PATENT EXAMINATIONPATENT EXAMINATION

How a Patent Examiner Handles How a Patent Examiner Handles Your CaseYour Case

Doc. # 431,847Doc. # 431,847

PATENTABILITY ISSUESPATENTABILITY ISSUES

Minor informalitiesMinor informalities ObjectionsObjections RejectionsRejections

MINOR INFORMALITIESMINOR INFORMALITIES

Content issues (i.e. headings, abstract, Content issues (i.e. headings, abstract, format)format)

SpellingSpelling Figures – item numbers described, but not Figures – item numbers described, but not

shown in the figures; item numbers shown shown in the figures; item numbers shown in the figures, but not described in the in the figures, but not described in the specificationspecification

OBJECTIONSOBJECTIONS

Claim objections – informalities in the Claim objections – informalities in the claimsclaims

Description objections – subject matter in Description objections – subject matter in the original claims are not supported by the original claims are not supported by the descriptionthe description

REJECTIONSREJECTIONS

112-1112-1stst paragraph paragraph 112-2112-2ndnd paragraph paragraph 101101 102102 103103 Double patentingDouble patenting

112-1112-1stst PARAGRAPH PARAGRAPH

EnablementEnablement Lack of written descriptionLack of written description New matter – this it the main one. If you New matter – this it the main one. If you

amend the claims, don’t just tell the amend the claims, don’t just tell the examiner that it is supported by the examiner that it is supported by the specification as originally filed. Identify the specification as originally filed. Identify the support specifically (i.e. page and line support specifically (i.e. page and line number or Figure)number or Figure)

112-2112-2ndnd PARAGRAPH PARAGRAPH

Lack of antecedent basis – do not refer to Lack of antecedent basis – do not refer to a claim element as “said element” if the a claim element as “said element” if the element has not been previously element has not been previously introducedintroduced

Unclear claim – examiner doesn’t know Unclear claim – examiner doesn’t know what you are claimingwhat you are claiming

35 U.S.C. § 10235 U.S.C. § 102

102(a)102(a) 102(b)102(b) 102(e)102(e)

102(a)102(a)

““the invention was known or used by the invention was known or used by others in this country, or patented or others in this country, or patented or described in a printed publication in this or described in a printed publication in this or a foreign country, before the invention a foreign country, before the invention thereof by the applicant for patent”thereof by the applicant for patent”

Generally, used for any publication Generally, used for any publication (except US Patents) dated < 1 year (except US Patents) dated < 1 year before your effective filing datebefore your effective filing date

102(b)102(b)

““the invention was patented or described the invention was patented or described in a printed publication in this or a foreign in a printed publication in this or a foreign country or in public use or on sale in this country or in public use or on sale in this country, more than one year prior to the country, more than one year prior to the date of the application for patent in the date of the application for patent in the United States”United States”

ANYTHING published > 1 year prior to ANYTHING published > 1 year prior to your effective filing dateyour effective filing date

102(e)102(e)

““the invention was described in – the invention was described in – (1) an application for patent, published under (1) an application for patent, published under

section 122(b), by another filed in the United section 122(b), by another filed in the United States before the invention by the application States before the invention by the application for patent orfor patent or

Used for US patent publications having an Used for US patent publications having an earlier effective US filing dateearlier effective US filing date

102(e) (cont)102(e) (cont)

(2) a patent granted on an application for patent by (2) a patent granted on an application for patent by another filed in the United States before the invention by another filed in the United States before the invention by the applicant for patent, except that an international the applicant for patent, except that an international application filed under the treaty defined in section application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States subsection of an application filed in the United States only if the international application designated the United only if the international application designated the United States and was published under Article 21(2) of such States and was published under Article 21(2) of such treaty in the English language”treaty in the English language”

Used for issued US patents and PCT publications having Used for issued US patents and PCT publications having earlier effective US filing datesearlier effective US filing dates

EFFECTIVE U.S. FILING DATEEFFECTIVE U.S. FILING DATE

The effective U.S. filing date (EFD) of a The effective U.S. filing date (EFD) of a reference is the date of the earliest U.S. reference is the date of the earliest U.S. Application or PCT application designating Application or PCT application designating the U.S. that supports the disclosed the U.S. that supports the disclosed subject matter used against your claimssubject matter used against your claims For continuations or divisions, the EFD is the For continuations or divisions, the EFD is the

same as the parent case EFDsame as the parent case EFD For CIP, EFD for claims supported in parent is For CIP, EFD for claims supported in parent is

the filing date of the parentthe filing date of the parent

EFFETIVE FILING DATE (cont)EFFETIVE FILING DATE (cont)

For an application claiming foreign priority, the For an application claiming foreign priority, the EFD is the date the application was filed in the EFD is the date the application was filed in the US (but the foreign filing date can be used to US (but the foreign filing date can be used to overcome certain rejections)overcome certain rejections)

For an application claiming priority to a For an application claiming priority to a provisional application, the EFD is the filing date provisional application, the EFD is the filing date of the provisional for all claims fully supported in of the provisional for all claims fully supported in the provisional applicationthe provisional application

35 U.S.C. § 10335 U.S.C. § 103

Obviousness rejectionObviousness rejection Very hard to quantify and explain, but Very hard to quantify and explain, but

basically neither Reference A nor Reference basically neither Reference A nor Reference B individually teaches everything that you B individually teaches everything that you claim, but when Reference A and Reference claim, but when Reference A and Reference B are combined, your invention is suggested. B are combined, your invention is suggested. There must be some “motivation” to combine There must be some “motivation” to combine the referencesthe references

DOUBLE PATENTINGDOUBLE PATENTING

101 – Duplicate claims in granted patent or 101 – Duplicate claims in granted patent or pending application (at least one common pending application (at least one common inventor or assignee); TD will NOT overcome the inventor or assignee); TD will NOT overcome the rejection; you must either amend, argue, cancel, rejection; you must either amend, argue, cancel, or abandonor abandon

In re Schneller – it is in MPEP, but you’ll never In re Schneller – it is in MPEP, but you’ll never see it. It is essentially confined to its facts; see it. It is essentially confined to its facts; rejection must be signed by TC directorrejection must be signed by TC director

Obviousness type – generally just file TD unless Obviousness type – generally just file TD unless the claims were restrictedthe claims were restricted

WHAT IS THE EXAMINER WHAT IS THE EXAMINER THINKING?!?!?!?!THINKING?!?!?!?!

Is the examiner told to reject?Is the examiner told to reject? Is the examiner only allowed to issue a Is the examiner only allowed to issue a

certain number of patents?certain number of patents? Why doesn’t the examiner explain the Why doesn’t the examiner explain the

rejection better?rejection better? Doesn’t the examiner realize that the Doesn’t the examiner realize that the

reference is irrelevant?reference is irrelevant?

TYPES OF REJECTIONSTYPES OF REJECTIONS

Shotgun rejection – reject all claims in one Shotgun rejection – reject all claims in one very short, not well explained rejection; let very short, not well explained rejection; let the attorney/agent argue/amendthe attorney/agent argue/amend

Claim by claim – usually very detailed, Claim by claim – usually very detailed, directs you to column and line number directs you to column and line number within the prior art, examiner’s position within the prior art, examiner’s position usually pretty clear (even if incorrect)usually pretty clear (even if incorrect)

C.Y.A. – most dangerous rejectionC.Y.A. – most dangerous rejection

THEORY OF REJECTIONSTHEORY OF REJECTIONS

““Throw it out there and see what they say”Throw it out there and see what they say” ““This is too broad, it MUST be out there”This is too broad, it MUST be out there” ““You’ll never get a patent”You’ll never get a patent” Good rejectionGood rejection

HOW TO ARGUE A 102 HOW TO ARGUE A 102 REJECTIONREJECTION

Find the missing claim elementFind the missing claim element You claim a widget comprising A, B, & CYou claim a widget comprising A, B, & C Your “invention” is A, B, C, D, EYour “invention” is A, B, C, D, E Reference 1 teaches A, B, C, G, HReference 1 teaches A, B, C, G, H That is a good rejectionThat is a good rejection

Don’t argue that you have D and E because you Don’t argue that you have D and E because you haven’t claimed it (very common mistake)haven’t claimed it (very common mistake)

Don’t argue that Reference 1 requires G & H Don’t argue that Reference 1 requires G & H because you have used “comprising” languagebecause you have used “comprising” language

HOW TO ARGUE A 102 HOW TO ARGUE A 102 REJECTION (cont)REJECTION (cont)

You claim a widget comprising A, B, CYou claim a widget comprising A, B, C Reference 2 teaches A, B, D, E, FReference 2 teaches A, B, D, E, F Your “invention” is A, B, C, D, E, FYour “invention” is A, B, C, D, E, F Bad rejectionBad rejection

Argue that Reference 2 does not teach CArgue that Reference 2 does not teach C

HOW TO ARGUE A 103 HOW TO ARGUE A 103 REJECTIONREJECTION

Do NOT argue that the reference is for a Do NOT argue that the reference is for a different purposedifferent purpose

Do NOT argue the number of references, it Do NOT argue the number of references, it doesn’t matter if motivation is presentdoesn’t matter if motivation is present

Find missing elements in the references (i.e. you Find missing elements in the references (i.e. you claim them, references don’t teach them)claim them, references don’t teach them)

Attack the motivationAttack the motivation Do NOT argue that similar claims were allowed Do NOT argue that similar claims were allowed

in a different case pending before a different in a different case pending before a different examinerexaminer

INTENDED USEINTENDED USE

Do not argue intended useDo not argue intended use The intended use does not matter, it is not The intended use does not matter, it is not

a limitationa limitation

EXAMPLEEXAMPLE

Claim 1. A composition for coating a potato chip Claim 1. A composition for coating a potato chip comprising polyvinylpyrrolidone.comprising polyvinylpyrrolidone.

Claim 2. A potato chip coating comprising Claim 2. A potato chip coating comprising polyvinylpyrrolidone.polyvinylpyrrolidone.

Reference A teaches a carpet cleaning Reference A teaches a carpet cleaning composition comprising polyvinylpyrrolidone.composition comprising polyvinylpyrrolidone.

Can Reference A be used to reject either claim?Can Reference A be used to reject either claim?

ANSWERANSWER

Reference A can reject claim 1, but not Reference A can reject claim 1, but not claim 2.claim 2.

For claim 1, “for coating a potato chip” is For claim 1, “for coating a potato chip” is the intended use and does not provide the intended use and does not provide patentable weight.patentable weight.

For claim 2, a “potato chip coating” is not For claim 2, a “potato chip coating” is not the intended use, it is the article claimedthe intended use, it is the article claimed

WHAT AN EXAMINER DOESWHAT AN EXAMINER DOES

Is the case a DOG?Is the case a DOG? 11stst thing – look at claims thing – look at claims

number of claims and length of claimsnumber of claims and length of claims If there are too many claims or long complicated If there are too many claims or long complicated

claims, try to pass the case off on someone else or claims, try to pass the case off on someone else or restrictrestrict

22ndnd thing – look at the specification and figures thing – look at the specification and figures Girth – how long is the specification, the shorter the Girth – how long is the specification, the shorter the

betterbetter

TIMINGTIMING

Patent examiners have to process a Patent examiners have to process a certain number of applications per quartercertain number of applications per quarter

End of the fiscal year (i.e. September) or End of the fiscal year (i.e. September) or end of the quarter, an examiner might be end of the quarter, an examiner might be easier to convince to allow the caseeasier to convince to allow the case

Beginning of the fiscal year (i.e. October) Beginning of the fiscal year (i.e. October) or beginning of the quarter, an examiner is or beginning of the quarter, an examiner is more likely to rejectmore likely to reject

WHAT AN EXAMINER IS TOLD WHAT AN EXAMINER IS TOLD BEHIND THE SCENESBEHIND THE SCENES

Don’t allow too much, check historic ratioDon’t allow too much, check historic ratio It’s OBVIOUSIt’s OBVIOUS Don’t be the “1-click” examiner or “paper Don’t be the “1-click” examiner or “paper

football” examinerfootball” examiner

WHAT HAPPENS BEHIND THE WHAT HAPPENS BEHIND THE SCENESSCENES

Quality Review – not every caseQuality Review – not every case 22ndnd pair of eyes – paranoia, primary can’t pair of eyes – paranoia, primary can’t

make decision, SPE determinedmake decision, SPE determined How much time the examiner hasHow much time the examiner has Law doesn’t matter, only factsLaw doesn’t matter, only facts Special cases and order of examinationSpecial cases and order of examination The number of cases an examiner The number of cases an examiner

handleshandles

SUGGESTIONSSUGGESTIONS Short application, 25 pages or less ideallyShort application, 25 pages or less ideally Key to the invention – make sure it is in the claims, don’t try to claim Key to the invention – make sure it is in the claims, don’t try to claim

junkjunk If you are basing you invention upon selecting a number or range, If you are basing you invention upon selecting a number or range,

have unexpected results or else it will be obvioushave unexpected results or else it will be obvious Not too many claims – if you go over 20, ask yourself whether or not Not too many claims – if you go over 20, ask yourself whether or not

you really need ityou really need it 3 independent claims – broad as you think the prior art will let you 3 independent claims – broad as you think the prior art will let you

go; as narrow as you could commercially go; 1 “tweener” claimgo; as narrow as you could commercially go; 1 “tweener” claim IDS – file what you need to file, but don’t file duplicates; most IDS – file what you need to file, but don’t file duplicates; most

examiners do not like large IDSexaminers do not like large IDS

SUGGESTIONSSUGGESTIONS Be concise in your argumentsBe concise in your arguments Don’t cite case law – the law doesn’t matter at this stage, just the Don’t cite case law – the law doesn’t matter at this stage, just the

factsfacts Call or meet with the examiner – most final rejections are because Call or meet with the examiner – most final rejections are because

the attorney does not understand the examiner’s position and vice the attorney does not understand the examiner’s position and vice versaversa

Avoid the RCE – put forth your best claims in your ROAAvoid the RCE – put forth your best claims in your ROA Know the difference between a restriction and an election of species Know the difference between a restriction and an election of species

– DO NOT CANCEL UNELECTED SPECIES!!!!!!– DO NOT CANCEL UNELECTED SPECIES!!!!!! If you amend the claims, direct the examiner to the specific location If you amend the claims, direct the examiner to the specific location

within the specification where support can be foundwithin the specification where support can be found

SUGGESTIONSSUGGESTIONS

Argue the claims, not the inventionArgue the claims, not the invention Realize that you are not gaining anything Realize that you are not gaining anything

by stating that you “disagree with the by stating that you “disagree with the rejection, but in order to advance rejection, but in order to advance prosecution, you are amending the claims”prosecution, you are amending the claims”

FIRM REPUTATIONFIRM REPUTATION

Remember that you are representing the Remember that you are representing the client and this firmclient and this firm

Your actions reflect on all of usYour actions reflect on all of us Patterson & Sheridan, LLP has a good Patterson & Sheridan, LLP has a good

reputation among the patent examinersreputation among the patent examiners