American IPA

This is the last installment of my occasional series about MPEP 2143.01, which will focus on 2143.01(I).  That section is entitled “Prior Art Suggestion of the Desirability of the Claimed Invention.”  Essentially, 2143.01(I) just states that the “teaching, suggestion, or motivation” test is one way to establish obviousness, and that the motivation to combine need not be expressly set forth in writing.  Unlike the other sections of MPEP 2143.01, which inform the applicant of ways to show nonobviousness, 2143.01(I) informs the examining corps about a methodology to show obviousness.  And that’s about it.

Next up, a discussion about the safe harbor that isn’t, when an applicant attempts to amend an independent claim to include the limitations of claims depending therefrom, concurrent with the filing of an appeal brief.

The word being “moot.”

One of my least favorite things about Office Action is the form sentence that states “Applicant’s arguments have been considered but are moot in view of the new ground(s) of rejection.”  More often than not, the Office Action cuts and pastes a section from a previous Office Action that necessitated the applicant argument that was supposedly considered but is now “moot.”  Then I get to cut and paste the same argument a second (or third, or fourth) time in the response.  I suppose this is “compact prosecution.”

We patent attorneys have been taught all about the claim tree.  Each independent claim has a plurality of dependent claims depending therefrom, where each dependent claim further limits the subject matter of the independent claim.  In theory, the narrowest dependent claim in a given tree should define the narrowest scope that the applicant would be willing to accept.  That way, if the Examiner objects to a dependent claim, that dependent claim can be folded into the parent independent claim, and that amended claim can proceed to issue. 

If only the process worked that simply.  It occurred to me the other day that I haven’t seen an objection to a dependent claim in probably well over a year, if not longer.  Granted, my applications fall primarily in a handful of art units, such that the rest of you outside those art units may not have the same experience.  But I bet you have.

This observation prodded me to think about dependent claim practice more generally.  We pay for 3 independent claims and 20 total claims.  But sometimes, where an invention is narrow in the first place, it’s a struggle to come up with 17 worthwhile dependent claims.  If so, writing 20 claims for the sake of having 20 claims may be a waste of time.

More importantly, if dependent claims are never going to be objected to at all, or only rarely objected to, they only serve to pollute the record.  As an example, consider independent claim 1 that claims A+B+C, claim 2 that depends from claim 2 and additionally claims D, and claim 3 that depends from claim 2 and additionally claims E.  The reality is that this claim string invites a 103 rejection.  It’s likely a groundless, analysis-free 103 rejection that can be dealt with under one of the provisions of MPEP 2143.01.  But nonetheless, such rejections, no matter how ill-conceived, end up on the record, as do the patents and published applications cited therein.  My friend and old colleague Jon Hallman and I discussed this for a while the other day, and the idea that you might be able to reduce the obviousness rejections in a particular case (or at least their complexity) by reducing or eliminating dependent claims was pretty appealing.

Dependent claims are also an invitiation to species restriction.  Despite the fact that “[c]laims themselves are never species,” not every Examiner has gotten that memo.  Even when confronted with the straightforward language of MPEP 806.04(e), some Examiners will not back down and will maintain a restriction requirement where groups of dependent claims are identified as species.  (Of course, if the continuation rules go into effect, this is not necessarily a bad thing.)

When would you want to submit dependent claims?  In conjunction with a properly-written specification, some dependent claims may be useful for claim differentiation purposes.  One also might submit a number of dependent claims after allowance of the independent claims.  Such an amendment by definition would not require a new search, because those claims only further limit the allowed independent claims.  Whether such an amendment would actually be entered is another question.  However, careful drafting of those additional dependent claims (such that they clearly further limit the allowed independent claims) would increase the chances of such an amendment being entered.

I’m not sure that I’m going to adopt this approach, but I’m going to give it serious consideration.

MPEP 2143.01(III) states that “[t]he mere fact that references can be combined or modified does not render the resultant combination obvious unless the results would have been predictable to one of ordinary skill in the art.”  (emphasis in original). 

In my practice, I don’t find this section of the MPEP particularly helpful in overcoming obviousness rejections.  Neither the examiner nor the attorney really know what “one of ordinary skill in the art” is.  Even if the examiner and the attorney could agree on some definition such as “a mechanical engineer with a bachelor’s degree and 5 years of experience,” that still doesn’t help determine whether such a person would find the results of a combination predictable. 

This portion of the MPEP would be helpful in declaration practice, if you submit a declaration from an expert in regard to nonobviousness of a claim; that expert would likely be a person of extra skill in the art but who could opine about the level of ordinary skill.  But if you’re going to the trouble of obtaining and filing a declaration, you already know that. 

 Unless you want to obtain a declaration, you are probably better off looking to other parts of MPEP 2143.01 to overcome an obviousness rejection.

MPEP 2143 states, at its very beginning, that “[t]he key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious,” citing KSR.  MPEP 2143.01(IV) says, in effect, “and we really mean it!”

MPEP 2143.01(IV) is short, clear and useful.  A mere statement that “the claimed invention would have been ‘well within the ordinary skill of the art at the time the claimed invention was made’ … is not sufficient (emphasis added here) to establish a prima facie case of obviousness without some objective reason to combine the teaching of the references.”

Nonetheless, many (not a majority, to be sure, but a significant minority) of Office Actions that I receive provide no “objective reason to combine the teaching of the references,” and simply refer to the combination as being “well within the ordinary skill of the art.”  In response, I generally traverse the obviousness rejection, cut and paste MPEP 2143.01(IV) into the Response to Office Action, and point out that in the absence of any “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” the rejected claims are allowable in accordance with MPEP 2143.01(IV).  In response, you will either receive a notice of allowance, a different obviousness rejection, or some actual rationale supporting the previous obviousness rejection (which is the most likely outcome).  In that case, you are better off than before, because you have something more concrete to appeal.  Unless, of course, the Examiner is in fact correct.  Even in that situation, you’re still better off than before, because the nature of the rejection is clearer and you stand a better chance of amending the claim to overcome the rejection.

Some Examiners will provide a rationale that there is a particular problem to be solved, so that solving the problem by combining the cited references is obvious.  But that rationale is not only circular, but misses the point of KSR and MPEP 2143.01(IV).  Stating that finding a solution to a problem is obvious is not the same as “articulat[ing] reasoning with some rational underpinning” as to why the particular cited references would be combined to solve that problem.   For example, world hunger is a problem.  But generalized “world hunger” is not a valid rationale to combine references to find that a new blight-resistant genetically-engineered food crop is obvious.

MPEP 2143.01(IV) is also a good argument against articulated reasoning with irrational underpinning.  For example, one could receive an obviousness rejection on the grounds that two pieces of art could be combined to form a device with a particular characteristic.  However, that characteristic would render the claimed invention nonfunctional.  So, in addition to arguing MPEP 2143(V) and (VI), one could and probably should argue under MPEP 2143.01(IV) that the reasoning had no “rational underpinning.”

MPEP 2143.01(IV) is often overlooked, but shouldn’t be.  It is a first line of defense against poorly-written and poorly-considered obviousness rejections.

In the spring, a young man’s fancy turns to thoughts of baseball, but a middle-aged man’s thoughts turn once more toward yet another round of patent “reform” legislation.

In the early draft of this year’s bill, the long-controversial topic of post-grant opposition survives.  At least, this time around, the opposition period is limited to one year from issue, which is far more reasonable than last year’s nebulous first and second window periods which could have extended years past issuance.  A one-year opposition period places USPTO procedure in greater conformance with EPO procedure, which allows a nine-month window.

I will not attempt to provide a value judgment as to post-grant opposition here, other than to state for the record that (1) I am opposed to it, and (2) it is a tacit admission by the USPTO that it cannot do its job.  What I’d rather do is point out why, logistically, post-grant opposition is doomed to failure as a practical matter.  Approximately 5% of granted applications in the EPO are opposed.  Assume that a similar 5% of granted applications in the US are opposed.  In 2007, 167,000 patents issued in the US.  Five percent of that number is approximately 8000 oppositions.

The BPAI heard 3485 appeals in FY2007.  As it stands, the BPAI is overloaded with that amount of work.  Now imagine the BPAI trying to decide 8000 oppositions a year, on top of the 3000+ appeals a year that it handles.  Post-grant oppositions would more than triple the amount of work on the BPAI’s plate.   The pendency for appeals is measured in years, not months.  That pendency would only increase, and the pendency for oppositions out of the gate would almost certainly be years long as well.

Congress – as well as the USPTO – should think long and hard about the practical consequences of post-grant opposition in any so-called patent reform legislation this year.

The USPTO continues to intensify the hypertechnicality of its interpretation of the existing appeal brief rules.  Today I received a notice that an application on appeal was abandoned, because the appeal brief was noncompliant with regard to two separate points.  The kicker is that I had received a Notice of Non-Compliant Appeal Brief (who doesn’t?), but neither of those points were raised in the Notice.  

Due process issues aside, the USPTO complained that I had not referred to the specification by page and line number in the Summary of Claimed Subject Matter.  This is an application that I filed with paragraph numbers in the specification instead of line numbers, which has been standard practice for some time now.  However, the “gotcha” in MPEP 1205.02(v)  is that the Summary of Claimed Subject Matter “must refer to the specification by page and line number.”  This requirement is contrary to standard practice and adds no value or clarity whatsoever to the appeal process, and serves solely as yet another way for the USPTO to dispose of appeals other than on their merits. 

Nevertheless, in order to prevent the summary rejection of your appeal briefs, make sure that you count your line numbers and use them in your appeal brief.  It doesn’t make any sense, but that’s the way it is.

In fact, forcing the Examiners to count line numbers on pages that are not line-numbered creates more work for them than simply pointing to paragraph numbers.   Perhaps it would be a good idea to line-number the pages of the specification and also paragraph-number the paragraphs, for those who want to make things easier for the Office.