Patentably Defined

© 2009, Michael E. Kondoudis

Based on the number of requests I have received since my first post on enablement, I know that many of you have been waiting for this follow up.  The following are a few examples employing the principles I discussed in my earlier post.  A word of caution, as is the case with most technical (non-art) rejections, enablement rejections are usually highly fact specific.  Consequently, there are almost an infinite number of ways to respond to any single enablement rejection.  The following are examples of two basic responses.  

Examples Of Responses To Enablement Rejections

Example 1 - Failure to Make Out A Prima Facie Case – No Analysis of Wands Factors.

The Office Action rejected claim 2 for allegedly failing to satisfy the enablement requirement of the first paragraph of 35 U.S.C. § 112.  This rejection is respectfully traversed.

Applicant respectfully submits that the Office has, by only providing a mere conclusion of nonenablement, failed to satisfy its burden to articulate a prima facie case.  And, without adequate notice of the basis of this rejection, the burden to rebut with evidence and/or argument has not yet shifted to Applicant.

The MPEP repeatedly warns that the Office bears always an initial burden of establishing a prima facie case when making an enablement rejection. (See, e.g., MPEP §§ 706.03, 2164.04).  A prima facie case of nonenablement is only satisfied when the Office establishes a reasonable basis as to why the scope of protection provided by a claim is not adequately enabled by the disclosure. (MPEP § 2164.04)(emphasis added).  This requires that the Office make specific findings of fact, supported by evidence, and then draw conclusions based on those findings of fact.  (MPEP § 2164.04).  This requires, at a minimum, discussion of those Wands factors, reasons, and evidence that lead the Examiner to conclude that the specification fails to teach how to make and use the claimed invention without undue experimentation, or that the scope of any enablement provided to one skilled in the art is not commensurate with the scope of protection sought by the claims.  (Id.).  Simply put, mere conclusory statements are insufficient to support an enablement rejection and must be based on evidence, not mere opinion.  (MPEP § 2164.05).

It is also well settled that the burden to respond only shifts to an Applicant after the Office has established a prima face case, which requires that the Office: (1) weigh all the evidence; and (2) establish a reasonable basis to question the enablement provided for the claimed invention.   (MPEP § 2164.05).

A review of the Office Action reveals only the mere conclusion that “there is no enabling disclosure of an incipient component”.  (Office Action, page 3).  Missing, for example, is any discussion of even a single Wands factor or any indication that any evidence has been weighed, as the MPEP expressly requires.  (MPEP § 2164.01(a)).  Indeed, the rejection is devoid of any evidence or technical reasons as to why the disclosure fails to enable the claimed invention.   Rather, the provided “reason” is a mere conclusion, which the MPEP expressly warns is insufficient to support this rejection. (MPEP §§ 706.03, 2164.05).

The Office’s failure to meet its burden to articulate a “reasonable basis” challenging the enablement of claim 2 alone is fatal to this rejection since Applicant is under no burden to rebut it. (MPEP §§ 706.03, 2164.05). For this reason, this rejection is traversed.

Accordingly, Applicant respectfully requests favorable reconsideration and withdrawal of the rejection of claim 2 under the first paragraph of 35 U.S.C. § 112.

In the event that the Office maintains this rejection, Applicant respectfully requests, in accordance with the principles of compact prosecution, that the Office fully develop the reasons for this rejection by articulating, on the record, those factors, reasons, and evidence that lead it to conclude that the specification fails to teach how to make and use the claimed invention without undue experimentation, or that the scope of any enablement provided to one skilled in the art is not commensurate with the scope of protection sought by the claims.  (See MPEP § 2164.04)(emphasis in original).

Example 2 - A Substantive Response

Claim 1 stands rejected under the first paragraph of 35 U.S.C. § 112 as allegedly not being enabled.  Specifically, the Office Action rejected this claim because of the recitation of an outer terminal that restricts an upper movement of a movable portion of a support structure.  (Office Action, page 2).  This contention is respectfully traversed for at least the following reasons.

The enablement requirement of § 112 is satisfied when an application describes a claimed invention in a manner that permits one of ordinary skill to practice it, without undue experimentation. (MPEP § 2164.01).   Thus, the mere fact that experimentation might be required is insufficient to support an enablement rejection.  Further, even complex experimentation is not necessarily undue.  (MPEP § 2164.01).

Applicant respectfully submits that no experimentation is required to make and use the invention of claim 1.  Nonetheless, even if experimentation might be required, it would not be undue.  In this regard, it is important to be mindful that the question of enablement is one of predictability in view of what is known in the art.  Consequently, the amount of guidance or direction needed to satisfy the enablement requirement is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art.  (MPEP § 2164.03).

The specific question of whether experimentation is “undue” is determined based on the following eight Wands factors:

1. Breadth of the claims;
2. Nature of the invention;
3. State of the prior art;
4. Level of ordinary skill in the art;
5. Predictability of the art;
6. Amount of direction provided in the specification;
7. Any working examples; and
8. Quantity of experimentation needed relative to the disclosure.

(MPEP § 2164.01(a), citing In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)).  Further, a proper analysis of whether any experimentation is undue requires an analysis of all of the pertinent Wands factors.  (MPEP § 2164.01(a))(emphasis added).  It is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others.  (Id.).

Claim 1 is directed to a novel semiconductor substrate.  It is submitted that the level of ordinary skill in the relevant art, the scope of which is not addressed in the Office Action, is relatively high.  In addition, Applicant’s FIGS. 1-3 illustrate an example of the invention of claim 1.  Further, Applicant describes a method of manufacturing the substrate of claim 1, a fact evidenced by the Restriction Requirement imposed by the Office Action mailed on 02/15/2008.  As a result, at least the following Wands factors weigh in favor of enablement:

• the state of the prior art;
• the level of ordinary skill in the art; and
• the presence of working examples.

These are not the only Wands factors weighing in favor of enablement, however.

Attention is respectfully directed to page 12, lines 13-24 of the present application, which in conjunction with FIG. 1(B), explains:

When it is not necessary to seal the movable structure 15 in a closed space, the first sealing portion 20 may be formed of a plurality of first sealing portions 20a arranged in a comb shape with gaps as shown in FIG. 2(B). In this case, each of the first sealing portions 20a has a mountain shape having slopes. Each of the first sealing portions 20a individually seals a set of the outer terminal 17, the wiring portion 17a connected to the outer terminal 17, and the electrode pad 18 connected to the wiring portion 17a. As shown in FIG. 1(B), the outer terminal 17 has a height E such that the movable structure 15 is adjustable in the arrow direction A to measure specific acceleration upon mounting.

(Emphasis added).  Thus, Applicant explains that the height of the outer terminal permits vertical adjustment of the movable structure (the A direction in FIG. 1(B)).  This at least implies restricting movement.  Consequently, the following Wands factors also favor enablement:

• such as quantity of experimentation needed relative to the disclosure; and
• the amount of direction provided in the specification also favor enablement.

In view of the foregoing, Applicant respectfully submits that ordinarily skilled artisans would be able to make and use the claimed invention, despite any experimentation that might be required.  Applicant further submits that this conclusion is buttressed by the amount of knowledge in the state of the art as well as the predictability of the art, as well as the majority of Wands factors that weigh in favor of enablement.  Therefore, the present application adequately enables the claimed invention.

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

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

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© 2009, Michael E. Kondoudis

This post is the first of a two-part series on the enablement requirement. This first installment discusses some of the fundamentals of the requirement, relevant law, and the standards for compliance. The second installment will provide examples of responses to enablement rejections.

The Basis for the Enablement Requirement

The enablement requirement arises from the first paragraph of 35 U.S.C. § 112, which states in relevant part:

[t]he specification shall contain a written description of the invention, and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . .

The purpose of the enablement requirement is to ensure that patented inventions are communicated to the public in a meaningful way.

Fundamentals of the Enablement Requirement

1.    The USPTO’s guidelines for examination of patent applications for compliance with the enablement requirement are found in Section 2164 of the MPEP. This should be an Applicant’s primary resource for authority when articulating responses to enablement rejections.

2.      All questions of enablement are evaluated against claimed subject matter. (MPEP 2164.08).

3.     The test for enablement is whether one of ordinary skill would need to engage in undue experimentation to practice the claimed invention. (MPEP 2164.01).

4.    Whether experimentation is “undue” is determined based on the following eight Wands factors:

1. Breadth of the claims;
2. Nature of the invention;
3. State of the prior art;
4. Level of ordinary skill in the art;
5. Predictability of the art;
6. Amount of direction provided in the specification;
7. Any working examples; and
8. Quantity of experimentation needed relative to the disclosure.

(MPEP 2164.01(a), citing In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)).

5.  A proper analysis of whether any experimentation is undue requires an analysis of all of the Wands factors.  (MPEP 2164.01(a)).  It is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others.  (Id.).

6.  The amount of guidance or direction needed to satisfy the enablement requirement is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. (MPEP 2164.03).  Thus, the question of enablement is one of predictability in view of what is known in the art.

Additional Points

1.  The fact that experimentation may be complex does not necessarily make it undue, if the art typically engages in such experimentation.  (MPEP 2164.01).

2.   A patent need not teach, and preferably omits, what is well known in the art.  (MPEP 2164.01).  Further, an Applicant need not “enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect.” (MPEP 2164).

3.  Any part of the specification can support an enabling disclosure, even a background section that discusses, or even disparages, the subject matter disclosed therein. (MPEP 2164.01, citing Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 77 USPQ2d 1041 (Fed. Cir. 2005)(discussion of problems with a prior art feature does not mean that one of ordinary skill in the art would not know how to make and use this feature)).

4.   The specification need not contain an example if the invention is otherwise disclosed in such manner that one skilled in the art will be able to practice it without undue experimentation.  (MPEP 2164.02).

5.  As long as the specification discloses at least one method for making and using the claimed invention that bears a reasonable correlation to the entire scope of the claim, then the enablement requirement of 35 U.S.C. 112 is satisfied.  (MPEP 2164.01(b)).

6.   Claims must be enabled as of their filing date.  (MPEP 2164.05(a)).

7.    Enablement is judged from the perspective of an ordinarily skilled artisan.  (MPEP 2164.05(b)).

The Office’s Burden

1. It is always incumbent on an Examiner to fully develop the reasons for a technical rejection (enablement, written description, etc.).

• Section 706.03 of the MPEP warns Examiners that “[w]here a major technical rejection is proper (e.g., lack of proper disclosure, undue breadth, utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion coupled with some stereotyped expression.” Thus, mere conclusory statements are insufficient to support a rejection under Section 112. Consequently, the Office must arguably provide a reasonable basis to reject a claim for failing to satisfy the enablement requirement, and this requires “a full development” of the reasons for the rejection.

• This obligation to establish a prima facie case is affirmed by the MPEP in its discussions of each requirement of the first paragraph of 35 U.S.C. § 112. (See, e.g., MPEP § 2163 (III)(A) (written description); MPEP § 2164.04 (enablement)).  A prima facie case requires a reasonable basis to challenge the adequacy of the written description. (MPEP § 2164.04).

• In accordance with the principles of compact prosecution, if an enablement rejection is appropriate, the first Office action on the merits should present the best case with all the relevant reasons, issues, and evidence so that all such rejections can be withdrawn if applicant provides appropriate convincing arguments and/or evidence in rebuttal. The principles of compact prosecution also dictate that if an enablement rejection is appropriate and the examiner recognizes limitations that would render the claims enabled, the examiner should note such limitations to applicant as early in the prosecution as possible.  (MPEP 2164.04).

2.   An Examiner should always look for enabled, allowable subject matter and communicate to applicant what that subject matter is at the earliest point possible in the prosecution of the application.  (MPEP 2164.04).  Thus, if a rejection is made based on the view that the enablement is not commensurate in scope with the claim, the examiner should identify the subject matter that is considered to be enabled.  (MPEP 2164.08).

3.  The Examiner’s analysis must consider all the evidence related to each of these factors, and any conclusion of nonenablement must be based on the evidence as a whole.  (MPEP 2164.01(a)).

4.    Only after the Examiner has weighed all the evidence and established a reasonable basis to question the enablement provided for the claimed invention, does the burden fall on applicant to present persuasive arguments, supported by suitable proofs where necessary, that one skilled in the art would be able to make and use the claimed invention using the application as a guide.  (MPEP 2164.05).  The evidence provided by applicant need not be conclusive but merely convincing to one skilled in the art. (Id.).

5. The MPEP instructs Examiners that they must assume compliance with the enablement requirement when an application includes a teaching of how to make and use invention “in terms which correspond in scope to the claims.”  This mandate may be only ignored when there is a basis to doubt the objective truth of the teaching.   (MPEP 2164.04).

So, unless a rejection articulates “evidence or some technical reasoning” that either (i) an enabling teaching does not correspond to the claims or (ii) a reason to doubt the objective truth of such a teaching, the mere presence of a teaching requires that the Office assume that this requirement is satisfied.

Coming Soon in Part II - Examples of Responses to Enablement Rejections

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

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© 2008, Michael E. Kondoudis

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

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

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

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

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

The Office’s failure to meet its burden to articulate a “reasonable basis challenging the adequacy of the written description” with “findings of fact” is fatal to this rejection since Applicant is under no burden to rebut it. (MPEP §§ 706.07, 2163, 2163.04). For this reason, this rejection is traversed.

Accordingly, Applicant respectfully requests favorable reconsideration and withdrawal of the rejection of claim 2 under the first paragraph of 35 U.S.C. § 112.

In the event that the Office maintains this rejection, Applicant respectfully requests, in accordance with the principles of compact prosecution, that the Office fully develop the reasons for this rejection by articulating, on the record, “properly reasoned and supported statements” that sufficiently explain what, in the Examiner’s view, is missing from the written description.

2. A Substantive Response

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

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

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

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

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

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

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

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

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

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

3. Original Subject Matter is Rejected

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

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

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

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

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

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

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© 2007, Michael Kondoudis

This post is the first of a two-part series on the written description requirement. This first installment discusses the fundamentals of the requirement, relevant law, and the proper standards for compliance. The second installment will provide examples of how to more effectively respond to rejections based on the written description requirement.

The Basis for the Written Description Requirement

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

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

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

Fundamentals of the Written Description Requirement

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

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

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

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

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

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

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

1. It is always incumbent on an Examiner to fully develop the reasons for a WDR rejection. Firstly, section 706.03 of the MPEP warns Examiners that “[w]here a major technical rejection is proper (e.g., lack of proper disclosure, undue breadth, utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion coupled with some stereotyped expression.” Thus, mere conclusory statements are insufficient to support a rejection under Section 112. Secondly, this obligation to establish a prima facie case is affirmed by the MPEP in its discussions of each requirement of the first paragraph of 35 U.S.C. § 112. (See, e.g., MPEP § 2163 (III)(A) (written description); MPEP § 2164.04 (enablement))

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

An Approach for Responding to Written Description Rejections

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

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

A Basic Template For A Response To A Written Description Rejection

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

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

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

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

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

The Patent Office’s Training Materials

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

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

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©  2007, Michael E. Kondoudis

The U.S. Patent Office publishes many of its examination guidelines and Examiner training materials on its official website. In my opinion, one of the more useful of these Examiner training materials is an examination guide for rejections under 35 U.S.C. §112 which can be found here. The stated purpose of this training document is to teach new Examiners the principles involved in making rejections under 35 U.S.C. §112. In teaching these principles, this training document articulates specific examination approaches that Examiners are supposed to employ to ensure compliance with 35 U.S.C. §112. For example, on the subject of enablement, this document articulates an “essential test,” “pertinent considerations,” and the burden of proof, as well as providing examples of enablement and identifying applicable sections of the Manual of Patent Examining Procedure.

As a summary of the law regarding 35 U.S.C. §112 from a patent prosecution perspective, this Examiner training document can be particularly useful when responding to §112 rejections since it articulates the actual standards and considerations that an Examiner should be applying during the examination of an application.

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

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© 2007, Michael E. Kondoudis

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.

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

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