Patentably DefinedTM

© 2008, Michael E. Kondoudis

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

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

This post discusses strategic considerations concerning identifications of support for claim amendments.

New Matter is Prohibited

Section 706.03(o) of the Manual of Patent Examining Procedure (MPEP) addresses rejections based on new matter (matter not supported by the disclosure at the time of filing). This section of the MPEP, citing 35 U.S.C. § 132, articulates the rule that no amendment may introduce new matter into the disclosure of an invention.

The question of what constitutes new matter may sometimes be difficult to resolve. After all, an Applicant may rely on every part of the application as originally filed for support for a claim amendment. Additionally, an Applicant is entitled to rely on any inherent or implied teachings of the specification, drawing(s), and claims, in addition to the express teachings. Still further, because there is no in haec verba requirement, an Applicant is not constrained to the terminology used in the application as filed.

In view of the occasional difficulty in resolving new matter issues, and the objection/rejection an Examiner is instructed to make if there is a question of whether a claim amendment might introduce new matter, it may be prudent to consider including identifications of support for claim amendments to help avoid good faith, but ultimately incorrect, new matter rejections.

Identifying Support For a Claim Amendment May Have Risk

A cautious prosecutor, however, will recognize that every identification of support carries with it some risk. For example, there is a possible risk of error. This is of particular concern since an Applicant is correlating claim features to portions of the disclosure. Also, unless all support is identified, an Applicant risks an implication that only the identified portion(s) of a disclosure support an amendment. Both the argument estoppel of the former example and the implication of the latter can be problematic in litigation.

Because of the issues, it may be worth considering reserving identifications of specific support for situations when doing so will be advantageous to the Applicant.

A Risk/Reward Analysis Is Useful to Minimize Unnecessary Identifications of Support

A prosecutor can provide value to a client by engaging in a risk/reward analysis and, when the analysis weighs in favor of identifying support, doing so strategically. Here, the analysis might be whether the likelihood of an objection/rejection outweighs the risk of potential litigation issues, in view of factors such as whether: an Examiner has a history of questioning support for claim amendments; claim terminology deviates from what was used in the application as filed; and support will be difficult to locate in the originally filed disclosure.

Strategic Examples

1. A Generic Identification
When a risk/reward analysis does not weigh in favor of identifying support, the following paragraph might be used:

Applicant submits that support for these amendments can be found in the disclosure as originally filed, and therefore no new matter has been added.

2. A Specific, Non-Limiting Identification of Support
When a risk/reward analysis weighs in favor of identifying support for a claim amendment, the question becomes “how to do it?” An adequate way might be to state:

Applicant has amended claim 1. Paragraph [0025] of the Specification supports this amendment. Thus, no new matter has been added.

This identification is acceptable; it is efficient and direct. I submit, however, that this statement does little to address some of the risks inherent to identifications of support. Thus, there is room for improvement. Consider the following example:

Applicant has amended claim 1. Support for this amendment may be found at least at, for example, paragraph [0025] of the Specification as originally filed. Thus, no new matter has been added.

I submit that the latter paragraph is an improvement over the former because it is non-limiting. Consequently, it at least arguably avoids the potential litigation issues discussed above. First, the latter paragraph uses the word “may” instead of “is” or “can.” The word “is” conveys certainty. The word “can” expresses the ability to do something. In contrast, according to many authorities, the word “may” indicates only a measure of likelihood or possibility. Thus, “may” is arguably more appropriate, since the specified location is “an example.” Second, the latter paragraph is crafted to state only that paragraph [0025] provides an example of support, which can be beneficial if other, better, or more advantageous support is identified later in prosecution or litigation.

In the end, the way an applicant identifies support is not as important as understanding when it is necessary and the risks involved. These considerations will dictate how and when to identify support for a claim amendment.

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© 2008, Michael E. Kondoudis

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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One of the benefits of publishing a blog is the prerogative to promote the perspectives, people, and sites that I find to be of interest and that I believe my readers may find interesting. In this regard, I want to mention a new, novel IP website named Relatip.

There are several social sites on the Internet. Also, there are numerous IP related blogs. Relatip, however, is the first hybrid social/IP blog that I know of. As the site’s tagline says, it is where IP professionals connect. It has an international flavor, which is not surprising since it is populated by member IP practitioners from all over the world. Relatip includes a blog with postings by members from Europe, Asia and North America as well as patent, trademark, and copyright forums (I moderate the patent forum). So, if you are interested in making some new international contacts, keeping up on developments in international IP law, and/or elevating your international exposure, Relatip may be for you.

Relatip is primarily sponsored by the Israeli law firm of Appelfeld Zer Fisher.

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© 2008, Michael E. Kondoudis

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

The specific changes to section 2143.03 are indicated below:

2143.03 All Claim Limitations Must Be Taught or SuggestedConsidered

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

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

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

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

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Patentably Defined is a year old. I want to take this opportunity to thank all of you for visiting this blog, for suggesting it to colleagues, and for leaving your comments. Last month was this blog’s busiest month to date. I am still in awe over the thousands of monthly visitors to this site and the many thousands more who subscribe by RSS and email. I still remember the day I registered the 100th unique visitor to this site and the day I received my very first email comment/compliment (thank you Russ Krajec of Anything Under the Sun Made by Man!).

With a year under my belt, I realized it was time to have a blog makeover. When I started this blog, I was new to blogging and a simpler site was the best choice. The previous look served its purpose as a vehicle to help me learn to blog, to communicate with all of you, and for you to communicate with me. Having hopefully mastered the basics of Wordpress and cascading style sheets (thank you Joe Iskra and Chris Mitchell!), it is time to move to a more advanced look and feel that actually has some character and reflects my background in astrophysics.

On this anniversary, I’ve decided to re-publish my very first post to see if I have stayed true to my promised mission:

Welcome to the Patentably Defined Blog. I intend this blog to be a practical resource for patent practitioners, providing engaging discussions of various patent prosecution strategies along with practical suggestions and useful examples. The many strategies and practice examples that will appear on this blog are for the consideration of those who will (hopefully) visit this blog, and the opinions, suggestions, and commentary of those visitors are humbly solicited.

After 35 posts, I think that I have remained true to this purpose. As always, I welcome your feedback. If you have any suggestions on how I can improve this blog or if there are topics you would like to see covered, please let me know.

Here is to the years ahead.

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© 2008, Michael E. Kondoudis

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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There is a new website that may be of interest to the patent and trademark prosecutors who read this blog. It is called “USPTOExaminers” and looks to be a forum to discuss individual Examiners at the U.S. Patent and Trademark Office.

The developers of the website describe it as “a website that was developed specifically for intellectual property professionals, such as patent attorneys, patent agents, and trademark attorneys, to provide them with information about a particular Patent Examiner or a Trademark Examining Attorney who is examining a specific patent or trademark application. This website provides such information by forming an online collaborative environment in which members of professional organizations, corporations, and inventors may anonymously pool their experiences and opinions about a Patent Examiner or a Trademark Examining Attorney, including their knowledge of the law and technology, as well as their accessibility.”

You can visit “USPTOExaminers” by following this link.

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© 2008, Michael E. Kondoudis

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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