Representative Rejections (two minor suggestions) Matthew A. Smith Foley & Lardner LLP

1. Representative Rejections (two minor suggestions) Matthew A. Smith Foley & Lardner LLP at the United States Patent & Trademark Office June 1, 2011 msmith@foley.com

2. 2 msmith@foley.com Representative rejections are a good idea.

3. 3 msmith@foley.com Two suggestions:

4. Determination of representativeness 4 msmith@foley.com “...the examiner may select one or more ‘‘representative’’ rejections from the group of adopted rejections. The examiner’s determination that a rejection is‘‘representative’’ meansthat the examiner believes that all rejections withinthe group of adopted rejections will clearly fall if the representative rejection is not sustained.”

5. EXAMPLE Claim 1: A device, comprising: Element 1 Element 2 Element 3 Element 4 5 msmith@foley.com

6. EXAMPLE Claim 1: A device, comprising: Element 1 Element 2 Element 3 Element 4 Proposed Rejection I: Reference A, 102(b): Clearly taught Clearly taught Arguably taught Depends on claim interpretation 6 msmith@foley.com

7. EXAMPLE Claim 1: A device, comprising: Element 1 Element 2 Element 3 Element 4 Proposed Rejection 2: B + C Clearly taught Clearly taught Claim interp. inherent + Plausible motivation to combine B and C. 7 msmith@foley.com

8. Determination of representativeness 8 msmith@foley.com In practice, strengths / weaknesses of rejections will rarely line up such that “the group of adopted rejections will clearly fall if the representative rejection is not sustained” This means that representative rejections could be either rarely used, or often inappropriately used.

9. Determination of representativeness 9 msmith@foley.com • Suggestion: do not define “representative” to imply that a decision on one rejection determines the outcome of the others. • “Representative” could be a procedural label only. In other words, a rejection could called “representative”, if it is the one the Examiner will evaluate in detail. Possibly change the word “representative”?

10. Determination of representativeness • Patent Owners in response will point out weaknesses in other rejections. • In inter partes reexam, Requesters will comment on strengths in other rejections. • If rejection maintained: no problem. If withdrawn, Examiner can evaluate parties’ arguments only. 10 msmith@foley.com

11. 11 msmith@foley.com Second suggestion

12. SNQs vs. Representative Rejections • Under the FR Notice “SNQs that are not persuasively explained to be substantially different from each other will be deemed to constitute a single SNQ from which the examiner will select the best proposed rejections based on the best cited references, as discussed below in Part A.4.” 12 msmith@foley.com

13. SNQs vs. Representative Rejections • This rule is unnecessary, because representative rejections can already be selected. • There is currently disagreement (even within the PTO) about what makes SNQs “different”. It is a difficult question. For example, are the examples above on slides 6 and 7 “substantially different”? 13 msmith@foley.com

14. SNQs vs. Representative Rejections • Selection of particular SNQs (or treatment as the same SNQ?) could affect jurisdiction, not just workload. • See May 3 BPAI decision in 95/001039: Inter partes reexamination 95/001039 (2011-05-03 BPAI Decision, p. 12). 14 msmith@foley.com

15. Thank you. 15 msmith@foley.com