EXAMINER’S REASONS FOR ALLOWANCE

1. EXAMINER’S REASONS FOR ALLOWANCE To Respond, or not to Respond?That is the Question! Samson HelfgottDirector of PatentsKMZ RosenmanNew York, N.Y.January, 2004 41292667

2. Rule 37 C.F.R. 104(e) (first portion) “If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning. The reasons shall be incorporated into an Office Action rejecting other claims of the application or patent under reexamination or be the subject of a separate communication to the applicant or patent owner.” • Only basis - if record is not clear • Can be as part of an Office Action • Can be a separate statement with the Notice of Allowance

3. Rule 37 C.F.R. 104(e) (second portion) Pre-Sept. 2000 “The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure to file such a statement does not give rise to any implications that the applicant or patent owner agrees with or acquiesces in the reasoning of the examiner.” • Opportunity to comment • “Safe harbor” provision - i.e. any effect from the examiner’s RFA would not be imputed to applicant because applicant did not respond.

4. 1999 - USPTO issues Reissue Guideline Memo • An RFA without rebuttal by the applicant will preclude a broading reissue where the claims limitations found in the RFA are removed from the reissue claims. • Imputing failure to reply as acquiescence to examiner’s interpretation and surrender of claims during prosecution, which can then not be broadened during reissuance under the “Recapture Rule”.

5. 2000 Revision of Rule 104(e) (last sentence) • “Failure by the examiner to respond to any statement commenting on reasonsfor allowance does not give rise to any implications.” • Removal of “Safe harbor” provisions for applicants • USPTO comment issued with rule change: failure of an applicant to comment on damaging RFA would give rise to a presumption of acquiescence to those reasons, and the negative inference that flow therefrom. • However, it is the courts that must decide on effect of failure to respond to RFA.

6. Case law not wholly consistent • Dunhall Pharmaceuticals, Inc. v. Discus Dental, Inc., 243 F.3d 564 (2000):held that while an RFA helps to give context to a claim, it should not be treated as the final word on its interpretation. “while such information facilitates evaluation of the scope of the claim, it is not dispositive of what the specific terms of the claims mean. The prosecution history is not limited merely to the Examiner’s remarks; it includes the entirety of the interchange between the Examiner and the applicant in the course of prosecuting the application to allowance.” • By contrast, in Torpharm, Inc. v. Ranbaxy Pharmaceuticals, Inc., 336 F.3d 1322 2003, the Court ruled that comments in response to an RFA were relevant in an effort to dispute a questionable interpretation by the examiner: “Whether the patentee chooses to dispute the examiner’s view of matters is relevant to claim interpretation, for there a court may need to ascertain exactly what subject matter was actually examined and allowed by the PTO. Patent examination would serve little purpose unless the scope of the exclusive patent right ascertaining the scope of issued patent, the public is entitled to equate an inventor’s acquiescence to the examiner’s narrow view of patentable subject matter with abandonment of the rest. Such acquiescence may be found where the patentee narrows his or her claims by amendment…or lets stand an examiner’s restrictive interpretation of a claim.”

7. Still, in coming to this conclusion, the Court noted that a patentee would not be limited to the types of arguments that could be made during a litigation in defense of the patent. Id. • District Case - Apex Inc. v. Maritan Computer, Inc., 187 F. Supp ed 141, S.D.N.Y. (2002): held unequivocally that an RFA is binding. “The Examiner’s reasons for allowance are absolutely binding on the patentee, absent an objection by the patentee thereto.” Note: Case overturned for misinterpretation of the RFA, not the binding nature of RFA. • Recent CAFC decision - ACCO Brands, Inc. v. MICRO Security Devices, Inc.,( 346 F.3d 1075 (2003): less rigid on binding nature of RFA. “Although there is no obligation to respond to an examiner’s statement of Reasons for Allowance, and the statement of an examiner will not necessarily limit a claim…. In this case the examiner simply repeated the arguments that the patentee had presented.” Note: The Court then read the limitations of the RFA into the same term used in other claims not included in the RFA.

8. MPEP Section 1302.14 - Guidelines to Examiner • RFA necessary only after considering “record as a whole” and only if after thatreview still not clear why allowable. • Very subjective and great discretion to examiners, e.g. distinctions over prior art subtle clarify understanding of specific limitations.

9. Problems found in RFA’s • Addresses only some independent claims • Doesn’t address dependent claims • May cover one limitation in one claim and such limitation not in other claims • Comments on product limitations and there are also method claims • May only copy language from claim itself • Is incomprehensible • Not consistent with the prosecution history as a whole.

10. Possible Actions • Study file history and submit comprehensive response on all points of patentability on every claim. Risk: Costly and time consuming May not take into consideration all future possibilities and may now be every further estopped from broadening claim interpretation. • File statement indicating examiner improperly interpreted claims in view of file history, and do not acquiesce in examiner’s statement: Problem: Still requires full study of file history Also, you may actually agree with examiner, to some extent. • Indicate that there is no reason for the RFA since record is clear, and do not acquiescein examiner’s statement. Problem: Still requires full study of file history Also, you may actually agree with examiner, to some extent.

11. Recommendation: • In most cases - boilerplate statement: e.g. Applicant hereby acknowledges the Examiner’s Reasons for Allowance. Applicant respectfully notes that there may be additional reasons for allowance that have not been specifically cited, and which may apply to various of the allowed claims, in addition to or instead of the cited Reasons. Applicant respectfully suggests that notwithstanding the Examiner’s Reasons for Allowance, it is believed that each of the allowed claims is patentable in its own right and/or for other reasons raised during the prosecution and/or explained in the specification of this application. To the extent that any statements regarding patentability of any claims allowed by the Examiner made by the Applicant or the Examiner in any document filed in this application are inconsistent with or not included in the Examiner’s Reasons for Allowance, they are incorporated by reference herein. • In cases pre-litigation file a thorough response • Be sure to respond in next response, if RFA comes in regular Office Action.

12. For further information contact: Samson HelfgottKMZ RosenmanNew York, N.Y. ph. (212) 940-8683fax (212) 940-8987e-mail - samson.helfgott@kmzr.com