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This safe harbor is mined April 29, 2010

Posted by Brian Schar in General, Patent prosecution, USPTO.
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After filing a notice of appeal, a practitioner typically reviews the Final Action and the file history when starting to write the Appeal Brief.  Sometimes, the most egregious error made by the PTO was with regard to a particular dependent claim, and the best argument to be made is with regard to that dependent claim.  A good argument may be present with regard to patentability of the parent claim.  However, in the interest of presenting one or two strong arguments, and avoiding a scattershot approach, it can be useful to amend the claims concurrently with filing the appeal brief in order to incorporate the limitations of the dependent claim into the parent claim.

The MPEP provides a safe harbor for this procedure.  Indeed, it helps both the patent attorney and the examiner, because such an amendment means that each has to formulate and respond to fewer arguments.  MPEP 1206(I) expressly states that “[a]mendments filed on or after the date of filing a brief pursuant to 37 CFR 41.37 may be admitted only to … (B) rewrite dependent claims into independent form.  Rewriting dependent claims into independent form as permitted under 37 CFR 41.33(a)(2) includes the following situations … (B) rewriting an independent claim to incorporate therein all the subject matter of a dependent claim, canceling the dependent claim and in conjunction therewith changing the dependency of claims which had depended from the dependent claim being canceled to the amended independent claim that incorporates therein all the subject matter of the now canceled dependent claim.”

Usually this process is straightforward; the amendment is entered and the appeal process continues with the amended claims.  However, the fatal flaw in MPEP 1206 is that it is permissive, not mandatory.  “Entry of a new amendment in an application on appeal is not a matter of right,” even if that amendment is specifically allowed to dock in the safe harbor of MPEP 1206(I). 

Recently, in order to simplify the issues on appeal in a particular application, focus on the strongest argument, and, yes, make less work for myself, I filed an amendment concurrently with an appeal brief that canceled a dependent claim 16 and incorporated its subject matter in the parent independent claim 15.  This is straightforward administrative appellate practice that I’ve done a dozen times before.

Instead of the response I expected, my petition was denied, then denied again after a request for reconsideration.  Why?  Because dependent claims 17-20 had not previously depended from claim 16, such that my amendment “changes the scope” of those claims.  In the clunky and artless prose that only a government agency can generate:

“While an independent claim may be amended by adding the limitations of a dependent claim to write a dependent claim in independent form there is nothing in the rule [37 CFR 41.33] nor the MPEP which permits rewriting a claim into independent form and having claims depend therefrom which depending claims had never previously depended from the subject matter of the now rewritten claim.”

 Nothing, except, you know, MPEP 1206(I).  And, the fact that an independent claim by definition includes the entire scope of all claims depending therefrom.  Let’s not forget the Code of Federal Regulations, which expressly defines a dependent claim as one that “refer[s] back to and further limit[s] another claim or claims in the same application.”  (37 CFR 1.75(c)).

The Decision continued, stating that “[u]nder the circumstances, at least the scope of the dependent claim 20 was never considered and properly rejected in the final rejection.”  Really?  The Decision threw the Examiner under the bus when it didn’t have to do that, claiming that he never considered claim 20.  If the Decision was serious about that, it would have withdrawn the final action and remanded the case to the Examiner.  Of course, that would have meant less funds for the PTO, so of course that didn’t happen.  Astoundingly, this Decision was signed by the director of the tech center

This Decision is another example that I’ve encountered of a disturbing trend, which is a lack of understanding spread among an increasing number of PTO employees about what a dependent claim really is.  Of course, anecdotal evidence is not evidence.  Nonetheless, this is the tip of an iceberg that has crashed into several of my cases, where Examiners clearly have not been trained properly on the interpretation and nature of dependent claims.

Because this was a petition, I couldn’t appeal the decision, and there was no point in taking its denial to court; I lack the time and money to do that.  So, at the end of the day, the USPTO fought me hard for, and won, the privilege to make me write a longer appeal brief and to make the Examiner write a longer Examiner’s Answer, counter to the supposed USPTO goals of reducing the backlog and reducing the number of RCEs filed. 

The takeaway from a practice standpoint is to be sure that, when you file your notice of appeal, you have a good argument as to all of the rejected claims, even if you tactically choose to file an amendment to consolidate some of them to focus the issues.  The PTO may force you to argue all of the rejections, and if you’re not able to do that effectively, you will be better off filing an RCE than a Notice of Appeal.

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