An anticipating reference must be enabled February 28, 2012
Posted by Brian Schar in Federal Circuit, Patent prosecution.add a comment
Clearvalue, Inc. v. Pearl River Polymers, Inc., a recent precedential decision from the Federal Circuit, emphasized that a 102 reference must be enabled to be a proper reference. This is not new law, but Judge Moore stated it clearly: “To anticipate a patent claim under 35 U.S.C. §102, ‘a reference must describe…each and every claim limitation and enable one of skill in the art to practive an embodiment of the claimed invention without undue experimentation.’ Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).”
Given that there are significantly fewer avenues for challenging a rejection under 102 as compared to a rejection under 103, a key part of any response to a 102 rejection must include an evaluation of the allegedly-anticipating reference to determine whether that reference is enabled as to the claim limitations in question.
Another take on the new BPAI filing fee February 13, 2012
Posted by Brian Schar in General, Patent prosecution, USPTO.3 comments
In the patent blogosphere, there has been a lot of angst about the proposed fee for proceeding to the BPAI after filing an appeal brief. It will cost $2500, but there will be no fee for the appeal brief itself. I do not disagree with the many voices that object to this cost. However, I have a different perspective. My practice is almost entirely within a single Technology Center. I find that, more often than not within that TC, the Examiner will reopen prosecution after receiving my appeal brief – sometimes 2 or even 3 times in a row. Under most circumstances, I simply respond by filing a new appeal brief, which costs nothing in the current system. However, this USPTO-generated churn can burn through a year or more of time. If I could pay a $2500 fee and be guaranteed of going to the BPAI, rather than having prosecution reopened, I would gladly pay that fee up-front in order to get in line at the BPAI.
Arguing dependent claims February 10, 2012
Posted by Brian Schar in Patent prosecution, USPTO.add a comment
On appeal, it can be tempting to focus on the independent claim or claims, and allow any dependent claims to stand or fall with their parent claim. Sometimes, that’s the best strategy – particularly where there is a narrow issue with the independent claim that is almost certainly in your favor as the applicant.
However, sometimes the dependent claims are rejected in a particularly slipshod or erroneous manner. If you would be willing to amend an independent claim to include the limitations of such a dependent claim, it can be worthwhile to argue that dependent claim. Even if you lose on the independent claim, and win on the dependent claim, it’s still a win.
My rule is that I shouldn’t appeal if I don’t think I am almost certain to obtain a reversal. That is why my success rate on appeal is over 90%. However, by arguing a weak rejection of a dependent claim, you increase your odds of victory overall, and lower the threshold in favor of appeal when making the appeal vs. RCE decision. As an example, if the independent claim claims A and its dependent claim claims A+B, and I’m willing to settle for A+B, then my threshold for filing an appeal is a 50% chance of victory on the independent claim rather than the 80-90% threshold that I would otherwise have – as long as the dependent claim claiming A + B reaches the 80-90% confidence level for reversal.
In arguing a dependent claim, be sure to follow the guidance of In re Lovin and set forth an actual argument with regard to a dependent claim.
Definitions and strategy February 9, 2012
Posted by Brian Schar in Federal Circuit, Patent prosecution, USPTO.1 comment so far
Recently, the Federal Circuit decided Thorner v. Sony Computer Entertainment America LLC. That case clearly lays out the circumstances in which an applicant is considered to have acted as his or her own lexicographer with regard to a claim term. “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments; the patentee must ‘clearly express an intent’ to redefine the term.” (slip op., p. 5, citations omitted).
While there are no magic words with which an applicant must “clearly express an intent” to define a term, there is no substitute for phrases such as “‘Term’ is defined to mean…”. After the applicant has acted as his or her own lexicographer for a claim term, “that definition will control interpretation of the term as it is used in the claim.” (MPEP 2111.01(IV)). While this can be limiting, it can also be powerful, as it removes claim interpretation from the Examiner and puts it in your hands.
There are interesting strategic implications that follow from acting as one’s own lexicographer. For example, one could expressly define a term “widget” to have a particular meaning, such as “a longitudinally extending bar with a polygonal cross section.” One independent claim might utilize the term “widget,” while another might claim in place of the term “widget” the actual definition of the term widget, or better yet a variant of that definition. For example, claim 1 might claim a widget, while claim 10 might claim a longitudinally extending bar with a closed cross-sectional perimeter. In this way, you can easily obtain claims of different scope, which has advantages both on offense and on defense. Further, one can have the benefit of expressly defining a term in one claim in order to control its interpretation, and the benefit of using different words in another claim such that one is not limited to an express definition set forth in the specification.
Boiled down to a one-sentence summary, defining a term doesn’t mean you have to use that term in each claim, but it gives you the power to control interpretation of that term and the opportunity to vary the scope of the independent claims within a single patent to prevent the interpretation of the claims from being unduly limited.
