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Pitfalls for Practitioners in Patent Prosecution and Dealing with USPTO Advanced Patent Law- Patent Law Institute January 10, 2008Virginia Rob Clarke, Director, Office of Patent Legal Administration (OPLA)
Topics Covered • General Communication Suggestions • Common Mistakes that Examiners & Supervisors look for • Implications of KSR
Communications with the Patent Office 1. Interview request with Work@home examiners: • 1,000 examiners work at home 4/5 day per week with the number increasing rapidly. Expect 1,500 by next year. • Currently examiners required to be in Office 1-day per bi-week. • Examiners have a general preference for telephone interviews (since in-person interviews are restricted to in Office.) • Schedule in-person interviews early, so that a mutually convenient time is found
Communications with the Patent Office • To address procedural or substantive errors in an Action by the examiner: • Ask the examiner for reconsideration of his position. • If unsuccessful, call the SPE for Supervisory review of the examiner’s position • Petition objections • Traverse improper or inappropriate restrictions • Petition: • Arbitrary and Unnecessary 105 requirements • Failure to follow clear guidance of MPEP • Premature Final Rejections
Communications with thePatent Office 3. Avoid the need for 105 Requests: • Be clear in describing the context of invention 4. Do not wait until issue to determine whether all papers submitted have been treated.
Common Mistakes that Examiners & Supervisors Look For 1. Arguing patentability based on features that are not claimed 2. Arguing references separately 3. Using a foreign-filing with limited review • Poorly translated Specification • Using PCT or foreign claims that don’t conform to USPTO requirements 4. Pro-forma responses • e.g., “Examiner has not established a prima facie case” • Boiler plate case law recitation without application to the facts at hand
Common Mistakes that Examiners & Supervisors Look For (Cont.) 5. Inadequate Challenge to Official Notice • “Show me” response is not enough • Applicant must traverse the finding and explain the basis for the disagreement. see Ex parte Sato, 2007 WL 2272396, *9 (BPAI 2007) APPEAL 2007-1275, Decided: August 8, 2007 “Appellant argues that claims 10, 12, 14, and 16 are separately patentable because neither Anderson nor Shioji teach the respective limitations of these claims. (Br. 11, 13-14.) However, the Examiner found that Shioji teaches the limitations of claims 10, 14, and 16, and took Official Notice that the limitation of claim 12 was well known in the art. (Answer 5-6, 8.) Appellant has provided no explanation of why the Examiner's findings are in error, nor has Appellant pointed to any evidence to indicate that the Examiner's findings were incorrect. Therefore, we are not persuaded that the Examiner erred in rejecting claims 10, 12, 14, and 16.”
Consequences of the KSR decision and 103 Guidelines • Arguing “no motivation to combine” is not compelling. • Examiners may respond with a rationale not based on “motivation” • If the rejection relies on motivation, then the argument is appropriate, but may not be adequate. Read the references to determine (and anticipate) how the references may render the claim obvious and try to preclude that response by argument or amendment. (Example Below) • Examiners may make the rejection final provided that the rejection has not been altered to the extent that applicant has not been afforded a fair opportunity to respond. • See MPEP 706.07: “The examiner should never lose sight of the fact that in every case the applicant is entitled to a full and fair hearing, and that a clear issue between applicant and examiner should be developed, if possible, before appeal.”
Consequences of the KSR decision and 103 Guidelines 2. Impact on Examination: • Reinvigoration of MPEP 2144 • KSR encourages examiners to apply their scientific and engineering knowledge • KSR reduces the divergence between “technically obvious” & “legally obvious”
Consequences of the KSRdecision and 103 Guidelines 3. Prior art is not limited to printed references “obvious variants of prior art references are themselves part of the public domain” In re Translogic Technology, 2007 WL 2965979, *7 (Fed. Cir. 2007)
Consequences of the KSR decision and 103 Guidelines “Although Pasadyn does not explicitly teach computing a process rate trend as part of the data analysis, this limitation would have required no more than ordinary skill and common sense, and was within the level of ordinary skill in the art as demonstrated by the teachings of Pasadyn and Liu. Pasadyn teaches data comparison and analysis, and Liu teaches computing a process rate. Pasadyn also teaches that a series of wafers are processed in sequence. (FF 2.) As the wafers were processed in sequence, it would have been common sense to also compute a process rate trend for the wafers by tracking the process rate for each individual wafer in the sequence.” • EX PARTE DAVID S. L. MUI, WEI LIU, AND HIROKI SASANO, 2007 WL 2211336, *8 (BPAI 2007) • APPEAL 2007-1269, Application 10/636,468, Decided: July 31, 2007
Consequences of the KSRdecision and 103 Guidelines 4. Obvious variations within the ordinary skill do not make something patentable “In addition, the recited claim limitations of (1) recording a total processing time and (2) dividing the result [i.e., the difference between the pre-process and post-process measurement data] by the total processing time to calculate a process rate would have required no more than ordinary skill and common sense, and each limitation was within the level of ordinary skill in the art as demonstrated by the teachings of Liu. Therefore, the obviousness of claim 1 may be shown by Pasadyn alone. The process rate calculation teachings of Liu are merely cumulative to the express as well as the implied teachings already found in Pasadyn.” Ex parte Mui
Consequences of the KSR decision and 103 Guidelines 5. Responses to rejections: • Examiners are more sensitized to the requirements of a response under 37 CFR 1.111. • Mere argument is not likely to overcome a prima facie case, unless it undercuts the logic (reasoning) applied by the Examiner in the rejection. • Rebuttal evidence is likely to become more important in prosecution. • Examiners are being given refresher training in evaluating evidentiary submissions.
Consequences of the KSR decision and 103 Guidelines • Mere assertion that the examiner has not made a specific finding as to the level of ordinary skill in the art is not a sufficient traverse, and is not grounds to request a new action. Practitioners should note that while Graham and KSR require that a determination of obviousness be made in view of the level of skill of a person of ordinary skill in the art, the Guidelines do not mandate that examiners make an explicit statement as to the ordinary skill level in every case. Note Ex parte Jud, 2006 WL 4080053 (BPAI 2006) (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59 USPQ2d 1795, 1797 (Fed. Cir. 2001).
Consequences of the KSR decision and 103 Guidelines “While it is always preferable for the factfinder below to specify the level of skill it has found to apply to the invention at issue, the absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’ Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59 USPQ2d 1795, 1797 (Fed. Cir. 2001). Appellants have not explained, and it is not apparent, why the applied prior art does not reflect an appropriate level of skill in the art.” Ex parte Jud
Consequences of the KSR decision and 103 Guidelines 6. Do not ignore BPAI post-KSR Decisions • Examiners look to the Board’s actions as a guide as to what types of rejections are likely to be affirmed. • Examiners (generally) do not like to be reversed by the Board. Therefore, they are sensitive to the winds of change that they discern from BPAI decisions. • Board of Appeal site has all Final decisions in a searchable format. • Separate Sections for decisions designated as: (a) Precedential and (b) Informative.
Consequences of the KSR decision and 103 Guidelines • Case of Note: • Is Deuel controlling law? (In re Deuel, 51 F.3d 1552, 34 USPQ2d 1210 (Fed. Cir. 1995)). Ex parte Kubin (2007-0819, SN 09/667,859, Decided 5/31/2007) Precedential BPAI; compare with Federal Circuit’s Takeda Chemical v. Alphapharm (06-1329, June 28, 2007). • There are limits: e.g., Ex parte Rinkevich (2007-1317, SN 09/731,623, Decided May 29, 2007). Where the examiner has not articulated a rationale for the obviousness of the claim or the rationale is not reasonable the case for obviousness has not been established. “In the instant case, we conclude that a person of ordinary skill in the art having common sense at the time of the invention would not have reasonably looked to Wu to solve a problem already solved by Savill. Therefore, we agree with Appellants that the Examiner has impermissibly used the instant claims as a guide or roadmap in formulating the rejection.” Ex parte Rinkevich, 2007 WL 1552288, *4 (BPAI 2007)
Consequences of the KSR decision and 103 Guidelines 7. Do not ignore Federal Circuit post-KSR Decisions • Examiners are aware that ultimately, Federal Circuit decisions will shape the extent of the KSR decision on the practical day-to-day determination of obviousness. • Cases of Note: 1. Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., slip op., 485 F.3d 1157 (Fed. Cir. May 10, 2007) 2. Takeda Chemical Indus. v. Alphapharm Pty., Ltd., slip op., 492 F.3d 1350, 2007 WL 1839698 (Fed. Cir. June 28, 2007) 3. In re Translogic Technology, Inc., slip copy, No. 06-1192, 2007 WL 2965979 (Fed. Cir. Oct. 12, 2007)
Potential Pitfalls to Avoid based on KSR 1. In re Translogic – Federal Circuit (2006-1192, October 12, 2007) a. No need to motivate a particular choice . “ .. a person of ordinary skill would have a thorough understanding of electrical switching systems and knowledge of actual implementations..” b. The references are relevant prior art (see page 18 et seq. to explain this)
Avoiding falling into “KSR” based obviousness rejections 2. Ex parte Dart (2007-1325, SN 10/065,722, Decided 8/22/2007) “Informative” pgs 22-23 What constitutes “analogous prior art” p 24 makes new 103, but labels it an affirmance p 30 “common sense” 3. Ex parte Srinivasan (2007-1512, SN 10/310,744, Decided 5/1/2007) “Informative”. No evidence to support the traversal (Trap: Failing to provide evidence in rebuttal.) 4.Dann v. Johnston 425 U.S. 219 (1976) a general principle (a sorting technique) was applied to reject a claim without finding the actual elements in the prior art.
Thank You Rob Clarke email@example.com (571) 272-7735