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 colleague passed along the results of a brief survey of some recent Board of Patent Appeals and Interferences (BPAI) decisions in which the BPAI cited KSR and reversed claim rejections. Two aspects of the survey results stood out. Of the 43 reversals identified by the search, 24 were based on a failure of the cited art to meet every feature of a rejected claim while 11 were based on an Examiner’s failure to provide sufficient reasoning for an asserted combination/modification.

This admittedly incomplete survey appears to indicate two things about current appeal practice. First, some Examiners still fail to address each and every claim feature, so continue to argue that asserted combination(s) is/are deficient, when appropriate. Second, challenges to the sufficiency of a proffered rationale to combine/modify appear to still have some bite, despite KSR’s “affirmation” that the proper inquiry for motivation is not limited to the overly rigid teaching suggestion motivation (TSM) test and Leapfrog’s confirmation that “the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not.”

One last point, recent BPAI decisions provide useful guidance on how to effectively argue non-obviousness in light of KSR, and they are available at www.uspto.gov/go/dcom/bpai.

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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

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

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

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

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

Responses to Rejections Under § 112

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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© 2007, Michael E. Kondoudis

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

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

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

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

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

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

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

Specific Techniques

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

1. When Allowed/Allowable Subject Matter is Indicated

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

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

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

2. In a Traversal

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

3. An Omnibus Paragraph

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

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

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© 2007, Michael E. Kondoudis

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