ii) a statement that the information was first cited in any foreign counterpart, or first discovered, within the last three months. Accordingly, if you are or become aware of any information material to patentability that has not yet been cited, please inform us as soon as possible.

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© 2007, Michael E. Kondoudis

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