American IPA

Patent office pet peeves

Brian Schar — Fri, 06 Jan 2012 17:25:50 +0000

Office Action response: Make argument A against rejection

Final Action: Copy and paste contents of first Office Action, ignore argument A

Appeal Brief: Make argument A that was previously ignored

Receive call from Examiner reopening prosecution to address new argument A. ???

An interesting bit of history

Brian Schar — Thu, 05 Jan 2012 18:40:41 +0000

US Pat. No. 2297256 is an interesting historical tidbit. The inventor, one Winfried Schumann, was a German national who filed a patent application in the USPTO in 1939, based on a German application filed in 1938. The patent wasn’t issued until 1942. Of course, in the interim Germany and the US went to war. That didn’t stop the patent from issuing. The interesting part is the first text page that sets out inventorship and ownership: “Winfried Otto Schumann, Munich, Germany, vested in the Alien Property Custodian.” I had no idea there had been such a thing as the Alien Property Custodian, but I suppose it makes sense that the USPTO wouldn’t grant patent rights to a citizen of a country against which the USPTO declared war, and that the APC would take control of that patent. In my ample spare time I may attempt to find out more about the Alien Property Custodian, and whether the APC relinquished title to the inventor after the conclusion of hostilities.

Additional thoughts about patent prosecution strategy and tactics

Brian Schar — Wed, 04 Jan 2012 17:38:19 +0000

As patent attorneys, we are first and foremost attorneys, regardless of our chosen specialty. As such, we have training and experience in arguing the law as well as the facts. Patent examiners, as well-trained as they may be in the MPEP and in the mechanics of patent examination, are rarely attorneys. Consequently, in a matchup between a patent attorney and an examiner, the advantage goes to the patent attorney in the legal aspects of patent prosecution. Strategically, a patent attorney wants to be in that position of arguing the law and playing to his or her advantage in that subject.

Tactically, a patent attorney gets to that position on appeal. On appeal, cite cases, argue the law, and treat the appeal brief just like any brief you would file in the course of patent litigation. If you simply engage the examiner on his or her own terms in the appeal brief, you have conceded your most valuable advantage. I smile when I receive an Examiner’s Answer that simply reiterates the final action and ignores the legal arguments in the appeal brief, because the reply brief is then short and sweet – a quick reiteration of the most important legal points, followed by an argument under Zurko that the examiner has ignored the law and thus acted arbitrarily and capriciously by definition, with the addition of any other highlights that improve my odds of winning.

Patent prosecution strategy and tactics – 102 vs. 103

Brian Schar — Wed, 28 Dec 2011 18:34:11 +0000

Conventional wisdom is that a 102 rejection is somehow more advantageous to the applicant than a 103 rejection, and that 103 rejections are more difficult to overcome. I disagree with that.

The options for handling a 102 rejection are few: amend, argue that the Examiner’s interpretation of the claim is broader than the broadest reasonable interpretation, or argue that the prior art reference does not actually describe what the Examiner says it describes. That’s about it. When the Examiner makes a 102 rejection, he or she is like a quarterback in the pocket.

However, your options for handling a 103 rejection are more numerous. MPEP 2143.01 alone, analyzed at length elsewhere in this blog, provides 2 major and 4 minor avenues of attack against a 103 rejection. MPEP 2143.01(V)-(VI) are not even limited to the scope of the claims, and allow the Applicant to argue that the references should not be combined for reasons unrelated to the specific language of the claims. One can make analogous art arguments against a 103 reference, in contrast to 102 in which the field of the prior art reference is completely irrelevant. In a 103 rejection, the Examiner must provide sufficient technical reasoning for combining references, reasoning which is often (if not usually) absent.

The strategy, then, is to flush the Examiner out of the 102 pocket into a 103 rejection. The tactics are the arguments used to overcome the 103 rejection.

I’ve made arguments in interviews that have caused the Examiner to change a rejection from 102 to 103 in the subsequent Office Action. Usually such arguments are met with some bafflement by the Examiners; I’ve heard in response statements like “your amendment/argument will overcome the 102 rejection, but almost certainly I will just make this a 103 rejection in the next Office Action.” I just smile and nod, because that’s the strategy.

MPEP 2143.01(V) in action

Brian Schar — Mon, 28 Nov 2011 18:56:01 +0000

MPEP 2143.01(V) expressly states that a proposed modification of a prior art invention cannot render that invention “unsatisfactory for its intended purpose.” If it does, “there is no suggestion or motivation to make the proposed modification.” An older post analyzes this section in the MPEP in detail.

The day before Thanksgiving, the BPAI handed down an opinion in Ex parte Hollander, completely reversing the rejection of all pending claims. Ex parte Hollander provides a compact, but textbook, analysis of a combination of references that renders a prior art invention unsatisfactory for its intended purpose. Rather than a citation to the MPEP, Ex parte Hollander relies on the Federal Circuit case Tec Air, Inc. v. Denso Mfg. Michigan Inc. (192 F.3d 1353, 1360) (Fed. Cir. 1999) for the same proposition. (Tec Air may be a useful arrow for appellants to add to their quiver when making an MPEP 2143.01(V) argument.)

The power and the beauty of MPEP 2143.01(V) is that it is not limited to the scope of the claims or to the particular language of the claims. In Ex parte Hollander, the Board relied on the fact that a prior art bag that “could be opened by an adult” (i.e., a bag that was childproof) would thwart the purpose of the second piece of prior art, which was to provide “a tamperproof container.” None of these terms appear in the claim at issue. The analysis of MPEP 2143.01(V) focuses on the proposed modification, not on the particular language of the claims.

MPEP 2143.01(V) is one of the most powerful weapons you have against badly-thought-out 103 rejections, and its power only increases with the number of references cited. Use it.

Don’t try this yourself!

Brian Schar — Wed, 23 Nov 2011 22:10:36 +0000

Unless you’re a government attorney, and specifically a federal prosecutor, I wouldn’t make the argument that I didn’t have to follow the law because the Court didn’t specifically order me to do so.

Update on my ombudsman experience

Brian Schar — Fri, 04 Nov 2011 16:29:33 +0000

I wrote too soon. It turns out that my problem was resolved – the person who had been assigned to help me simply never called me or otherwise informed me of that. I would in fact use this program again; what I would do differently is communicate more frequently with the particular USPTO employee assigned to help me. If you utilize the ombudsman, I would recommend you do the same.

Quick tip for changing entity status

Brian Schar — Thu, 03 Nov 2011 16:26:44 +0000

If you plan to pay maintenance fees in an issued patent that has changed from small entity status to large entity status, write a letter a week or two in advance noting the entity status change and make sure it’s signed by the attorney of record or other party authorized by 37 CFR 1.33(b)(1). Fax that letter to the Department of Finance at (571) 273-6500. When you go on line to the USPTO to pay the fees electronically, the entity status will have been changed to “large”, so that you can pay the proper fee amount for a large entity.

My ombudsman experience

Brian Schar — Mon, 31 Oct 2011 22:06:00 +0000

I recently attempted to use the USPTO ombudsman program for the first time, in order to deal with a Notification of Non-Compliant Appeal Brief in which the reviewing paralegal had gone completely off the rails. In order to participate in the program, you have to make a request on the USPTO web site, but you can’t tell them what your problem is until they call you. I didn’t mind that it took 2 business days to receive a call, as opposed to the target of one day. That wasn’t a big deal. The person who called was from the technology center in which my application was being handled. When I told him my problem, less than 60 seconds into the call, he told me how much he would be unable to help me. Then he said he’d try to reach the right person at the BPAI, and that I might get a call back within a week, but not to expect it. Over a week later, I haven’t received a call back. Big surprise.

I’m glad that I tried this out, but I’m cynical enough that I got exactly the results I expected. I won’t be using the ombudsman program again.

Help end bad “design choice” rejections

Brian Schar — Mon, 03 Oct 2011 23:20:34 +0000

Below is the text of a short letter that I faxed to the BPAI re making Ex parte Gunasekar precedential. In a nutshell, Ex parte Gunasekar sets out clear standards for rejecting a claim on the oft-abused grounds of “design choice.” Read the opinion, and if you agree with me, please join me in sending this request to the BPAI.

Dear Chief Judge Fleming:

I write to request that the Decision on Appeal be made precedential in the appeal designated Ex parte Gunasekar, Appeal No. 2009-008345, Application No. 10/903,590. I am not a party to this application, and have no ownership of or license to this application. Additionally, I write on my own behalf and not that of my employer, who may not necessarily share my opinion.

Obviousness rejections grounded in “design choice” have been a problem in some art units for a long time. There is a tendency by some Examiners to gloss over missing elements in the prior art with the incantation of “design choice,” while providing little or no technical reasoning for that rejection. Further, the idea of “design choice,” interpreted broadly, covers all §101 patentable subject matter, which is necessarily designed: the question is whether the design was obvious.

The MPEP is virtually silent on the topic of design choice rejections, and as a result provides no guidance to the Examiners as to the proper circumstances for making such a rejection. Further, the MPEP does not provide any useful guidance to Applicants as to how a design choice rejection can be overcome.

Ex parte Gunasekar, on the other hand, brings significant clarity to the circumstances of a proper design choice rejection. It sets a standard that can be easily understood and followed by Examiners and Applicants alike. As such, it would help Examiners in writing clearer design choice rejections where appropriate, and to avoid them in situations where they are not appropriate. It would help Applicants more thoroughly and clearly respond to design choice rejections as well. Further, it likely would reduce the number of appeals that argue design choice as a ground of rejection, because clearer rules would help to dispose of the design choice issue at an earlier phase during prosecution. Thus, making this case precedential would likely “help expedite Board consideration of other cases or provide needed guidance to examiners or applicants,” which is one criterion for making an opinion precedential.

Thank you for considering this request.