Inspiring Arguments to Overcome Design Choice Rejections in the Mechanical Arts

mechanica gear assembly

“Effective ways to overcome obviousness rejections in the domain of ‘Thermal & Combustion Technology, Motive & Fluid Power Systems’ – AU 3740”

mechanica gear assembly

Mechanical and electromechanical inventions often receive obviousness rejections due to their very nature. These inventions commonly use well-known components. The inventive spark usually comes from combining them in new ways or using them to perform novel functions.

Design choice” is one rationale available to examiners when rejecting an application under § 103. Examiners might be tempted to use the design choice rationale because it seems broadly applicable. But when examiners rely on design choice, they pen themselves into a specific legal test. Understanding these requirements can help applicants develop effective strategies for getting past design choice rejections.

Keep reading to discover three examples of how this rejection has been successfully overcome:

Find the “Why” of the Invention

Office action responses to obviousness rejections typically rely on facts. One of the most important facts for responding to an obviousness rejection is the reason for the invention.

The design choice rationale only applies where the claimed limitation performs the same function and solves the same problem as the prior art. In contrast, if the claimed device performs a purpose not served by the prior art device, the examiner cannot rely on the design choice rationale as a basis for rejection.

This strategy was used in prosecuting U.S. Patent Application Serial No. 15/275,446 for a fuel flow detection method for a spark-ignition engine.

The closest prior art found by the examiner disclosed a fuel flow meter for a diesel engine. Examiner Solis issued an obviousness rejection, stating that it was a matter of design choice to apply the teachings of the diesel fuel flow meter to a spark-ignition fuel flow meter.

Attorney Michael Fluhler argued that the “design choice” rationale was not applicable in this case:

[T]he Office Action’s reliance on so-called design choice is entirely inappropriate as the pending application describes advantages associated therewith, e.g., “more accurate air-fuel ratio information” and “an accurate fuel flow can be obtained without causing an error, even when there is a change in fuel composition” (paragraph 17). (See Ex Parte Rohrer, Appeal No. 2009-001292, February 5, 2010, stating that “[i]f the recitation provides some advantage or serves some purpose, then using ‘design choice’ as grounds of rejection is inappropriate” (citing Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985).

Importantly, the applicant did not need to argue that the method for achieving these advantages was patentable. Rather, the applicant overcame the “design choice” rationale simply by pointing out that the invention achieved these advantages over the prior art.

Reasoning is a Must-Have

In every obviousness rejection, KSR v. Teleflex requires the examiner to provide some rationale to connect the prior art to the claimed invention. This may take the form of a teaching, suggestion, or motivation found in the prior art. KSR also opened the door to other rationales based on scientific, engineering, or business knowledge.

KSR explicitly ruled out speculation by the examiner. Specifically, examiners cannot rely on “conclusory statements” to support an obviousness rejection. Instead, the examiner must provide “articulated reasoning with some rational underpinning” to support the rejection.

Cantor Colburn attorney, David Fox, successfully argued this point in prosecuting an application claiming a screw compressor having a oil separator and water chilling unit. The application had been rejected based on Examiner Trieu’s contention that because the two kinds of oil separators described in the invention were known, combining the oil separators was merely a matter of design choice.

In response, the applicant pointed out that the examiner failed to provide any reasoning to support the rejection.

In the present case, the Office Action fails to provide a convincing line of reasoning as to why one of ordinary skill in the art would have found the claimed feature to have been obvious. The Office Action attempts to shift the burden to Applicant to indicate how the two different oil separators are used for a particular purpose or solve a problem. Applicant notes that this specification refers to several advantages of using a cyclone separator and a filter-type oil separator. The specification details at least a size advantage and separation advantages, as described in the specification. As such, claim 1 is not a mere “design choice” but rather is non-obvious in view of Yamazaki.

Significantly, this argument does not depend on the specific facts of the case. Rather, it can be applied wherever an examiner rejects a claim without providing the reasoning that connects the prior art to the claimed invention. Without this reasoning, applicants cannot respond and the BPAI and the courts cannot review the examiner’s work. The strategy proved effective, and the application went on to issue as U.S. Patent No. 10,288,068,

Similarly, in the application for the fuel flow detection method discussed above, the examiner rejected the claims based on the examiner’s belief that a prior art fuel flow sensing method used in a diesel engine was “obviously” adaptable to a spark-ignition engine. In response, the applicant pointed out that the examiner’s opinion that the method was adaptable to a different kind of engine did not provide “evidentiary support and sound scientific and technical reasoning” to support the rejection.

Here as well, by insisting on explicit reasoning beyond the examiner’s intuitive sense of the invention and prior art, the applicant was able to prompt the examiner to withdraw the rejection.

Put the Ball in the Examiner’s Court

The previous two cases suggest that an effective strategy for dealing with an obviousness rejection based on the “design choice” rationale is to identify any shortcomings in the examiner’s process. In cases, where design choice has been superficially applied, the examiner may well find that they do not have enough support to persist in the rejection.

This strategy was successfully employed by attorney, Jessica Flores,  in prosecuting an application related to a gearbox for an internal combustion engine that varied the compression ratio of the engine in response to an actuator.

This application was rejected based on a gearbox with some, but not all, of the claimed features. Examiner Grant then shifted the burden to the applicant, stating that the applicant failed to state whether the invention “solves any stated problem or is for any particular purpose.” The examiner concluded that “it appears that the invention would perform equally well with optimized values of the aforementioned five design features.”

The applicant responded by outlining multiple places in the specification where the claimed features provided an advantage or function not found in the prior art. The applicant put the ball back in the examiner’s court by pointing out that the examiner had failed to support the “design choice” rationale, and additionally relied “improperly on hindsight, using Applicant’s own specification to arrive at the claimed invention. See M.P.E.P. 2142.”  The applicant ultimately challenged the examiner to make a prima facie case of obviousness without relying on the rationale. Instead of looking for support, the examiner withdrew the rejection and the application went on to issue as U.S. Patent No. 10,400,667.

Insist on Substance

If there is one takeaway from these cases, it is to make sure your examiner has fulfilled the legal test to apply the design choice rationale. If the examiner has failed to show that the invention provides no new benefits or functions, or to provide a convincing line of reasoning for the combination of prior art features, you can respond by pointing out the deficiency.

This shifts the burden back to the examiner to present a prima facie case of obviousness. Without the design choice rationale, the examiner might withdraw the rejection and allow the case to issue.


These cases were found using the Arguminer software, a powerful engine that puts the Patent Office’s database at your fingertips, and allows you to search for granular details like rejection type and outcome.

To learn more about the Arguminer software, contact IP Toolworks to schedule a demo.

Inspiring Arguments to Overcome Design Choice Rejections on Chemical Apparatus Inventions

“AU 1770 - Chemical Apparatus, Separation and Purification, Liquid and Gas Contact Apparatus”

Group Art Unit 1770 handles applications for chemical apparatus. As such, this unit typically deals with claims regarding mechanical devices whose functions and outputs are chemical.

Examiners use a fairly simple logic process when rejecting mechanical and chemical cases for obviousness: if every mechanical part (or chemical component) of a device is already known, combining them is simply a matter of design choice.

Making a case of obviousness prima facie, however, requires more. Here are some inspiring arguments for overcoming design choice rejections from the chemical apparatus unit:

Be on the Lookout for Impermissible Hindsight

“Impermissible hindsight” is a go-to phrase patent lawyers use to rebut obviousness rejections. But what is the proper use of an “impermissible hindsight” argument?

You might argue “impermissible hindsight” in response to a design choice rejection if, for example, the examiner has claimed obviousness based on two prior but hitherto-unrelated art references (A & B). If Reference A shows parts X and Y while Reference B indicates that part Z produces desirable effect Q and your application claims that parts X, Y, and Z together produce desirable effect R (analogous to but distinct from Q), the examiner may reject your application, claiming that assembling parts X, Y, and Z in order to produce  is simply a matter of design choice.

However, in arriving at this conclusion, the examiner has overlooked a key component of obviousness: If your client’s application is the only reference explaining that X, Y, and Z produce R and the examiner’s only rationale comes from your specification the rejection presumes impermissible hindsight.

This argument worked effectively in overcoming an obviousness rejection on an application for a fuel processor producing a mixture of propylene glycol and water. The fuel processor included an alternating stack of evaporator plates and hot gas plates configured so that the unheated side of each hot gas plate always shields the heated side from facing an evaporator surface.

Examiner Young rejected the claim as obvious based on a reference showing a fuel processor with stacked plates. She asserted that the specific configuration of alternating plates was simply a matter of design choice.

Attorney Frank Digiglio, from the law firm Scully Scott Murphy & Presser PC, pointed out that the examiner had found no reference which disclosed or suggested the desirability of the arrangement of plates taught in the claimed invention.

 U.S. Patent No. 10,926,239

Applicant respectfully submits that employing hindsight using Applicant’s disclosure as a blueprint to reconstruct the claimed invention from the teachings of the prior art is impermissible under the law. Grain Processing Corp. v. American Maize-Products Co., 840 F.2d 902, 907 (Fed. Cir. 1988); see also W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1552, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 854 (1984) (“To imbue one of ordinary skill in the art with knowledge of the invention when no prior art reference or references of record convey or suggest that knowledge, is to fall victim to the insidious effect of a hindsight syndrome wherein that which only the inventor taught is used against its teacher”). Thus, Applicant submits that the Examiner has failed to establish two design choices…

Gore is particularly helpful when arguing against hindsight. As the court stated in Gore, “[i]t is difficult but necessary that the decisionmaker forget what he or she has been taught … about the claimed invention and cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.”

In this case, the examiner had found no reference conveying the desirability or equivalent functionality of configuring the plates as claimed. The applicant was able to overcome the rejection by pointing out that the examiner had inappropriately used the applicant’s own teachings against them, and the application went on to issue as  U.S. Patent No. 10,926,239

The takeaway from this case is that, while there may be something fundamentally human about understanding actions of the past through the lens of the present, examiners have a special responsibility to keep this hindsight in check when evaluating an invention’s obviousness. You can help move prosecution in a positive direction by pointing out when “impermissible hindsight” has crept into the examiners’ design choice rejections.

Design Choices Must be Choices Made Among Equals

Another requirement for design choice rejections is that the prior art and the claimed elements must perform equivalent functions and produce equivalent results. In other words, when the examiner asserts “design choice,” the choice between the prior art and the claimed invention must be nothing more than a substitution.

This makes sense. If two assemblies are known to perform the same function and to produce the same results, changing one for the other may be considered an obvious choice. However, many rejections skip this step, broadening obviousness beyond its intended scope.

Attorney Scott Baum, one of 3M’s in-house patent lawyers, used this argument in overcoming an obviousness rejection when he secured U.S. Patent No. 9,962,629. This invention was a degassing module for removing entrained or dissolved gasses from a high-pressure liquid. The module included an outer housing, an inner shell, and a shim between the housing and the shell between two seals.

Examiner Patel found two references that together described a housing, a shell, and a pair of seals as claimed. Although neither reference included incorporating a support shim, the examiner concluded that one of ordinary skill in the art might add a shim between the housing seal and the shell seal as a simple matter of design choice.

In response, the applicant argued that the examiner had failed to meet the standard for a design choice rejection. To begin with, much like our previous example, the examiner had exercised impermissible hindsight in interpreting the prior art’s proximity to the claimed invention: 

The Office asserts that Taylor and Boye are analogous inventions and that it would be obvious at the time of the invention to modify Taylor with the teachings of Boyle to provide at least one support shim between the housing and the shell to provide a sealing arrangement between the housing and the shell. … The Office’s error is Boyle does not disclose a support shim as alleged by the Office. Only by reading and understanding the Applicant’s problem and using impermissible hindsight can the office equate the inner sealing ring of Boye to Applicant’s claimed support shim.

This led to the second oversight by the Office: the prior art did not show a feature that performed an equivalent function or produced an equivalent result.

Applicants have discovered the source of a problem and seek to eliminate movement of the inner housing near the seal by use of a support shim. This prevents the shell potting interface from delaminating under high pressure. Boyle seeks to allow the inner housing to deflect and does not want a support shim to limit deflection so Boye uses an O-ring that slides on the surface of a collar to form the seal. … Thus, one of skill in the art would not substitute the inferior sealing method of Boyle designed for moving surfaces into Taylor whose cartridge sealing surfaces are not designed to move. … [I]n In re Gal, 980 F.2d 717, 719 (Fed Cir 1992), the CAFC has ruled that where the structure cited in the claim (shim) and the function it performs (limiting deflection and reducing stress concentration in the shell/potting interface) is different from the structure in the prior art (a sealing surface) and the function it performs (sealing with a mating O-ring) then rejecting the claim as a matter of design choice is not a sufficient rationale to substantiate obviousness.

In re Gal is very helpful in fighting design choice rejections. It clearly sets out the requirement that the alternative found by the examiner in the prior art provide a structure and function equivalent to the claimed elements. If it does not, it cannot be considered interchangeable with the claimed invention.

KSR’s Rationale Requirement to Overcome Obviousness

When the U.S. Supreme Court decided KSR Int’l Co. v. Teleflex Inc., many patent practitioners viewed it as negative for inventors. However, KSR does have helpful language that patent prosecutors can use to overcome design choice rejections.

Under KSR, the examiner must provide an explicit analysis of “an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Although KSR expanded the potential sources of this “apparent reason” beyond the teachings, suggestions, and motivations in the prior art, the decision made clear that the examiner must still identify and explain the reason to support a prima facie case of obviousness.

While prosecuting an application directed to an air cleaner, patent attorney, Franco Serafini, from Themis Law, successfully argued this point. The application taught a device for removing airborne pollutants using a configuration of front and rear filters, combined with ionizer and collector grids suspended in a frame, by isolating members, for the purpose of reducing sound and coronal discharge generated by the grids. U.S. Patent No. 10,518,272

Examiner Jones rejected the claims based on two Japanese publications that showed ionizing air cleaners with ionizers and collectors in a frame. The examiner then asserted that suspending the grids within the frame was merely a design choice.

The applicant responded, first by emphasizing the functional difference between the separate and isolated grids described in the claimed invention and the molded frames, integral with grids, taught in the prior art. Because the applicant had provided for these differences in function, it was left to the examiner to offer rationale as to why someone would modify the frame molded around the grids in the references to suspend the grids as claimed. The response then turned to KSR to emphasize that the requirement that the examiner rationale as to why someone would modify the frame molded around the grids in the references to suspend the grids as claimed

In Maeda, the PTAB stated “Per se rules for determining obviousness are disfavored. In re Ochiai, 71 F.3d 1565  1571 (Fed. Cir. 1995). […] We discourage examiners from relying on ‘design choice’ because it is generally a mere conclusion, which is no substitute for obviousness reasoning based on factual evidence. Nonetheless, ‘design choice’ may be appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function or give unexpected results. See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995).” Here, the Office Action has provided no rational underpinning to support the allegation of design choice, as required by KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (cited in Maeda), nor any factual evidence. Moreover, as discussed above, Applicant has set forth reasons why using an elastic insulating material would provide a different function than in the prior art (reducing audible noise).

The takeaway from this case is that you can use KSR to push examiners to explain the rationale behind their rejection. There is a good chance the examiners may find that their logic does not stand up to scrutiny when written down, prompting them to allow the case.

Design Choice in Art Unit 1770

It is not surprising to see design choice given as grounds for an obviousness rejection in art unit 1770. Mechanical inventions often use conventional structures. But by focusing on the legal requirements for a design choice rejection, including equivalence in function and an explicit reason for the combination or modification, you you have a strong shot at overcoming these rejections.

These are just a few of the ways you can respond to an obviousness rejection based on the “design choice” rationale.

These cases were retrieved using Arguminer, a tool for finding specific issues for specific types of cases, art units, or examiners. You can find cases to help you prepare your next response using the Arguminer software. Contact IP Toolworks  for a demo of this powerful product.

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Getting Out of Autodrive: Arguments to Overcome “Automatic Means to Replace Manual Activity” in Obviousness Rejections

On its surface, the rationale behind “automatic means to replace manual activity” rejections seems to make sense. Simply replacing work done by hand with the same work performed by a machine hardly constitutes a new invention. However, automation is seldom so simple, and in this complexity lies the prospect of patentability. The question is, how do you demonstrate that your client’s invention is more than mere automation?

Keep reading to discover three arguments that have proven successful in overcoming § 103 rejections citing automatic means for replacing manual activity:

First Things First

The elements that underlie an automatic means rejection are straightforward: a manual activity, an automatic means, and a replacement of one for the other. In order to properly present an automatic means rejection, the examiner must be able to point to the manual activity from the prior art that forms its basis. If, however, the manual activity the examiner is alluding to does not exist in the prior art, the claimed activity may be patentable, whether it is performed manually or automated.

For example, suppose your client has an improved manufacturing process. The process uses sensors of varying voltages to monitor an assembly machine. The sensors measure vibration, pressure, and other characteristics. The information from these sensors provides a cheaper assembly process and extends the life of the assembly machine. If these parameters had never before been measured and used to monitor the manufacturing process, they would be patentable, irrespective of whether the sensors were adjusted automatically or required manual intervention. As such, an automatic means rejection would be improper. An examiner cannot recite automatic means for replacing a manual activity if the manual activity being automated does not exist in the prior art.

This was exactly the issue raised by attorney Mark Crockett, from Luedeka Neely Group PC,  while prosecuting an application claiming a sensor interface that connected sensors to an automatic monitoring system. Examiner Norman rejected the application, explaining that the invention merely replaced a manual activity with automatic means of accomplishing the same task.

In response, the applicant argued:

The Office Action invokes In re Venner (120 USPQ 192) to assert that “providing automatic means to replace manual activity which accomplished the same result involves only routine skill in the art.” First, it should be noted that In re Venner does not establish a per se rule regarding obviousness of replacing manual activity with automated means. The Office Action must still show prior art evidence of the “manual activity” that is being automated. In this case, the Office Action does not point to any manual switches connected to positive, negative, and neutral supply voltages in the prior art power supply that are being replaced by the claimed software-controllable switches.

The examiner acknowledged the argument, stating that “the prior art does not teach or suggest the sensor power and conditioning interface, as amended,” and the application went on to issue as U.S. Patent No. 10,175,148.

This case reminds patent practitioners to start at the beginning of the analysis. Ask whether the examiner has in fact found a manual activity within the prior art analogous to the claimed invention. If the examiner has skipped this step, an automatic means rejection is improper.

Improvement Does Not Necessarily Mean Replacement

Replacement of one element for another is requisite to the “automatic means to replace manual activity” rejection. Although no case specifically discusses what replacement means, one can infer that in order for the automatic means to replace the manual activity, it must perform the same functions and solve the same problem.

Consider a scenario in which the automated version of the activity in question performs additional functions or provides solutions not achievable using the manual process. Would the claimed invention still be considered a simple case of replacement? This situation is indeed likely, as automation brings many benefits, including:

  • Speed
  • Efficiency
  • Productivity
  • Accuracy

If any of the above improvements apply to the claimed implementation, it is logically rendered as something more; in other words, a patentable invention.

This argument was presented during the prosecution of an application involving machinery that prepares food using closed ingredient containers. The machine automatically cuts pouches and adds ingredients from the pouches to a recipe without human intervention.

Examiner Triggs rejected the claims asserting that automatically cutting and dispensing ingredients is merely the automation of a manual task. In response, attorney Silvia Salvadori, from Silvia Salvadori P.C.,  argued that:

[T]he presence of the hoppers with a cutting device inside, formed by toothed cutting blades angularly adjustable with teeth facing towards the hopper mouth, allows the preparation of recipes with an efficiency which could not be achieved by any manual operation. … As discussed above, the presence of the cutting blades angularly adjustable and with teeth facing the hopper mouth could not be exchanged by a human operator with the same reasonable expectation of success.

This argument overcame the rejection, and the patent issued as U.S. Patent No. 9,718,040.

This case teaches that replacement usually means that the invention performs the same structures, functions, and results as the manual activity cited as prior art. If your client’s invention adds new functionalities and outcomes, you can argue that it improves on the manual activity rather than replacing it.

Automatic Means is Merely Automation

The automatic means provided by the invention usually replace a human with a machine. When the machine performs something a human cannot do, you can argue that your client has not provided automatic means. Instead, the client has changed the function of the device and created a new invention.

Attorney Jay Franklin, from the law firm, Davis & Bujold,  presented this argument while prosecuting an application for a roller mill with an opening that automatically adjusts based on the pressure sensed in a grinding space and an aspiration space.

The purpose of this invention is to keep dust, like flour, from getting sucked into the mill’s aspiration space when the air pressure changes. For example, if an inspection door is opened, the mill automatically adjusts itself to stop the pressure change from pushing dust from the grinding space into the aspiration space.

Examiner Katcoff rejected the claims under § 103 using the automatic means rationale. In response, the applicant successfully argued that the examiner had misconstrued the claimed invention’s relation to the prior art:

This rejection appears to be based on a misunderstanding of the differences between the present invention and Kasada et al. ‘963. It appears from the present office action that the Examiner considered the essential difference between the present invention and Kasada et al. ‘963 to reside in the automation of the manual process already disclosed in Kasada et al. ‘963. However, this is not correct.

The application went on to issue as  U.S. Patent No. 10,946,385

Because the prior art did not show manually adjusting the roller mill opening to prevent dust movement, the invention could not represent automation of a manual activity. Moreover, the use of sensors to detect a pressure change presents an activity beyond the capacity of human actors. The invention was not mere automation, but a completely new concept, with no manual counterpart.

No Patent Holder Wants Unsupported Rejections

If automated means were always unpatentable, the patent system would have a built-in bias against robotics, control systems, driverless cars, autonomous drones, and many other emerging technologies. This cannot be the case.

Some aspects of these technologies might not be patentable under the automatic means rationale. For example, replacing a mechanical coupling with a computer-controlled servo in a car throttle probably replaces a manual activity with an automated means and should be rejected.

When you receive an “automatic means” rejection, it is helpful to keep in mind that you can guide examiners into supporting their rejections by clarifying your invention’s relationship to the manual activity identified in the prior art on more concrete terms. An unsupported rejection does not help anyone. You and your client are left wondering how to respond and the examiner faces reversal if you appeal. Supported rejections create a more robust process for all parties by producing better claims and stronger file histories.

Automatic controls are not per se unpatentable. By examining each element of the automated means rationale, you and the examiners will reach better outcomes.
These are just a few of the ways you can respond to an obviousness rejection based on the “automatic means” rationale. These cases were retrieved using the Arguminer software, a tool for finding specific issues for specific types of cases, art units, or examiners. You can find cases to help you prepare your next response using the Arguminer software. Contact IP Toolworks for a demo of this powerful product.

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Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

More than “Just the Facts”: Exploiting Legal Arguments to Your Advantage in Obviousness Rejections

Obviousness rejections enter into the uncanny territory between objective fact and subjective interpretation, contributing to their status as the bane of most patent attorneys’ existence.  On the one hand, prior art is what it is. You cannot fundamentally change the invention or what came before. Too much modification of the claims risks obfuscating the invention and weakening the protection that your client can obtain. On the other hand, there is something supremely subjective about the selection and interpretation of relevant prior art. Arguing for or against obviousness often necessitates speculation on the motivation or lack of motivation of prior art inventions.  As a result, an examiner can persist in the rejection by focusing on facts that favor obviousness and downplaying your facts.

What’s more, crafting responses to § 103 rejections is labor intensive, requiring prosecutors both to engage in a deep discussion of the invention and to comb through prior art. But you have another tool in your toolbox to overcome § 103 rejections. In addition to arguing the features of the invention, you can exploit legal errors or weaknesses in the examiner’s construction of the rejection. Many of the tests for obviousness arise directly from caselaw. As a result, examiners must meet certain legal requirements to satisfy these tests.

By focusing attention on areas where the examiner has failed to provide sufficient legal support for the rejection, you rely less on factual arguments. This allows you to create repeatable arguments that do not depend on the specific invention at issue. These arguments can be reused whenever an examiner misuses these legal concepts.

Here is an overview of some common ways examiners make unsupported obviousness rejections, and how you can use legal arguments to attack them.

Not Everything is a Design Choice: Differences in Function Can Overcome Obviousness Rejections

It is hardly surprising that “design choice” is one of the most common phrases used by examiners in obviousness rejections. It is a simple, understandable phrase that captures an examiner’s intuitive sense that the inventor did nothing more than replace a prior art feature with a known equivalent.

However, it is important to keep in mind that “design choice” is a legal term and not merely a turn of phrase. Federal Circuit precedent sets out the important principle that “design choice” is not a catch-all for use by examiners. Instead, it is a specific legal test that can only be applied by examiners when a specific set of facts exists. To reject a claim based on “design choice,” an examiner must show that the claimed feature was a known substitute for the corresponding element in the prior art and that the new element performs the same function as the old element within the context of the invention.

This principle was used skillfully by Corning Optical IP attorney, Kapil Banakar, to overcome an obviousness rejection on an application for a fiber optic cable. In this case, the examiner asserted that prior art teaching reinforcing a splice with covers and adhesive materials rendered obvious the overcoated splice claimed in the application. The examiner asserted that the overcoat was an obvious design choice in view of the prior art.

In response, Mr. Banakar pointed out that the examiner had misused the design choice test. Specifically, a rejection of an obvious design choice requires that the prior art and the claimed feature provide the same function. As explained in the office action response:

Design choice applies when old elements in the prior art perform the same function as the now claimed structures. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no stated problem and presents no unexpected result and “would be an obvious matter of design choice within the skill of the art”). However, when the claimed structure performs differently from the prior art a finding of obvious design choice is precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design choice precluded when claimed structure and the function it performs are different from the prior art). See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (“design choice” is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function).

In this case, the overcoated splice provided a fiber optic cable with greater density because the overcoated splice had a smaller diameter than a conventional splice. The examiner subsequently withdrew the rejection and the patent issued as U.S. Patent No. 10,976,492.

The takeaway from this case is that you can overcome a design choice rejection simply by pointing out the functional differences between features claimed in your client’s application and those in the prior art.

Automation is Patentable: Differences in Configuration Undercut Obviousness Rejections

Automation is one of the pillars of invention. Without automation, you would have a choke control on your car and need to turn on your air conditioner every time your office gets hot.  Yet, some examiners would have you believe that automation is not patentable. The phrase “automatic means to replace manual activity” populates many rejections in the computer, manufacturing, and automatic controls art units. However, while “automatic means” provides a catchy phrase, it also describes a legal standard that examiners sometimes overlook when making this rejection.

In re Rundell, a case from 1931, laid the groundwork for the “automatic means” rejection. This case is cited in In re Venner, which the MPEP uses as the exemplary “automatic means” rejection. Rundell affirmed a rejection of an automated bunch concentrator for making cigars. But the Rundell court was careful to include two limitations on its decision that continue to limit the use of the “automatic means” rejection. These limitations still exist today.

First, the court noted that the details of the automated mechanism were not included in the claims. Presumably, if the parts of the automated mechanism were recited in the claims, the court could have decided the case differently. See also Ex parte Bagnall, et al. (Appeal 2009-013429) (unfortunately, this decision is non-precedential but it illustrates the limitations of these rejections).

Second, the court noted that the safety function of the automated mechanism was not claimed or argued in the appeal. This is an odd statement from a court. Courts rarely talk about what was not argued unless they think it would have made a difference. As such, one can infer that the court could have reached a different outcome if the applicant had:

  • Claimed the safety device
  • Argued that the automated mechanism was safer than the manual one

This argument was put to effective use by lead IBM patent attorney, Nathan Rau, in overcoming an obviousness rejection on an application for a configurable door panel. In this case, the examiner rejected claims for a computer door panel with a spring and spacing mechanism that adjusts the angle of the door. The rejection asserted that the spring and spacing mechanism merely provided an automated or mechanical means to replace the manual activity of rotating the door.

In response, the applicant argued that an examiner can only use an “automated means” rejection when the claimed invention uses the same configuration of parts as the prior art.

[T]he Office Action asserts that this feature of claim 1 would be an obvious design choice and that “providing a mechanical or automatic means to replace manual activity which has accomplished the same results involves only routine in the art.” [I]n In re Venner, the claims at issue simply automated a prior practice, activating the prior arts already existing pressure release valve. In Venner, the only thing that was new was automating the activation of the pressure release valve. All of the components of Venner could be found in the prior art performing their intended functions in the same way with no change in their arrangement. In contrast to Venner, claim 1 recites a very specific structure and arrangement of the components. … [T]he Office Action has failed to show that this feature of claim 1 performs an already known function based on the same arrangement. Further, the Applicant notes that the arrangement of the features of claim 1 must also be found in the cited references. Even if the Office maintains that this feature of claim 1 is providing a mechanical effect, the Office still must consider the claimed arrangement of the components that permit the particular function to occur. The Applicant submits that the arrangement provided in the claim improves the corresponding functional aspects of the device.

The examiner withdrew the obviousness rejection and allowed the patent to be issued as U.S. Patent No. 10,362,716.

The takeaway from this case is that examiners meet a legal standard to use the “automatic means” basis for rejecting claims. The examiner must show that the invention uses the same configuration of parts, performing the same function as the manual device. If you show a different arrangement or function beyond simple automation, you undercut the examiner’s basis for the rejection.

Even Notoriously Well-Known Facts Require Support: Examiners are Constrained in Taking Official Notice

One of the most frustrating rejections to receive is one in which an examiner contends that claims are rendered obvious in view of information that is considered common knowledge in the art. Here you are dealing with official notice, meaning that the examiner has taken notice of facts not on the record. However, as slippery as citing common knowledge against your claimed invention may sound, there are legal procedures in place that constrain the manner in which examiners are permitted to introduce outside evidence. Keeping these limitations in mind as you prepare your response can make this one of the easiest legal errors to challenge. 

To begin with, the MPEP counsels that for examiners to take official notice of a fact, the fact must be capable of “instant and unquestionable demonstration of being well-known.” Some examples given in which notice can potentially be taken include:

  • Scientific facts, such as the fact that heat adjustment causes a change in temperature
  • Business facts, such as the desirability of making something “faster, cheaper, better, or stronger”

Beyond this, official notice without documentary support is permissible only in certain rare circumstances and particularly limited when issuing final rejections. The examiner is required to provide a clear and unmistakable technical line of reasoning for why official notice was taken in these situations. Moreover, if the applicant challenges the propriety of the way in which official notice was taken, it falls upon the examiner to support their finding with adequate evidence. The examiner may even be required to provide an affidavit or declaration if relying on personal knowledge to support their finding of what is known in the art. See 37 CFR 1.104 (d)(2).

One example of a successful argument that an examiner lacked legal support for his use of official notice was made by patent attorney, John Guerra, in a response to an obviousness rejection on an application for a contactless reception device and reception method:

Applicant respectfully maintains that the application of Official Notice in the outstanding Final Office Action is improper. The legal standard for applying Official Notice under MPEP § 2144.03 is rigorous. With respect to Official Notice, MPEP § 2144.03 states that “such rejections should be judiciously applied.” “It is never appropriate to rely solely on ‘common knowledge’ in the art without evidentiary support in the record, as the principal evidence upon which a rejection was based.” MPEP § 2144.03, emphasis added, citing Zurko, 258 F.3d at 1385, 59 USPQ2d at 1697. Contrary to the MPEP, in this case, the Final Office Action uses Official Notice as the principal evidence to reach a conclusion of obviousness.

The examiner withdrew the rejection and the application went on to issue as U.S. Patent No. 10,615,644.

The takeaway from this case is that the MPEP and caselaw place the burden on examiners to support their application of official notice. Examiners are responsible for providing documentary evidence when challenged, and allegedly well-known facts without this support can never serve as the primary grounds for a rejection.

Pushing Back on Obviousness Rejections

Obviousness rejections centered on phrases like “design choice,” “obvious to try,” “automated means to replace manual tasks,” “notoriously well known in the art,” and “common knowledge” can be among the most aggravating to argue on. Examiners sometimes introduce these terms as a placeholder with which to express a sense that the invention is not patentable in view of prior art, when in fact the grounds for rejection have not been fully articulated or supported. Because each of these phrases came from a case that imposed limits on its use, you can help bring the examiner to a clearer mutual understanding by drawing attention to the legal foundations for the grounds of rejection.  This focus on legal arguments may very well reduce friction, putting you on track for an issued patent, as the above examples illustrate.

These arguments were found using Arguminer. Visit IP Toolworks to learn more about using Arguminer to find proven arguments for your office action responses.

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Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Anti Alice Responses to Overcome 101 Rejections in the AI and Simulation Modeling Arts

Group Art Unit 2128 deals with some of the most exciting and cutting-edge technology in the Patent Office, artificial intelligence and simulation modeling. However, patent examiners sometimes reduce these inventions to mere algorithms when making rejections under § 101. This reduction allows examiners to dismiss the technological improvement provided by the invention as nothing more than a mathematical concept that can be performed in the human mind. The “mental process/mathematical concept” rejection has always been a legal fiction and this can make the rejection difficult to overcome. After all, an examiner can argue that any mathematical concept could theoretically be performed in the human mind, even if no one has ever done so.

Here are three inspiring office actions that show how you can respond to a “mental steps/mathematical concept” rejection in the AI and simulation modeling art areas.

Lay the Groundwork with Your Specification

Since almost any application in this technology class is vulnerable to a rejection under § 101, you should draft your specification with a potential § 101 rejection in mind. Specifically, you can include ammunition in your specification that will ground the arguments in your office action response. This will provide credibility to your arguments, so the examiner knows you are not creating them out of thin air.

This strategy was used with impressive results by Samir A. Bhavsar from Baker Botts LLP in U.S. Patent No. 10,915,342. This patent was allowed after only a single office action response. This speedy prosecution was helped by an examiner interview that was conducted prior to filing the office action response.

The invention is a computer system for comparing data sets that cannot be quantified in a simple way. For example, the invention could be used for recognizing a face based on a reference photo or recognizing a voice from a voice sample.

The examiner, Bijan Mapar, rejected the application under § 101 on the ground that the claims merely recited a series of steps that could be performed in the human mind. In response to this mental steps rejection, the applicant argued that the invention improved technology through a practical application of the algorithm recited in the claims.

This argument is nothing new. This is often the most effective argument in response to a mental steps rejection. But in this office action response, the applicant diligently pointed out several places in the specification that described both the purpose of the invention and the practical implementation of the invention.

[T]he claims recite elements that are integrated into a practical application, and are therefore not directed to an abstract idea. Although other practical applications exist, Applicant will focus on the practical application directed to cloud-based computing, as explicitly recited in amended Claims 1, 8, and 14.

For example, the specification describes, “Another technical advantage of a correlithm object processing system is their ability to be adapted to implement a cloud based architecture that allows correlithm objects to be processed remotely as cloud services. For example, a device may send correlithm objects to a cloud based correlithm object processing system to offload the resources used for processing the correlithm objects. In this example, the device is able to receive processed correlithm objects from the cloud based correlithm object processing system without having to consume the device’s processing resources. The cloud based correlithm object processing system allows devices to utilize the benefits of correlithm objects (e.g. noise immunity and information security) while offloading the computing resources.” See Specification at p. 8, ll. 19-28 (emphasis added).

The specification set up the argument so well that the legal argument takes only a few lines in over two pages of the response. The remaining space is occupied by extensive quotes directly from the specification to support the legal argument. The takeaway from this case is to write your specification to include facts about the invention, how it is used, and how it improves technology.

Claim Steps that Are More Than Mathematical Operations

Another approach was used to great effect by Steven Fischman at Scully, Scott, Murphy & Presser, P.C. in U.S. Patent No. 10,885,241. This invention is a simulation system that uses a correction operator to correct for error between observed data and model data.

This patent was originally rejected under § 101 as a mathematical concept by the examiner, Thai Q. Phan. In this case, the applicant overcame the rejection by amending the claims to specifically recite steps that were not mathematical operations. For example, the amended claims recited “appending … the correction operator to the simulation operator to produce a supplemented operator without modifying the simulation operator.”

The applicant gained the argument that the claims were “more than” a mathematical concept. Specifically, the applicant argued that the invention integrated a mathematical algorithm with non-mathematical data processing steps and that:

As a result of such integration, the claimed processor is enhanced with functionalities to generate “supplemented output data by applying the simulation model with the supplemented operator on a set of inputs”. The practical application integrated with the elements in the pending claims addresses challenges faced by simulations systems, and provides the simulation systems with ‘relatively cost effective approach in terms of development time and computation, since current practices involve significant modification of core simulation code, which may be time consuming from a development perspective, and may significantly slowdown the implementation due to increased computational complexity of the more comprehensive formulation”. See paragraph 52 of the originally filed specification.

This response weaved together two important concepts for overcoming a rejection under § 101:

  • A real-world application for the invention
  • A technological improvement that results from the practical application

The takeaway from this response is that amending the claims to recite steps that are non-computational provides a path to arguing that the invention is practical, rather than abstract.

Argue the Limitations of the Human Mind

Another approach to overcoming a rejection under § 101 comes from U.S. Patent No. 10,761,494. This patent is directed to a simulation method that predicts the value of a variable if a particular social policy is enacted. The application was originally rejected under § 101 as an abstract idea by the examiner, Thai Q. Phan.

In response to the rejection, Gene M.Garner II from Staas & Halsey LLP persuasively argued that the method as claimed was more than just the mental concept of estimating the value of a variable in response to a social policy. Instead, the applicant focused on the steps of the method that could not be performed by the human mind. This allowed the applicant to argue that even if the idea of estimating the value of a variable could be held in the human mind, the process recited in the claims could not be carried out by the human mind.

Thus, claims 1-9 do not recite a mathematical concept that can be practically performed in a human mind because the claims do not cover performance in the human mind but for the recitation of generic computer components. For example, at least the claimed feature of “transmitting, to the terminal via the network, a simulation result including the predicted value of the objective variable in response to introduction of the policy, to display on the terminal a display screen representing a difference between the predicted value of the objective variable in the absence of introduction of the policy and the predicted value of the objective variable in response to introduction of the policy, and enable the user to quantitatively recognize the effect of introducing the policy” requires the processor’s action that cannot be practically performed in a human mind (see, e.g., 2019 PEG, footnote 14; and USPTO Example 37, claim 2, Example 38, and Example 39 issued January 7, 2019).

The office action response did not stop there. Once the applicant highlighted the steps of the method that required a processor because they could not be performed in a human mind, the applicant pointed out that these steps provided a technological improvement. The applicant wove quotes from the MPEP directing examiners to look at the specific requirements of the invention rather than oversimplifying every process into mental steps/mathematical concepts.

One takeaway from this office action response is that you should always include steps that cannot be practically performed in the human mind in your claims. The other takeaway is that you should argue that these non-mental steps improve the technological state of the art.

Overcoming Rejections Under § 101 in Art Unit 2128

These office action responses are not the only ways to overcome a § 101 rejection in the AI and simulation model domain. But they do provide some inspiration for practitioners in these fields. Even though this domain is heavily dependent on algorithms, there are ways to show that a method or system can be patent-eligible.

Use the specification to identify technical improvements and practical applications. And be sure to claim steps that cannot be performed in the human mind and relate to non-computational data handling.

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Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Anti Alice Responses to Overcome 101 Rejections in Automated Vehicle Systems Domain

AU 3668 – Computerized Vehicle Controls and Navigation, Radio Wave, Optical and Acoustic Wave Communication, Robotics, and Nuclear Systems

Every patent practitioner has faced the same obstacle — a client’s application is assigned to an unfamiliar art unit. This presents two challenges:

  • Unfamiliarity with the examiners: When you have many applications in the same few art units, you get a feel for what works or does not work for the examiners in those art units. Getting assigned to a different unit means you have no direct insight into the examiners’ tendencies and preferences.
  • Unfamiliarity with the application of the law: Some units have particular ways of interpreting USPTO guidance and case law that plays out in differences in how they go about examining claims and determining patentability. The kinds of arguments likely to be successful in molecular biology, for example, may be less effective in prosecuting another technology, such as casino gaming or automated vehicle systems.

Using a tool such as Arguminer can simplify the research needed to find arguments that work in a particular art unit with a specific examiner. It can also identify what did not work. Armed with this intelligence, any patent practitioner can take inspiration from proven  arguments in any art unit.

Here are three proven arguments that overcame §101 rejections in art unit 3668 to draw inspiration from:

Technical Details Can Show a Practical Application

Rejections under § 101 are difficult because they often cross over into territory covered by §§ 102 and 103. Under the Alice framework, well-understood, routine, and conventional implementations can be held against the applicant in determining whether the claims recite an abstract idea.

This leads patent practitioners into a logical tautology — an invention comprises patentable subject matter if it is patentable. Specifically, an invention is less likely to encompass an abstract idea under § 101 if it is novel and non-obvious. This means that to overcome a rejection under § 101, you may need to point out the invention’s novel and non-obvious features.

One case in which this worked is U.S. Patent Application Serial No. 14/845,189. This case, argued capably by Gregory M. Murphy of Landmark Intellectual Property Law, PLLC, claims “systems and methods for optimizing energy usage in a household.”

The claims were rejected under § 101 as encompassing “an abstract idea of gathering, analyzing, and displaying data.” In response, the applicant argued that the invention provided a particular practical application that moved the invention outside the realm of an abstract idea under the first prong of the Alice framework.

Specifically, the applicant argued:

Here, the claims are similarly not “directed to an abstract idea.” Much as in Free Stream Media Corp., even though the claims include computer components operating in some manners in which they are designed, the technical focus of the claims is based upon systems including energy generation or storage components, disaggregation based thereon, and actionable user recommendations based on both TOU schedules, but also based on energy generated and/or stored locally. And as in SAIC, the claims do not stop at an abstract concept alone, but present a full solution based on, and grounded in, technology. Specifically, the claims require steps combined in an unconventional method — that is, taking into account local generation or energy storage, before making recommendations based on actual (not hypothetical) past use time periods.

What the applicant relied on in this case was the novelty of the method. By arguing that the method was novel, the applicant successfully persuaded the examiner, Shon G. Foley, that the invention had a practical application beyond a conventional implementation of an abstract idea.

In other words, the examiner originally took the position that the claims were directed to the abstract idea of optimizing energy usage. The applicant countered this position by pointing out the technical details that made the invention unconventional in the industry. As such, the examiner withdrew the rejection because the invention is more than the abstract idea of energy optimization. Instead, it is a concrete and practical application of a technical method.

A New Solution Can Establish a Specific Technological Improvement

A technological improvement is the opposite of an abstract idea. This concept is embodied in the second prong of the Alice framework. By arguing that the claimed invention improves technology, you can persuade an examiner that the invention is “significantly more” than an abstract idea.

A case where this argument succeeded is U.S. Patent Application Serial No. 15/531,319, now U.S. Patent No. 10,408,710. The claims of this patent are directed to a process for taking measurements from a tire and predicting its fault portions.

The examiner rejected the claims under § 101 on the grounds that the method only recited “an idea ‘of itself.'” The examiner explained the rejection by stating that the claims only recited collecting and analyzing information. This left the claimed process disembodied from a technological implementation and, as such, was no more than an “uninstantiated concept.”

In response, Tatsuya Sawada of Kenja IP Law, PC made two clever moves. First, the claims were amended to tighten up the language and tie the method steps to physical objects like processors, temperature measurement units, and displays.

Second, Mr. Sawada focused the arguments in the office action response on the specific technological improvement provided by the invention. That is, rather than broadly stating the field of the invention, the arguments focused on the specific problem the invention addressed.

The method according to claims 20-23 provide an improvement in the conventional a tire fault portion prediction. The claimed method allows for significant enhancement of accuracy in a tire fault portion prediction by calculating fatigue characteristic values corresponding to degrees of fatigues of the tire constituent members based on the temperatures measured with the temperature measurement unit, and predicting fault portions of a tire based on at least one of the fatigue characteristic values and the tire running parameter.

In view of the above, claims 20-23 are directed to significantly more than an abstract idea, because claims 20-23 show that there is a significant improvement in the technical field of the tire fault portion prediction

This argument overcame the examiner Thomas P. Ingram‘s rejection because the claims were no longer “uninstantiated” or disembodied. Rather, they were tied to a concrete technological improvement.

A Physical Process is the Opposite of an Abstract Idea

In a somewhat related argument, a claim that recites a physical process is much more likely to overcome a rejection under § 101. For example, it is much more difficult for an examiner to reject a claim as reciting “mental steps” when the claims include physical processes.

This argument was used in U.S. Patent Application Serial No. 16/023,699. This application is directed to a process for mitigating soil compaction in agriculture.

The claims were originally rejected under § 101 as encompassing steps that could be performed in the mind of a person. This is often a difficult rejection to overcome because almost any steps could be performed in the human mind with enough support. But Douglas J. Duff, intellectual property counsel at Deere & Company, made some insightful moves.

Mr. Duff amended the claims to include a work tool with a seeding device. This allowed the applicant to argue that the claimed method could not be performed in the human mind because the human mind lacks the physical implements recited in the claims. As such, the claimed method was a physical process rather than a purely algorithmic process.

Contrary to the Office’s rejection, none of the elements the Office identified in claims 1 or 16 fall within any of the groupings of abstract ideas identified by the Office in its 2019 Revised Patent Subject Matter Eligibility Guidance. Instead, the identified claim elements recite a method of mitigating compaction that includes “passing a work tool through the work area at the plurality of reference points” and “adjusting the work tool at the plurality of reference points,” as recited in claim 1, and a method of mitigation compaction with a vehicle that includes “determining vehicle position data as the vehicle passes through the work area at the plurality of reference points” and “adjusting the work tool at the plurality of reference points based on the vehicle position data,” as recited in claim 16. Further, claims 1 and 16 provide the further step of adjusting seeding actuation of the seeding device based on the compaction data.

Accordingly, the steps of adjusting a work tool and adjusting seeding actuation are more than a process that “covers performance of the limitation in the mind but for the recitation of generic computer components,” as alleged by the Office, as the work tool adjustment and seeding actuation are significantly more than mere mental processes.

This argument succeeded. In the next office action, the examiner Mohamed A. Algehaim withdrew the § 101 rejection.

Looking for Inspiration in Your Art Unit?

In Art Unit 3668, you have a fair chance of overcoming a § 101 rejection by arguing the novel features of the invention, the technical improvement brought about by the invention, or tying the control method to a physical process. These arguments can be reasonably adapted to argue on other electronic and computer-controlled processes.

In other units, you can use Arguminer to identify arguments proven to be successful. In fact, you can also use Arguminer to find out what didn’t work to avoid any mistakes. To learn more about Arguminer, contact IP Toolworks.

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Originally published on IPWatchdog.

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

How to Write a Winning Patent Office Action Response | USPTO

Prosecution is the bread and butter of the patent lawyer’s practice. Because you will likely spend most of your time during the workday reading and responding to office actions, honing skills specific to this aspect of your practice can have a major impact on how efficiently and effectively you are able to manage your practice overall.

Office action responses are where patent prosecutors get to “be lawyers.” Patent applications are very focused on the technology and, aside from the claims, could be written by a technical writer. But office action responses are where you will put your legal skills to work including:

  • Analyzing the legal and technical merits of the examiner’s grounds for rejection
  • Developing a strategy for responding to the rejections
  • Researching cases, regulations, and MPEP sections that support your strategy
  • Writing persuasive arguments that are supported by the law
  • Negotiating with examiners to overcome the rejection

Your prosecution work will lay the foundation for the road you are to face with clients and examiners. Successful prosecution means issued patents. Unsuccessful prosecution will land you, your client, and the examiner in a never-ending cycle of rejections and responses.

Here is a crash course in drafting a winning office action response:

Appearance Matters

Many attorneys find it helpful to begin by reviewing an office action response example which can serve as a template for the office action response being prepared. Doing this will:

  • Help you meet the expectations of examiners and clients about what an office action response should look like.
  • Ensure you do not leave anything out that might trigger a technical office action saying your document was non-responsive.
  • Improve your efficiency.

Developing a template for use now can save time with future office action responses as well. This means you can spend your clients’ time researching and writing effective arguments instead of formatting your document.

Reading is Fundamental

Perhaps you remember the slogan from children’s literacy campaigns that “reading is fundamental.” It is nowhere more true than patent prosecution.

The examiner wrote an office action laying out the reasons for rejection. You must read the office action carefully. If you miss, misread, or misinterpret a ground for rejection, you will needlessly extend prosecution by submitting an incomplete response.

Keep in mind that the easiest office action responses to write are those where the examiner has made a factual error. Examiners make mistakes, and they will occasionally misread your claims or the prior art. If you carefully read the office action and cited references, you can catch these mistakes and correct the examiner with a quick response.

Think Before You Write

You might be tempted to jump right into writing the office action response. But before you start writing, you have a few important decisions to make and some research to conduct.

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Interviewing the Case

Nearly all experienced attorneys we have talked to recommend examiner interviews as among the most important tools at a prosecutor’s disposal. If you’re lucky, you might have a simple rejection, in which case, interviewing might allow you to overcome the rejection by examiner’s amendment without filing a response. More often, you will be dealing with a more complex rejection, in which case, interviewing can help you narrow down or eliminate some issues. Even if you are not able to get the examiner to agree on allowance during the interview, this will help you submit a more focused response.

Many aspects of how you approach the interview are a matter of personal style and preference, that you will refine over the course of practice. However, to get the most out of this important resource, we recommend that you are are: 

  • Early: some examiners are more forthcoming than others when it comes to what they are looking for to succeed. At minimum, conducting the interview early on in the prosecution will ensure that you don’t waste time pursuing a strategy that is far off track
  • Well-prepared: make sure you have planned the discussion thoroughly in advance. You may want to consider preparing an agenda to share with the examiner.
  • Non-confrontational: At minimum make sure you have checked your frustrations at the door, and counseled any inventors who will be attending to do the same. You may even wish to think of the interview as an opportunity to collaborate with the examiner.

We’ve compiled a list of tips to help you master your next examiner interview, which you can read in greater detail here.

Amending the Claims

There are important tradeoffs to be considered when it comes to amending the claims. Amending the claims, particularly in a way that reflects guidance offered by the examiner during an interview,  can demonstrate that you take his or her concerns seriously and that you are willing to compromise to secure allowance.

However, it is best to proceed with some caution, as amending the claims can limit the scope of protection you are able to secure. If you can overcome a rejection without amending the claims, you and your client are almost always better off doing so.

There is no quick and easy way to make this decision. You will make this judgment on a case-by-case basis. However, it can be helpful to look at the examiner’s history to gain insight into what strategies have or have not, been successful in overcoming this rejection in the past. Using a tool like Arguminer, you can research the examiner’s past behavior to help you chart your path forward.

Developing Your Arguments

Many new patent attorneys are unsure about how long an office action response should be. More important than length is how well-thought-out your argument is. A succinct, well-composed argument may well be more successful than a response that is lengthy, but less focused, and may better capture and hold the examiner’s attention.

Remember, examiners have a limited amount of time to devote to each case on their docket. Burdening an examiner with a long, flowery argument will force the examiner to skim your office action response. A punchy argument will keep the examiner’s attention and allow the examiner to identify what you are arguing and how to respond.

At the same time, complex arguments can require more than a few paragraphs to develop. For example, a rejection under §101 will probably need to apply the Alice test and the examination guidelines to the case.

You have many sources for finding and developing arguments. A quote from a case or the MPEP can provide compelling arguments in some cases. However, it is important to remember that because the MPEP is designed for examiners not patent prosecutors, the support you can derive from this source may be limited in scope and is often inefficient to locate.  Colleagues with prior experience with your examiner or issue are an excellent resource and can often provide additional guidance. Finally, tools like Arguminer can help you conduct pin-pointed research to identify which arguments have worked or failed in the past.

Variance in Examiner Behavior

This last point is critical. Examiner variance accounts for much of the outcome in a case. For example, in U.S. Application Serial No. 15/108,712, “Methods, Apparatus, Systems and Mechanisms for Secure Attribute Based Friend Find and Proximity Discovery’” an examiner issued a “mental steps” rejection under §101. In response, the applicant argued:

There is a fundamental difference between the types of claims that the courts have deemed to be ineligible under this exception and the present claims. Specifically, in the cases discussed in MPEP 2106.04(a)(2), subsection Ill.B, the allegedly inventive steps or elements of the claims (i.e., what the claims were directed to) were mental steps that could be performed in the human mind…. However, unlike the cases discussed in MPEP 2106.04(a)(2), … the steps in the pending claims that cannot be performed in the human mind are not ancillary steps to the invention to which the claims are directed. Rather, they are the crux of the invention.

In U.S. Application Serial No.15/610,596, “Method for Predicting Business Income from User Transaction Data,” a different examiner issued the same rejection and the applicant responded with:

the claims recite operations that are advantageously performed by components of a communication network (a processor [e.g., of a server] deployed in the communication network) and cannot be performed as mental steps in a human’s mind. Moreover, the claims include significant features that go well beyond simply “using an index to search for and retrieve data” and “collecting information, analyzing it, and displaying certain results of the collection and analysis” within a particular technological environment, and therefore do not seek to tie up a judicial exception.

These responses are very similar in both quality and substance. But the first argument succeeded and the second failed. By doing a bit of research into an examiner’s history with a particular issue, you can hit the right points in your argument to persuade an examiner to allow your case.

Successful Patent Prosecution is Not a Gamble

For clients, it can sometimes seem as if their success rate with patent applications is dictated by chance. Although many aspects of prosecution cannot be controlled, with proper preparation and execution, patent prosecution can be guided in the direction of your desired outcome. By reading the office action carefully, and planning your response before you begin writing, and researching what has worked in the past using tools like Arguminer from IP Toolworks, you can give your clients the best possible chances at success. 

Here is how you can use Arguminer to draw inspiration for the case at hand:

Step 1 – Drag & Drop or click to upload a copy of your Office Action

Step 2 – Get results from our database of millions of responses showing what worked for other people facing rejections like yours.

Step 3 – Customize searching to pinpoint the best options by filtering for examiner, date, keywords and more.

Step 4 – Take what you’ve found to apply a strategy you know was successful in almost no time at all.

Office Action Responses | MPEP VS Arguminer | Book VS Practical Guide

“If MPEP is the rule book, Arguminer is the practical guide to how patent prosecutors have applied those rules (and more) to overcome patent rejections.” 

Area of help (Broad)Area of Help (Narrow)USPTO MPEPArguminer
Foundational KnowledgeTeaches legal Rules & ProceduresYesNo
Sample Prosecution ArgumentsYesYes
ApplicationFile Wrapper SearchNoYes
Rejection Specific ArgumentsNoYes
Identifies Successful ResponsesNoYes
StrategyExamples of Examiner BehaviorNoYes

MPEP is Designed for Examiners | Arguminer is Designed for Prosecutors

In general, the MPEP is designed to help examiners examine applications which, in practice, means helping examiners make and maintain rejections. The result of this is that, while the MPEP is broadly accurate, its discussion will often lack nuance and omit information that applicants are likely to find important in responding to rejections. This is not the case with the Arguminer software, since it is designed to help applicants overcome rejections, not to help examiners make them.

For example, if someone had a case where they thought the examiner erred by treating a single prior art structure as covering separate claim elements, they could simply use the Arguminer software to perform a keyword search for “separate elements” to identify a plethora of arguments (with supporting citations) on that precise issue (e.g., running this search quickly, I pulled up the response of 4-28-2017 on application 14/450,321, which provides an extensive list of cases on this issue). Doing the same search in the MPEP would only turn up a single brief mention in the context of functional language as part of a string citation regarding means plus function claims (a type of claim that most applicants try to avoid using in any event).

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Where is MPEP Guidance Lacking?

Because the MPEP is written from the perspective of an examiner rather than an applicant, its guidance is not directed to overcoming rejections. Here are some (but by no means all) areas where the MPEP is lacking:

  • Obviousness
  • Negative Limitations
  • Broadest Reasonable Interpretation


The MPEP downplays the importance of avoiding hindsight, and the rules that are in place to prevent a hindsight reconstruction of the applicant’s invention. Indeed, MPEP 2145(X)(A) specifically provides the following guidance for responding to an applicant who asserts that a conclusion of obviousness is based on impermissible hindsight:

Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Applicants may also argue that the combination of two or more references is “hindsight” because “express” motivation to combine the references is lacking. However, there is no requirement that an “express, written motivation to combine must appear in prior art references before a finding of obviousness.” See Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004).

While it is true that there is no requirement for an express, written motivation to combine references, the patent trial and appeal board has explained that “[t]o preclude hindsight in an obviousness analysis, the Examiner must identify evidence ‘in the form of some teaching, suggestion, or even mere motivation (conceivably found within the knowledge of an ordinarily skilled artisan) to make the variation or combination.’”  Ex Parte Kageyama, Appeal No. 2020-002742 on application 15/810,275 (PTAB, 2021), quoting Rolls-Royce, PLC v. United Techs Corp., 603 F.3d 1325, 1338 (Fed. Cir. 2010).

Similarly, while the MPEP lists various arguments an applicant may make with respect to obviousness (often for the purpose of providing guidance on rejecting those arguments), the listing provided by the MPEP is by no means comprehensive. For example, the MPEP does not mention that when a primary reference teaches a solution to a problem, solving that problem cannot be relied on as the reason for modifying the primary reference using the teachings of a secondary reference, something the PTAB made clear in Ex Parte Allen, Appeal No. 2018-008208 on application 14/712,101 (PTAB, 2020).

Negative limitations 

The MPEP (section 2175.05(i)) correctly notes that “Any negative limitation or exclusionary proviso must have basis in the original disclosure.” However, the only example given in the MPEP of how a disclosure can support a negative limitation is that “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” While it is not inaccurate to say that disclosure of alternative elements can provide support for a negative limitation, someone relying on the MPEP would be unlikely to realize that it is possible to support a negative limitation even without disclosure of alternative elements.  E.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”). 

Broadest Reasonable Interpretation

The MPEP accurately states the rule that during patent examination, the pending claims must be given their broadest reasonable interpretation consistent with the specification. However, while it does provide some examples of scenarios where interpretive issues may arise (e.g., effect of various transitional phrases, wherein clauses), like the examples of arguments that can be made in response to an obviousness rejection, the information in the MPEP is in no way complete.

For example, one issue which an applicant may want to be aware of is whether it is proper to treat separate limitations in the claim as being physically separate structures. However, the MPEP’s treatment of the broadest reasonable interpretation rule does not include any indication that interpreting separate elements as not requiring separate structures is something examiners have repeatedly been reversed for.  E.g., Ex Parte Moore, Appeal No. 2020-004805 on Application 15/423,780 (PTAB 2021) (“We agree with Appellant. We find that under the broadest reasonable interpretation of the claim, one of ordinary skill in the art would not consider the telescoping rod 34b to be part of the base.”); Ex Parte Denison, Appeal No. 2009-004110 on application 10/158,362 (BPAI, 2010) (“we note that it is not reasonable to rely on the same structure depicted at the interconnection of Berry’s stent segments to meet both of the limitations requiring a ‘double-curved shaped portion’ and a ‘Y-shaped portion.’”).


Using arguments from the MPEP to respond to office actions may be an effective strategy for some rejections. But determining whether the MPEP contains effective arguments for any given grounds  of rejection is highly inefficient. This inefficiency is not accidental. Rather, it comes from the nature of the MPEP. The MPEP was not written from the perspective of a patent prosecutor responding to office actions. As a result, MPEP provides only a few effective arguments and no effective way to find them.

This is not the case with a tool like Arguminer which was specifically developed to assist in identifying effective and, more importantly, successful arguments for responding to office actions. To learn more about the power of Arguminer to help you find and make effective arguments, contact us.

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Celebrating Excellence: Women Patent Prosecutors with Remarkable Track Records in 101

We used our extensive database of patent prosecution documents to identify patent attorneys and agents with the highest performance, based on their ability to overcome 101 rejections, considering both granted patents and applications in which all 101s were overcome but that may not have ultimately issued for other reasons. The seven women selected for recognition boast exceptional track records, having each successfully prosecuted between fifty and ninety applications facing 101 rejections at time of publication. Such achievement rightly affords best-in-class status, placing our recipients within the top 0.3% of patent prosecutors in this challenging field.  

Subject matter eligibility rejections, particularly post-Alice, are notoriously among the thorniest faced by patent prosecutors. As guidance and rulings surrounding this area of law have taken form so dynamically over the past seven years, the success of our featured patent attorneys and agents is not only a testament to their considerable acumen, but demonstrates a remarkable mental flexibility. Moreover, as several of our featured attorneys and agents note, significant variability in interpreting these changing standards means that it is often necessary to create diverse strategies to situate legal arguments for each response within the context both of the claimed technology and assigned art unit. Doing so can help to break through boiler-plate language and get to promising arguments or amendments. Our selectees additionally speak to the importance of getting to know the preferences of individual examiners, often exercising finesse in working creatively and collaboratively with the examiner and relevant supervisors to lay the groundwork for allowance during the interview phase and beyond. 

It is our belief that there can be no more powerful opportunity for learning how to succeed than to draw upon the knowledge and experience of those who have already achieved it. For this reason, we asked each of the seven women featured if she would be willing to share insights into the practices that contributed to her impressive results. Below you will find a bio for each recipient followed by a practice tip that each personally contributed, designed to offer guidance to new practitioners facing 101 rejections

Yvonne Morriss  

IP Toolworks Cofounder and CEO 

Anne Davis Barry

Cantor Colburn LLP

Anne Davis Barry is a Partner at Cantor Colburn LLP and co-chairs the Computer Science Practice Group. She is responsible for leading her team in securing patent protection to meet client product launch deadlines; for partnering with clients on-site in patent mining sessions to form patent protection strategies; and for management of final work product of associates. Anne focuses her practice on obtaining patents in computer technologies including computer hardware, databases, networks and operating systems, as well as cloud computing, artificial intelligence, and software applications to solve real-world problems. Her experience also encompasses drafting opinions and providing support for patent litigation.

Prior to her legal career, Anne worked for IBM for more than 15 years in various technical positions including computer programmer and on the implementation of database and storage technologies at client locations. As an IBM Certified Project Manager, she successfully managed several large fixed-price consulting projects. Anne is an Adjunct Professor at UConn Law, where she has been teaching both Intros to Patent Law and Advanced Topics in Patent Law since 2002.

Practice Tip [for new attorneys facing subject matter eligibility rejections]:

You have received an Office Action from the PTO stating that your client’s patent application has been rejected under Section 101 as being directed to ineligible subject matter.  You are grappling with how to respond to the rejection as there are still a wide range of interpretations and applications of the Alice decision and its progeny by Examiners (see e.g., “Adjusting to Alice” at  All is not lost!  There is something that you can do that has a real of chance of giving you the direction that you need to address the 101 rejection and to advance prosecution of your client’s patent application:  schedule a thirty-minute interview with the Examiner.

Prepare for the interview by reviewing the latest PTO Subject Matter Eligibility Guidance and finding the examples of eligible subject matter that are most like your case.  Create an agenda for the interview that points out these examples while being mindful that the agenda will become part of the record.  Be sure to send the agenda to the Examiner a couple of days in advance of the interview so that they have time to prepare for the interview.  During the interview, be respectful and actively listen to the Examiner’s position and pursue suggestions they have for getting around the 101 rejection.  Once you understand the Examiner’s position, you can better advocate for your client during the interview and when responding to the Office Action.  Examiner interviews, which provide the chance to have a conversation with the Examiner, are an important patent prosecution tool that should not be overlooked, particularly when faced with a 101 rejection. 

During the interview, be respectful and actively listen to the Examiner’s position as well as any suggestions they have for getting around the 101 rejection.  Once you understand the Examiner’s position you can better advocate for your client during the interview and when responding to the Office Action. 

Kelly S. Horn      

Finnegan, Henderson, Farabow, Garrett & Dunner

As a registered patent attorney, Kelly Horn combines her extensive knowledge of Patent Office practice with her experience as a patent litigator to help clients build, assert, and defend strategic portfolios of utility and design patents worldwide. She maintains an active patent prosecution and counseling practice and draws on her experience before the USPTO to help clients assert and defend patent infringement claims before the U.S. International Trade Commission (ITC) and in U.S. district courts.

Kelly’s technical experience spans a broad range of technologies, including medical imaging, biosurgical products, welding systems, control systems, automotive systems, power production systems, blockchain technology, and communications systems. Prior to entering the legal field, Kelly performed undergraduate research in bioinformatics and completed a graduate thesis directed to the engineering of magnetic viral nanoheaters for the targeted hyperthermic treatment of cancer. She has worked for Johnson & Johnson, performing research within its medical device division. Kelly also represents clients including military veterans and disabled Americans on a pro bono basis before the U.S. Court of Appeals for Veterans Claims and the Social Security Administration (SSA).

Practice Tip:

Don’t hesitate to conduct Examiner interviews early in prosecution, even after receiving the first non-final Office Action.  If you prepare with a proposed amendment and 1-2 of your best arguments based on the amendment, the Examiner will usually provide guidance as to whether the amendment will likely overcome the Section 101 rejection or needs to be adjusted.  Because each art unit has interpreted the USPTO and court guidance slightly differently for the subject matter in that unit, the Examiner can be a helpful resource in tailoring your amendments and arguments in a subject matter specific manner.  By conducting early interviews and getting Examiner feedback before multiple rounds of prosecution, prosecution can often be compacted.

Because each art unit has interpreted the USPTO and court guidance slightly differently for the subject matter in that unit, the Examiner can be a helpful resource in tailoring your amendments and arguments in a subject matter specific manner. 

Bea Koempel-Thomas

Lee & Hayes

Bea leads Lee & Hayes’ International Practice where she advises on a variety of intellectual property matters including inventor agreements, drafting and prosecuting US and PCT patent applications, and managing international patent portfolios.  Bea applies her knowledge of US patent policy and procedures to meaningfully advance her clients’ interests and enhance the business value of their assets. 

Her technical expertise spans information security, artificial intelligence including machine learning, machine vision, data mining and related computer technologies, mechanical and electrical devices, energy management solutions, business methods, and financial technology.  While her practice largely focuses on computer-implemented inventions, she facilitates international IP protection for clients across the firm with an emphasis on partnering with the right foreign counsel for each client.

Bea served as a Patent Examiner at the USPTO in the technologies of computer security and cryptography.  She applies that experience to more efficiently prosecute applications for her clients.  She has regularly been honored as one of the top 1000 patent practitioners worldwide by Intellectual Asset Magazine (IAM).  Bea has long been active in the firm’s Diversity and Inclusion efforts and is passionate about supporting DEI initiatives in STEM and the legal profession.

Practice Tip:

My primary tip for new patent practitioners is to focus on answering questions related to “what” (performs an action or causes an action to be performed), and “how” (a result is achieved, or an action is performed or caused to be performed).  Also, conduct an interview with the Examiner as soon as possible in prosecution, which can help you get on the same page in terms of claim focus.Bea enjoys speaking on many IP topics including how US activities shape the international patent landscape, drafting patent applications to computer-implemented inventions for successful prosecution in the US, China, Japan, Canada, and before the European Patent Office, patentable subject matter, patent quality in the US, international protection of intellectual property, and foreign filing license and inventor remuneration requirements. 

Focus on answering questions related to “what” (performs an action or causes an action to be performed), and “how” (a result is achieved, or an action is performed or caused to be performed). 

Mollie Smith

Shook, Hardy & Bacon

As a Patent Agent with 14 years of experience in the intellectual property field, Mollie applies her technical expertise to patent application drafting and prosecution, patent-product portfolio analysis, and related matters.  Her practice focuses on computer software, applications of artificial intelligence, digital health, and technologies that fall under Technology Center 3600 at the USPTO.  Mollie’s technical experience encompasses firmware, software, microcontrollers, digital electronics, and hardware/firmware integration, in the fields of avionics, remote sensing, and healthcare.  She received her BSEE from the University of Missouri-Rolla (now the Missouri University of Science and Technology). 

Practice Tip:

Under Mayo Step 2A (Prong Two) and Step 2B, don’t let the examiner ignore any of the “additional elements” in a claim. Examiners often focus only on hardware elements, using language such as “This judicial exception is not integrated into a practical application because the additional elements of processors and computer storage media are recited at a high level of generality . . . .” However, additional elements include any features/limitations/steps beyond the identified judicial exception.  MPEP 2106.07.  As described in the 2019 PEG Examples 37, 40, 41, and 42, these may include steps such as receiving, transmitting, collecting, transforming, generating, storing, and steps performed via a GUI.  Other GUI-related features can also be additional elements.  Use the combination of additional elements to attack the examiner’s boilerplate language.  This can be especially effective under Step 2B in combination with the Berkheimer Memorandum (now incorporated into MPEP 2106.05(d)).

Don’t let the examiner ignore any of the “additional elements” in a claim … Use the combination of additional elements to attack the examiner’s boilerplate language.  This can be especially effective under Step 2B in combination with the Berkheimer Memorandum (now incorporated into MPEP 2106.05(d)).

Ruthleen Uy

Kilpatrick Townsend & Stockton

Ruthleen Uy is counsel at Kilpatrick Townsend and Stockton in their San Diego office and has 19 years of patent experience.  Ruthleen focuses her practice on the preparation and prosecution of patent applications in the computer, electrical, and mechanical arts including applications directed to computer architecture, computer hardware, databases, financial technology, mobile communications, mobile devices, and telecommunications. Additionally, Ruthleen has experience prosecuting applications in medical devices. 

Practice Tip:

I find it extremely beneficial to discuss 35 USC 101 rejections (abstract idea rejections) with Examiners through Examiner interviews. When scheduling your interviews, make sure that your Examiner has authority to agree with you regarding arguments and amendments for overcoming 101. If your Examiner does not have the authority to indicate whether the arguments/amendments will overcome the 101 rejection, then try to get the Examiner’s Primary Examiner, Supervising Examiner, or the Technology Center (TC) specialist for the art unit to join your interview. 

During the interview, I ask the Examiners what they look for in overcoming 101. For example, some Examiners want claims to be similar to the USPTO subject matter eligibility examples. Some Examiners are looking for specific hardware or specific software in the claims. Some Examiners want arguments laid out in a manner that clearly follows the eligibility analysis flowchart. I have also noticed that Examiners in an art unit tend to address 101 issues similarly. For example, in an attempt to be consistent, Examiners in one or more art units may agree that certain types of subject matter would overcome a 101 rejection. I usually ask my Examiners what the practice is for their art unit and try to determine arguments and/or amendments based on the current practice for their art unit. 

Another option is to use tools that provide you with statistics on Examiners. You can see which arguments and types of responses (e.g., amendment, pre-appeal brief, appeal brief, etc.) worked in overcoming 101 rejections for certain Examiners.

Based on the recent guidance (2019 PEG), the number of 101 rejections (abstract idea rejections) being issued has decreased. Further, Examiners are more amenable to discussing arguments and/or amendments that they agree will overcome the 101 rejection, which is the suggested best practice for Examiners per MPEP 2106.07(a)(II) (“In the event a rejection is made, it is a best practice for the examiner to consult the specification to determine if there are elements that could be added to the claim to make it eligible. If so, the examiner should identify those elements in the Office action and suggest them as a way to overcome the rejection.”).

… Some Examiners want claims to be similar to the USPTO subject matter eligibility examples.  Some Examiners are looking for specific hardware or specific software in the claims. Some Examiners want arguments laid out in a manner that clearly follows the eligibility analysis flowchart.

Linda M. Vierra

Bryan Cave Leighton Paisner

Linda M. Vierra is a registered patent attorney whose practice focuses on intellectual property law including drafting patent applications and patent prosecution. Her legal experience encompasses areas of computer science, artificial intelligence, machine learning approaches, mobile applications, and business applications. Linda has a B.S. in molecular biology and a B.A. in economics. Prior to joining Bryan Cave Leighton Paisner, Linda’s legal experience encompassed all areas of complex litigation with a law firm in Oregon.

Practice Tip:

Here is a tip that I use as a constructive way to engage with a patent examiner during prosecution of a patent application for a 101 or a prior art rejection from an Office Action:

Use each interview with a respective patent examiner for a 101 rejection as a collaborative experience rather than an adversarial one. During the interview, engage in a type of “active brainstorming” with the patent examiner based on support you can readily point to in the specification. Such an approach often leads to determining more than one way to amend the claims that move prosecution forward even when no agreement was reached in the interview.

Use each interview with a respective patent examiner for a 101 rejection as a collaborative experience rather than an adversarial one… Such an approach often leads to determining more than one way to amend the claims that move prosecution forward even when no agreement was reached. 

Jennifer A. Wilson

Buchanan Ingersoll & Rooney

Jennifer Wilson is a patent agent in Buchanan’s Intellectual Property section. Her practice focuses on the representation of high-technology clients in connection with patent prosecution in the electrical and mechanical fields. She prosecutes domestic and international patent applications in a range of technologies including computer/business methods, semiconductors, computer architecture and wireless technologies. Early in her career, Jennifer served as a patent examiner for the USPTO within its electrical division, where she reviewed U.S. and international patent applications in a wide range of technologies, including transformers, capacitors, inductors, converters, integrated circuits, semiconductors, electrical switches and ignition coils.

Jennifer earned a B.S. cum laude, in Theoretical Physics from the Edinboro University of Pennsylvania. While earning her undergraduate degree, she conducted research in the Astronomy and Astrophysics Laboratory at the Pennsylvania State University, where she assisted in the development of a double pendulum for gravitation wave detectors for the LIGO (Laser Interferometer Gravitational-Wave Observatory) project. Jennifer has also conducted research in the areas of fluid dynamics at the Ohio State University where she focused on yield stress transition in gas fluidized sand.

Practice Tip: 

It is important to note that each patent eligibility rejection raises its own challenges. Although individual tips will not necessarily fit all circumstances, the following are some items I have found to be useful in starting an analysis and in presentation to examiners:

  • Verbal discussions with an Examiner can sometimes be very beneficial.  Some Examiners will be straight forward in what they (or the SPEs) are looking for in either claim amendments and arguments, so going this route first could reduce your work in the long run.
  • For each step of the Alice test, if the Examiner has improperly applied the wrong standard and has not properly followed the USPTO guidelines, you should explain what the proper standard is and present detailed arguments as to where/how the Examiner has failed to properly follow the USPTO guidelines.
  • Try to compare/equate your claims to a claim of the USPTO examples (e.g., 2019 PEG Examples 37-42 or October 2019 Examples 43-46).  Because Examiners are trained on a basis of the PEG and these USPTO examples, this can significantly increase your chances in overcoming a 101 rejection.
  • If possible, reference portions of the specification when arguing under Step 2A, Prong I.  For example, when presenting arguments against an Examiner’s assertion that the claims are directed to the “certain methods of organizing human activity” grouping of abstract ideas, argue that the claimed recitations (particularly those identified by the Examiner) do not fall within the scope of this grouping’s enumerated sub-categories (e.g., fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, and relationships or interactions between people) and point to portions of the specification for support.  When presenting arguments against an Examiner’s assertion that the claims are directed to the “mathematical concept” grouping of abstract ideas, argue that the claims are merely based on or involve a mathematical concept and that they are not directed to nor recite a mathematical concept itself (i.e., the claims are not limited to a mathematical concept). Be sure to reference portions of the specification in support.  Finally, when presenting arguments against an Examiner’s assertion that the claims are directed to a “mental process,” argue that claimed recitations (particularly those identified by the Examiner) cannot be performed mentally or with a pen and pencil as they recite technologies that cannot be performed by human mental work.  Reference portions of the specification in support.
  • Reference portions of the specification when arguing under Step 2A, Prong II that the claim recitations integrate any alleged abstract idea into a practical application.  Explain the technological problems associated with conventional systems and methods (and point to portions of the specification – typically the background section).  Then, explain how the claimed invention provides a technical solution to and improves upon the problems associated with the conventional systems/methods.  Be sure to point to specific claim recitations (i.e., meaningful recitations) and reference specific portions of the specification that discuss the technological improvements.
  • Finally, reference the PEG/update when applicable in support of your arguments.

 If possible, reference portions of the specification  [both] when arguing under Step 2A, Prong I … and under Prong II when arguing that the claim recitations integrate any alleged abstract idea into a  practical application.

Disclaimer – “The statements and views expressed are the personal opinions of the individual contributors. They are intended for general informational purposes only, and do not constitute legal advice, legal opinion, or the views of a contributor’s law firm.”

Patent Prosecution | Bridging the Gap between Experienced and New Attorneys

Bridging the gap between new and experienced patent prosecutors

Want to teach the nitty-gritty needed to write office action responses to new patent prosecution attorneys. Read on to find out if there is an easy way to do it!

The Gap in Learning Patent Prosecution | ‘School’ and ‘On the Job’

Patent attorneys are among the most highly educated professionals out there. Simply to be eligible to sit for the patent bar exam, a would-be patent attorney must have demonstrable proficiency in a field of science or engineering. Many candidates come with industry experience and/or advanced degrees. The problem is, upon conclusion of law school they, like nearly all aspiring attorneys, are likely missing the most important ingredients for success. In fact, a 2015 survey by 5 Square Research found 95% of hiring partners and senior associates who supervise new attorneys believed recently graduated law students lack key practical skills at the time of hiring. This study focused on basic competencies in drafting, transactional skills and legal research, however the gap is greater for more technical, specialized fields. How many IP courses in law school begin to get into the nitty gritty of responding to an office action, for example?

Hiring New Attorneys – A Huge Investment

New attorneys are a huge investment. One law firm strategist calculated $295k as the average cost simply to make the initial hire when recruitment costs are factored in. Large law firms typically find that it takes three to five years to break even on a new hire. The first years can be a time of friction for new attorneys as well, making it even more important that measures are taken so churn is avoided, for the wellbeing of attorneys and firms alike. While such observations have inspired calls for curriculum reforms and certification programs to address the issue, much of the onus remains on the hiring firms, with firms investing an estimated average of $19k per new associate per year, often forming specialized programs to acclimatize new cohorts to life at the firm. New technologies can provide another, often overlooked way to bridge the gap, that was not available for previous generations. Historically law schools have been seen as intertwined with liberal arts education, whose purpose was to “provide the student with certain faculties of thought and expression” designed to allow the student to continue learning long after leaving the classroom.” Law students hone their critical thinking abilities through intensive hours spent analyzing statutes and cases. Even when combined with the most comprehensive knowledge of case law, the best a young attorney can do at this point is reinvent the wheel from first principles. The true education on how to practice as an attorney comes on the job, as is recognized in European practice under the EPO, where the qualification period is not complete until an attorney has finished three years of supervised postgraduate training.

The Need for Mentorship From Experienced Attorneys

Although no such formal requirement exists under the USPTO, the situation is not so different in the United States. On day one I was given an office action to respond to for a client because it needed to be done,” recalls U.S. patent attorney William Morriss of his training fifteen years ago, “A senior attorney reviewed my work. The same is done for new associates today.” While there is no substitute for the depth of experience provided by a solid mentor, guidance can be enhanced with supplementary resources. Such resources in turn lighten the load on mentoring on senior attorneys, who are often pushed to juggle multiple internal and external responsibilities. Over the years, Mr. Morriss started collecting examples of good responses in a folder and spoke to others who did the same. Firms may put together internal examples, but such collections are resource intensive to assemble, and not always kept up to date. These resources are valuable but tend to be limited to the particular examiners and types of rejections colleagues happen to have seen. 

Patent Prosecution Software – Arguminer

Mr. Morriss, who was inspired partly by such observations to develop Arguminer, software specific to the patent prosecution cycle, has likened the on-the-job education new attorneys typically receive to induction to an artisanal guild. There is a certain irony in that we secure protection for the most cutting-edge inventions, yet are often reluctant to incorporate new innovations when it comes to our own practices. With the Arguminer software attorneys are able to get immediate feedback on the specific arguments that did or didn’t work. There is a lot going on behind the scenes. The software uses algorithms to automatically match the user’s uploaded rejection to examples with strong similarities to their situation and allows users to apply their own customized search filters as well. In the case of a brand-new associate, these examples can serve as a sort of template that can be quickly modified to match the situation at hand. More seasoned early career patent attorneys and agents, who have already achieved strong proficiency in drafting, have been able to leverage the Arguminer software to make stronger, more strategic responses on behalf of their clients and to exercise more confidence in their prosecution choices. Users may discover a competitive edge by uncovering responses prepared by a competing firm or draw upon their research to lend support to recommendations when counseling clients.

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Novice to Experienced Attorney

The Arguminer software, developed by Mr. Morriss with IP Toolworks, is one example of how technology can allow for a smoother path from novice to experienced attorney. It is no substitute for experience, but it means that new attorneys can start their careers with the working knowledge of the most successful practitioners in their field already at their fingertips. From there it is up to them to apply their own judgement, knowledge and insight to do the best job possible on the task at hand.