Avoiding Implications By Silence In A Prosecution History – Part 1

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