Many filing errors (e.g., the failure to file all of a document, the failure to pay a fee, or the unintended filing of an unrelated document) are correctable without penalty by a corrective electronic submission, if it is filed the very same day.  This post discusses a few of the filing errors correctable in this way.

In my last post, I discussed one advantage of electronic filing – the 25% application size discount.  Another advantage of electronic filing is that a registered user of the USPTO’s EFS-Web may view newly-filed applications in Private PAIR almost immediately after submission.  This permits a user to promptly review all of the documents filed in an application to confirm their completeness and accuracy.  This also provides an opportunity to correct many types of filing errors with another electronic filing on the same day.  By the same day, I mean up to 11:59 p.m. Eastern Time in the US (which can be GMT -4:00 or -5:00 depending on the time of year due to daylight savings time).

The following are some examples of filing errors that can be corrected with a same day filing:

1.  Oaths or Declarations – An applicant may later electronically file an executed oath or declaration on the same day of the electronic filing of a new application.  The oath or declaration will not be considered late in this circumstance and, consequently, the surcharge for the late filing of an oath or declaration will be avoided.

2.  Filing Fees – An applicant may later electronically submit fees (e.g., the basic filing fee, search and examination fees, an application size fee, or an excess claims fee) on the same day that a new application is electronically filed.  Here, the fees will not be considered late and thus a surcharge for late payment of the filing fees will not be required.

3.  Incorrect and/or Missing Part of a Specification, Claims and/or Drawings – An applicant may electronically file a correct/missing portion of the written description, any new and/or modified claims, and missing drawings as a preliminary amendment on the filing date of an application.  Such an amendment in a nonprovisional application is considered as part of the original disclosure.  See 37 CFR 1.115(a)(1).  But note that a preliminary amendment filed with a submission to enter the national stage of an international application under 35 U.S.C. § 371 is not considered part of the original disclosure under 37 CFR §115(a) because it was not present on the international filing date accorded to the application under PCT.  See MPEP § 714.01(e).  Also, keep in mind that amendments to the written description may require a substitute specification.

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© 2010, Michael E. Kondoudis

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

In a post back in June, I discussed how many filing errors/omissions in new, electronically filed applications may be corrected by a follow up submission on the same day.  Not every omission may be corrected this way, however.  Since my June post on the correction of filings, I have received several emails inquiring about the exceptions – examples of filing errors/omissions that are not correctable by a follow up submission.

As a general rule, the omission of any document that is required by Rule to be submitted with a new application cannot be corrected with a follow up submission. Perhaps the most common examples are nonpublication requests.

A nonpublication request may be made by filing a discrete document such as Form PTO/SB/35 or by checking the appropriate box shown below in an Application Data Sheet (Form PTO/SB/14).

This request, regardless of the manner in which it is made, must be submitted with the application upon filing. See 37 CFR 1.213(a)(1).

To correct the omission of a nonpublication request, the USPTO suggests filing: (1) a new application with a nonpublication request; and (2) a petition for express abandonment to avoid publication under 37 CFR 1.138(c) in sufficient time to permit the Pre-Grant Publication Division to remove the application from the publication process.  The USPTO has a fillable PDF form for express abandonment here.

Additional Resources and Related Links
1. For more information on the subject of patent publication in general, the USPTO has a page dedicated to the subject here.

2. My earlier post on correcting filing errors and omissions follows this link.

3. The USPTO’s forms page follows this link.

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© 2010, Michael E. Kondoudis

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

There are many advantages to filing applications via the USPTO’s electronic filing system (EFS-Web).  One practical advantage is that the USPTO measures the size of an electronically filed application differently than if it were filed by paper.

An application filed under 35 U.S.C. 111 (this includes provisional, nonprovisional and design applications, and reissue applications) that exceeds 100 pages in total length is subject to an additional filing fee under 37 CFR 1.16(s) for each additional 50 sheets or fraction thereof.  Thus, an application consisting of 101 pages of specification and drawings incurs an additional fee and an application having 151 pages incurs an even greater additional fee.

The Size of an Application Filed Via EFS-Web is Discounted by 25%

The USPTO applies a 25% discount to the size of an electronically filed application.  So, for example, a 100-page application filed electronically is treated as a 75-page application for application size purposes.  See 37 CFR 1.52(f)(2) and MPEP § 607.  This means that an applicant may file an application up to 133 pages in total length and avoid the size fee, so long as the application is filed electronically.

A Few Caveats

1.  The application size discount of 37 CFR 1.52(f)(2) for EFS-Web filings does NOT apply to national stage submissions under 35 U.S.C. § 371.  See MPEP § 1893.01(c).

2.  Sequence listings and any computer program listing submitted electronically are excluded when determining the application size fees under 37 CFR 1.16(s), so long as the listing is submitted in ASCII text as part of an associated file of the application.  See 37 CFR 1.52(f)(2).  Conversely, sequence listings or computer program listings submitted as PDF files are NOT excluded and are counted along with the specification and drawings.

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© 2010, Michael E. Kondoudis

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

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

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

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

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

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

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

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© 2010, Michael E. Kondoudis

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

Introduction

“S-signatures” have been accepted by the USPTO for several years now. An S-signature is an electronic signature betwen forward slashes and includes any signature made by non-handwritten means (i.e. electronic or mechanical).  See MPEP 502.02 and 37 CFR 1.4(d)(2). This type of signature was part of the changes made in the USPTO to support the implementation of its 21st Century Strategic Plan and makes using the USPTO’s EFS-Web far more efficient and secure.

There is no one acceptable form of an S-signature.  Rather, so long as the requirements for S-signatures are satisfied, almost any S-signature will be accepted by the USPTO.

The Rules

37 CFR 1.4(d)(2) sets forth the following four requirements for a valid S-signature:

1. It must consist of only letters and/or Arabic numbers, along with appropriate spaces, commas, periods, apostrophes, or hyphens for punctuation;
2. It must be placed between forward slashes;
3. The person signing must insert his or her own signature; and
4. The name of the person signing must be printed or typed immediately adjacent to the S-signature, and be reasonably specific, so the identity of the signer can be readily recognized. In addition, the S-signature of a registered patent practitioner must be accompanied by a registration number.

This Rule places restrictions on the form of the S-signature.  It does not restrict content, however. Consequently, a wide variety of s-signature formats are acceptable. In fact, the USPTO instructs employees who review S-signatures not to reject or refuse correspondence based on the content of the S-signature so long as it complies with the broad criteria set forth above.

Examples

Example 1 – An S-signature for a pro se applicant

Respectfully submitted,

/John Smith/
John Smith

Example 2 – An S-signature for registered practitioner

Respectfully submitted,

By: /John Smith/
John Smith
Reg. No. 01234

Example 3 – An S-signature for registered practitioner

Respectfully submitted,

By: /John Smith, #01234/
John Smith

Other examples of acceptable (and unacceptable) S-signatures can be found here.

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© 2010, Michael E. Kondoudis

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

Introduction

Most actions during prosecution of a patent application in the USPTO are eventually subject to quasi-judicial review by an appeal to the Board of Patent Appeals and Interferences. The classic example of an action that is subject to this type of review is an art (§102 and/or §103) rejection of a claim.

Other actions, however, are not subject to review by an appeal. Rather, the only relief available is administrative review. An example of this type of action is a review of a restriction requirement. This administrative review is conducted, in part, through petition practice.

Still other actions, such as the revival of an abandoned application, may only be requested by petition.

The Starting Points for Any Petition

The Director of the USPTO has delegated to various USPTO officials the authority to decide certain petitions.  The various delegations are set forth in Chapter 1000 of the MPEP.

The specific form and content of many common petitions are set forth in the Rules and the MPEP. For example, the requirements of a petition to revive an abandoned application are set forth in 37 CFR 1.137 and MPEP 711.03(c).

37 CFR 1.181(b) sets forth the general requirements for the content of a petition. This Rule, along with section 1000 and any other relevant section(s) of the MPEP, should be primary resources for anyone drafting a petition.

The Requirements

Every petition in the USPTO must satisfy the following 5 requirements:

1. The petition must be in writing (see 37 CFR 1.2).

Business with the USPTO should almost always be transacted in writing. Enough said.

2. The petition must: contain a statement of relevant facts; identify the issue(s) or error(s) presented for review; and state the action or relief sought by the petition. (see 37 CFR 1.181(b)).

Every petition should be as complete as possible and provide all of the evidence necessary for the rendering of a decision.

3. The petition must be accompanied by any required fee (see 37 CFR 1.181(d)).

The Office may properly dismiss any petition for lack of or insufficient fee. Be sure to consult the USPTO’s current fee schedule here.

4. The petition must be timely filed in compliance with 37 CFR 1.181(f), or as required in a specific statute or regulation.

As a general rule, a petition must be filed within 2 months from the date the action complained of occurred or it may properly be dismissed as untimely.

5. The petition must comply with any specific requirements as provided by statute, regulation or USPTO policy.

Review any applicable statute, regulation or USPTO policy relating to the issue being petitioned to determine if there are other requirements specific to that petition.

Final Points

1. Petitions do not stay periods for reply – The mere filing of a petition will not stay the period for replying to an examiner’s action that may be running against an application or act as a stay of other proceedings. (37 CFR 1.181(f)).

2. Be sure to separate each distinct subject, inquiry or request into a separate petition – different branches or sections of the USPTO may consider/decide different matters. Filing separate papers will help to avoid confusion and delay in answering papers dealing with different subjects (see 37 CFR 1.4(c)).

3. Send the petition to the correct decision maker – a petition should be directed to the USPTO official delegated the authority to decide that petition. (see MPEP Chapter 1000).

4. The two-month period to file a petition is not extendable. (37 CFR 1.181(f)).

5. The USPTO provides several fillable pdf petition forms on its website here.

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© 2009, Michael E. Kondoudis

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

This post discusses a less common but nonetheless important point that my earlier post on this subject did not – the mechanics of how to claim priority to a foreign patent document, along with a few examples.

Generally, the approach for claiming the benefit of foreign priority is similar to claiming domestic priority. There are a few more requirements to keep in mind, however.

THE RULE AND REQUIREMENTS

The controlling rule here is 37 CFR § 1.55, entitled Claim for Foreign Priority, which states:

An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b).

Section 1.55(a) goes on to impose a non-extendable time limit to make the claim, stating that:

the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable.

Pursuant to § 1.55, the claim for the benefit of foreign priority must satisfy a few more requirements than a claim for domestic priority. In particular, the claim must identify the foreign application for which priority is claimed by specifying:

1. the application number of the priority document;

2.  the country (or intellectual property authority) with which the priority document was filed

3. the day, month, and year the priority document was filed.

Also, of course, the foreign patent authority must have reciprocity with the USPTO, there must be an identity of inventorship, and the U.S. application must almost always have been filed within 12 months from the filing date of the priority document.

A FEW EXAMPLES

This application claims priority under 35 U.S.C. § 119 to German patent application DE 100 21 175.7, filed January 4, 2005, the disclosure of which is incorporated herein by reference.

This application is based on and claims the benefit of priority from Japanese Patent Application No. 5-234567, filed on October 15, 2007, the contents of which are incorporated by reference.

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© 2009, Michael E. Kondoudis

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

This post discusses some of the mechanics involved in securing a right of priority to an earlier filed application, provides some examples of acceptable claims of priority, and ways to correct a failure to make the required claim.

BACKGROUND

When certain conditions are satisfied, a patent application is entitled to the benefit of the filing date of an earlier filed application. These specific conditions are set forth in 35 U.S.C. § 120 and 37 CFR 1.78(a)(1) – (a)(3) for prior nonprovisional applications and 35 U.S.C. 119(e) and 37 CFR 1.78(a)(4) – (a)(6) for provisional applications.

Generally, the Rules require that an Applicant make a “specific” reference to the prior-filed application in either:

1. the specification; or

2. an application data sheet (ADS).

The Rules do not articulate any particular form of the required “specific” reference. They do, however, dictate that the “specific” reference:

1.  identify the prior-filed application by application number; and

2. identify the specific relationship of the applications (i.e., continuation, divisional, or continuation-in-part).

Also, when there is a claim to a chain of applications, the relationship must be stated for each application, to establish the required co-pendency throughout the chain.

EXAMPLES

Example #1 – Benefit Claim to a Nonprovisional Application

CROSS-REFERENCE TO RELATED APPLICATION

This application claims the benefit of U.S. patent application no. 12/123,456, filed December 12, 2007.

Example #2 – Benefit Claim to Nonprovisional Applications

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation-in-part of Application No. 12/123,456, filed 21 March 2007, and is also a continuation-in-part of Application No. 12/234,567, filed 31 March 2007.

Example #3 – Benefit Claim to Chain of Nonprovisional Applications

If the benefit claim involves a chain of nonprovisional applications, then the specific reference must also include the interrelationships of the applications relative to each other, as a continuation, divisional, or continuation-in-part, to establish co-pendency throughout the entire chain.

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of Application No. 12/123,456, filed 21 March 2007, which is a divisional of Application No. 11/123,456, filed 21 March 2006, which is a continuation-in-part of Application No. 10/123,456, filed 1 January 2006.

Benefit Claims to International (PCT) Applications

When the specific reference is to an international application, an Applicant is required to:

1. Identify the International application by International application number and International filing date (not the § 371(c) compliance date); and

2. provide any specific interrelationship of multiple applications, when present.

Example #4 – Benefit Claim to a National Stage (§ 371) application

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of Application No. 10/123,456, which is the National Stage of International Application No. PCT/US2007/000004, filed January 1, 2007.

Example #5 – Benefit Claim to a Bypass Application

CROSS-REFERENCE TO RELATED APPLICATION

This application is a continuation of International Application No. PCT/US2008/00050, filed January 1, 2008.

Note: do not use the §371(c) compliance date for bypass applications.

Example #6 – Benefit Claim to an International Application (Benefiting From an Earlier Nonprovisional)

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of International Application No. PCT/US2008/00050, filed January 1, 2008, which is a continuation of U.S. Application No. 10/123,456, filed February 1, 2006.

Example #7 – Benefit Claim to Provisional Applications

Here again, a specific reference to the prior-filed application is required in the first sentence of the specification or an ADS. This specific reference need not state the relationship between the nonprovisional application and the provisional application.

CROSS-REFERENCE TO RELATED APPLICATION

This application claims the benefit of U.S. Provisional Application No. 60/123,456, filed March 1, 2008.

THE TIME LIMITS AND CORRECTION

The Rules limit the time in which an Applicant may make a benefit claim. 37 CFR. 1.78(a) requires that any claim of priority must be made before the later of four months from the actual filing date or the date on which the national stage commenced, or sixteen months from the filing date of the prior-filed application.

The Impact of Failure To Make A Timely Benefit Claim

The failure to timely submit the “specific” reference is considered a waiver of any benefit claim. The failure to make a timely claim is correctable, but this correction can be relatively expensive.

How Do You Know If A Claim Has Been Correctly Acknowledged by the USPTO?

The Office, via the Official Filing Receipt, notifies Applicants that a benefit claim may not have been recognized or was not accurately recognized. For this reason, it is important to review every Official Filing Receipt, which is usually provided shortly after the filing of an application so as to provide sufficient opportunity to make/correct a benefit claim within the specified time.

Timely Correction

During the time period set forth in 37 CFR 1.78(a), an Applicant may correct a benefit claim by:

1. filing a request for corrected filing receipt, and

2. making the required “specific” reference.

Here, the required “specific: reference can be made either:

by filing an amendment to the specification or by filing an ADS; or

by submitting a copy of the amendment or ADS, if the claim was previously submitted.

Note – There is an important departure from standard USPTO practice here. A preliminary amendment to merely add a claim of priority does not require a substitute specification. See MPEP 714.01(e). The Office would prefer that claims are made via an ADS, however.

Untimely Correction

After the time period set forth in 37 CFR 1.78(a), an Applicant may correct a benefit claim by:

1. filing a petition to accept an unintentionally delayed claim under rule 1.78(a) and the surcharge under rule 1.17(t) (presently 1500.00 USD); and

2. making the required specific reference (including the relationship of the non-provisional applications and identification of any intermediate application which directly claims the benefit of the provisional application).

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© 2009, Michael E. Kondoudis

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

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

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

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

And then there are:

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

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

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

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

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

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

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

37 CFR §§ 1.76 (a) and (b).

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

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

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

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

37 CFR 1.76 (d)

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© 2009, Michael E. Kondoudis

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

The USPTO recently published a Notice to applicants filing applications under the PCT in the United States Receiving Office (RO/US) to exercise care in selecting a competent International Searching Authority (ISA) for claimed subject matter.  The USPTO reminds applicants that:  (1)  the EPO will not act as an ISA/IPEA for applications with one or more business method claims; and (2)  the AU-IPO will not act as an ISA/IPEA for applications with one or more claims drawn to certain fields of technology specified in Annex A of the Arrangement between IP Australia and the United States Patent and Trademark Office, which was published in the USPTO’s Official Gazette at 1337 OG 263.

From the USPTO’s website …

Limited Competency of Certain International Searching
Authorities With Respect to Applications Filed in the USPTO

The USPTO has noticed a significant number of international applications filed in the United States receiving Office (RO/US) under the Patent Cooperation Treaty (PCT) where the applicant has chosen an International Searching Authority (ISA) which is not competent for the subject matter of the claimed invention.  This can result in significant delays in the issuance of the International Search Report and Written Opinion of the International Searching Authority.  When such an application is filed it is forwarded by the RO/US to the ISA selected by applicant.  After processing the application, the ISA will return the application to the RO/US with an indication that it is drawn to subject matter for which the ISA is not competent to act. The RO/US will then notify applicant of such and invite applicant to select a competent ISA.  Once the RO/US receives a new indication from applicant as to a new ISA, the RO/US will forward the application to the newly selected ISA where it will undergo further processing and will eventually receive a search in accordance with Chapter I of the PCT.

Applicants are hereby reminded that certain ISAs have limited their competency for applications filed with the RO/US.  Specifically, the European Patent Office (EPO) will not act as an ISA/IPEA for applications with one or more claims to a business method (citation omitted).  Further, the Australian Patent Office (IP Australia) has declared that it is not competent for applications with one or more claims drawn to subject matter set forth in Annex A of the Arrangement between IP Australia and the United States Patent and Trademark Office (see 1337 OG 263).  To avoid significant processing delays, applicants filing international applications naming either the EPO or IP Australia as the ISA should take care to ensure that the application does not contain any claims for which the selected ISA is not competent.

The relevant portion of Annex A is reproduced below.

Annex A of the Arrangement between IP Australia and the USPTO

Subject matter for which the Australian Patent Office is NOT a competent International Search Authority or International Preliminary Examination Authority for international applications filed with the RO/US by International Patent Classification (8th edition):

A01-AGRICULTURE; FORESTRY; ANIMAL HUSBANDRY; HUNTING; TRAPPING; FISHING, all classes except:  A01H, A01N, A01P(i.e. new plants or processes of obtaining them thereof, Preservation of human, animals bodies or plants, biocidal, pest repellent, pest attractant or plant growth regulatory activity of chemical compounds or preparations)
A21-BAKING; EQUIPMENT FOR MAKING OR PROCESSING DOUGHS; DOUGHS FOR BAKING all classes except:  A21D, (i.e. Treatment of flour or dough for baking)
A22-BUTCHERING; MEAT TREATMENT; PROCESSING POULTRY OR FISH
A23N-MACHINES OR APPARATUS FOR TREATING HARVESTED FRUIT, VEGETABLES OR FLOWER BULBS IN BULK
A23P-SHAPING OR WORKING OF FOODSTUFFS
A24-TOBACCO; CIGARS; CIGARETTES
A41-47 PERSONAL AND DOMESTIC ARTICLES (eg. headgear (A42), footwear(A43),
haberdashery (A44))
A61-MEDICAL OR VETERINARY SCIENCE, all classes except:  A61K, A61L, A61P and A61Q (i.e. preparations for medical, dental or toilet purposes, methods, apparatus for sterilising materials or objects, chemical aspects of bandages, dressings, absorbent pads, or surgical articles, therapeutic activity of chemical compounds, use of cosmetics or similar toilet preparations)
A62-LIFE-SAVING all classes except:  A62D (i.e. chemical means for extinguishing fires, processes for making harmful chemical substances harmless, or less harmful, by effecting a chemical change, composition of materials for coverings or clothing for protecting against harmful chemical agents; composition of materials for transparent parts of gas-masks, respirators, breathing bags or helmets; composition of chemical materials for use in breathing apparatus)
A63-SPORTS; GAMES; AMUSEMENTS

B06-GENERATING OR TRANSMITTING MECHANICAL VIBRATIONS IN GENERAL
B21, B23-B27 all except: B23K (i.e. soldering or unsoldering; welding; cladding or plating by soldering or welding; cutting by applying heat locally, e.g. flame cutting; working by laser beam)
B31-MAKING PAPER ARTICLE WORKING PAPER
B60-B68 all except: B60L, B60M and B60Q (i.e. electric equipment or propulsion of electrically-propelled vehicles; magnetic suspension or levitation for vehicles; electrodynamic brake systems for vehicles, in general, power supply lines, or devices along rails, for electrically-propelled vehicles, arrangement of signalling or lighting devices, the mounting or supporting thereof or circuits therefor, for vehicles in general)

D01-D07 Textiles all except:  D06L, D06M, D06N,  D06P, D06Q (i.e. bleaching, treatment of fabrics, dyeing or printing textiles, decorating textiles)

E01-E06 FIXED CONSTRUCTION
E21-EARTH OR ROCK DRILLING; MINING

F01-F04 MACHINES
F15-F17 ENGINEERING ELEMENTS, ACTUATORS, STORAGE OR DISTRIBUTION OF GASES OR LIQUIDS
F41-F42 WEAPONS, AMMUNITION

G04-HOR0LOGY
GO6-COMPUTING; Calculating; Counting
G10-MUSICAL INSTRUMENTS
G11-INFORMATION STORAGE

The UPSTO’s announcement can be read here.

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

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

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

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

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

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

An RCE can be used to withdraw an appeal.

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

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

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

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

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

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

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

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

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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

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

For those who are still filing by paper, the USPTO announced last week that it will finally be doing away with the requirement for duplicate copies of forms required for processing fees (e.g., an authorization to charge a deposit account).  Before Image File Wrappers (IFWs), when paper filing was an Applicant’s only option, duplicate copies of fee processing forms were required because the USPTO processed fees separately from the paper application file.  Today, however, these forms are scanned into an IFW so that they are viewable throughout the USPTO, even when these forms are submitted by paper.   Even in those few applications in which duplicate copies would still be necessary for processing a fee (e.g., national security applications), the USPTO will make any necessary copies required for processing.

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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

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

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

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

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

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

By Design or the Result of Ex Parte Prosecution?

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

Options to Consider

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

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

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

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

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

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

This section goes on to warn that:

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

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

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

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© 2008, Michael E. Kondoudis

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

A common prosecution strategy when an Office action indicates allowed claims or allowable subject matter is to cancel the rejected subject matter and continue prosecuting that canceled subject matter in a continuing application. This strategy, of course, results in the relatively rapid issuance of a patent.

An interesting aspect of this strategy is that some non-final rejections in these continuing applications are appealable. Thus, an Applicant sometimes has the option to pursue an appeal of a non-final claim rejection rather than to make further attempts to traverse it. The remainder of this post discusses when non-final claim rejections are appealable.

The Rule – Twice Rejected Claims are Appealable

Pursuant to Statute and Rule, an Applicant may appeal the rejection of any claim that has been twice rejected, regardless of whether the claim has been finally rejected. In particular, 35 U.S.C. 134(a) provides that:

An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.

Also, 37 CFR 41.31(a)(1) provides that:

An applicant for a patent dissatisfied with a primary examiner’s decision in the second rejection of his or her claims may appeal to the Board for review of the examiner’s rejection by filing a notice of appeal and the required fee.

The Twice Rejected Requirement Is Not Limited To A Single Application

Noticeably absent from the Statute and Rule is a requirement that a claim must be “twice rejected” in a particular application. Consequently, an Applicant need not always wait until a claim is twice rejected in a single application to pursue an appeal. Consider the following example.

Example

Claims 1-3 are allowed in a parent application. Claim 4 is rejected.

Applicant cancels claim 4 so that the parent, with claims 1-3, may proceed to issue.

Applicant also files a continuing application to prosecute claim 4 and other claims. Thereafter, the previous rejection of claim 4 is repeated in a first, non-final Office action in the continuing application.

In this scenario, claim 4 has been twice rejected. Thus, the rejection of claim 4 is appealable, despite being non-final.

Four Additional Points About Appeals

1. An Appealed Claim Must Be Under Rejection. An Applicant cannot file an appeal in a continuing application until a claim is rejected, regardless of the number of times that claim may have been rejected in the parent application.
2. There Is No Requirement To Identify In The Notice Of Appeal The Claims To Be Appealed. The rules do not require an Applicant to identify the claims that will be appealed.
3. The USPTO Has A Form Notice Of Appeal Form for EFS-WEB. The USPTO recommends filing a Notice of Appeal as a separate paper and provides form PTO/SB/31 for this purpose. This form can be found at here.

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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

I have received numerous comments, both public and private, about my earlier post on avoiding improper final rejections. In that post, I outlined a practice of advising the Office when a next Office action cannot properly be made final because of a deficiency in a current Office action.

In reading some of the comments, it appears that some nuances of a prosecution strategy might not be entirely clear.

A number of comments advocate resolving the issue by calling the Examiner to request a new Office action. This approach, they say, is cost-effective and obviates the need to advise the Office that finality is precluded.

I do not disagree that this approach should resolve the issue. I do, however, submit that in some circumstances the inclination to call the Examiner could squander what can be a significant tactical advantage.

Think about it. What might you do to rejected claims if you knew that the next Office Action could not properly be made final?

I believe that the best way to explore this issue is by an example. A significant number of the comments concerned what to do when the Office issues an Office action that fails to address a claim. Accordingly, I will use that example.

By way of review, this failure precludes the finality of a next Office action, if that Office action rejects the omitted claim. Also, in general, when the omitted claim is independent and/or of a significantly different scope/statutory class than substantively rejected claims, the omitted claim is less likely to be allowed in a next Office action.

When a next Office action cannot properly be made final if it rejects an omitted claim (and that omitted claim is not likely to be allowed on the next Office action), an Applicant has a rare opportunity to significantly amend the claims or even add new ones, without facing a final Office action in response. Also, the Applicant enjoys the advantage of modifying the presented claims based on the cited art, the Examiner’s application of that art, and the Examiner’s claim construction. Essentially, the Applicant gets “a second bite at the apple” to submit claims that, like originally filed claims, must be examined as a matter of right.

The potential benefits are self-evident.

Secondly, in view of the production quotas Examiner’s must satisfy, this approach might (even if only marginally) help obtain an allowance, since counts are not awarded for successive non-final Office actions.

In sum, calling the Examiner may be the most cost-effective way to resolve a deficient Office action but, unless overall cost and/or a speedy allowance are top priorities, it may be advantageous to consider a substantive response to such an Office action.

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© 2008, Michael E. Kondoudis

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