In re Stanford: Ruined by a Processor and a Memory

“The Federal Circuit’s focus on an aspect of the Stanford application which no one could (or did) argue was a protectable innovation not only damaged Stanford, it also squandered an opportunity to bring clarity to an area of law that desperately needs it.”

Computer boilerplate – such as including “a processor and a memory” in claims – is commonplace in patent applications. However, the recent case of In re Stanford shows that this can be a double-edged sword, having the potential to both undermine an application and to ruin an opinion that could otherwise have shed light on several of the thorniest open questions in patent eligibility jurisprudence. Skeptical that such a common practice could be so counterproductive? Read on.

Language with No Benefit

From the outset, the invention in Stanford is not one where computer components should have had any particular significance. The invention was not a new type of computer, or a new component, such as an innovative processor or memory. Instead, it was (at least according to Stanford) a significant advance in the field of genomics. Many types of analysis required for genome interpretation are dependent on haplotype phasing – i.e., determining whether a gene was inherited from a person’s father or mother. The Stanford invention used a particular type of model with particular states – a hidden Markov model with inheritance, compression fixed error, and MIE-rich fixed error states – to perform haplotype phasing. This significantly increased the resolution of haplotype phasing, moving from 80% in the prior art to 97.9% for phasing using the Stanford invention.

Despite the fact that the Stanford invention was not, and did not purport to be, an improved or a novel computer, both the claims and description of the Stanford application included computer components. The description explained that “the present invention relates to methods, techniques, and algorithms that are intended to be implemented in a digital computer system” (application 13/445,925, paragraph 56), before saying that “such a digital computer or embedded device is well-known in the art” (id.) and providing a description of a generic computer system that is repeated in a variety of other Stanford patents and applications (e.g., U.S. 8,966,413, U.S. 2013/0073329). The claims included similar generic computer language, with limitations requiring various steps of the innovative haplotype phasing method to be performed “on a computer system comprising a processor and a memory” or “using a computer system comprising a processor and a memory” being added to the claims in response to a rejection under 35 U.S.C. § 101.

From Ineffective to Detrimental

Stanford does not appear to have benefitted from the generic computer language in their application and, to the extent that language had any impact at all, the impact appears to have been negative. The addition of computer language to the claims did not convince the examiner to withdraw the 101 rejections. Instead, the examiner stated that “[t]here is no limitation in the claims that the claimed computer program or computer uses other than a generic computer,” maintained the rejection and made the successive office action final. (Office Action of 7-9-2015 on application 13/445,925). On appeal, the computer language appears to have gone from having no effect to being actively detrimental. The patent trial and appeal board explicitly referenced the application’s generic computer system description when explaining that “the claimed method does not teach a technical improvement in a computer processor, but rather use the computer as a tool to improve data analysis.” (Ex parte Dewey, Appeal No. 2018-005489, on application 13/445,925 (PTAB 2019) at 11). Similarly, the Federal Circuit specifically noted the claims’ recitation of a “processor” and a “memory” in support of its statement that “it is hard to imagine a patent than that recites hardware limitations in more generic terms than the terms employed in claim 1.” (In re Stanford, Case No. 20-1012 (Fed. Cir. 2021) at 11). Unsurprisingly, the attention paid to aspects of its application which were admittedly not innovative did not bode well for Stanford, and its appeals were unsuccessful at both the Patent Trial and Appeal Board (PTAB) and the Federal Circuit.

A Missed Opportunity for Clarity 

The attention paid to the non-innovative aspects of Stanford’s technology also made the Federal Circuit’s opinion much less useful in terms of clarifying the proper application of section 101. Looking purely at the law, it would have been reasonable to expect the Federal Circuit to have found the Stanford claims eligible. In McRO, Inc. v. Bandai Namco Games America, Inc., the Federal Circuit had already dealt with the eligibility of a method which used an assertedly innovative computational tool to improve an inherently computerized process, and found that claims which recited the tool with sufficient specificity were not directed to an abstract idea. Additionally, McRO clearly undercut the reasoning used by the PTAB to find the Stanford claims ineligible – i.e., that they recited steps that could be performed in the mind or recited mathematical concepts – since the McRO claims had also recited mathematical concepts (i.e., determining morph weight sets based on phoneme subsequence timing) and improved a process that not only could be, but actually had been performed in the human mind (i.e., synchronizing character and lip models in computer animation). If the Federal Circuit was going to find Stanford’s claims ineligible, it had the opportunity to significantly clarify the rules of subject matter eligibility by clearly distinguishing McRO. It did not. Instead, its only mention of McRO was to note that the PTAB had distinguished that case because the McRO claims “improve ‘the computer animation process itself.’”  In re Stanford, at 6. It then stated that “we are not persuaded that claim 1 is not directed to an abstract mathematical calculation” and “we are not persuaded that the process is an improved technological process.” (id. at 10). No explanation whatsoever was provided for why an improved haplotype phasing process was not “an improved technological process” while an improved computer animation process was. Similarly, no explanation was provided for why Stanford was doomed for reciting mathematical calculations while McRO was not. Indeed, it appears that the most important factor for the Federal Circuit was that the claims recited “a processor and a memory” without purporting to improve them, since it saw fit to explicitly state that:

Notably, claim 1 neither requires nor results in, a specialized computer or a computer with a specialized memory or processor. Indeed, it is hard to imagine a patent claim that recites hardware limitations in more generic terms than the terms employed by claim 1.

Considerations Going Forward

The Federal Circuit’s focus on an aspect of the Stanford application which no one could (or did) argue was a protectable innovation not only damaged Stanford, it also squandered an opportunity to bring clarity to an area of law that desperately needs it. More ominously, it also raised the question of whether the nigh-ubiquitous practice of including form computer language may need to be rethought, since if the Federal Circuit puts so much weight on “a processor and a memory” in claims which recite those terms, maybe it would be better to omit them all together to avoid falling into the trap of having to assert an improvement to the processor and the memory, rather than being able to focus on the actual invention an application is intended to protect.

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.”

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

Obviousness

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.’”).

Conclusion

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 uspto.gov).  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.”

Three Steps To Achieve Effective Delegation | The Gamechangers

If you want to do a few small things right, do them yourself. If you want to do great things and make a big impact, learn to delegate.”  

– John C. Maxwell

Do you ever feel as if your to-do list is never-ending or you are always short of time? In a survey conducted by the Institute for Corporate Productivity (i4cp), it was revealed that 46% of companies have a high level of concern about their workers’ delegation skills. Delegation of work takes a great deal of unlearning, particularly if you are of the habit of doing everything yourself. You will need to let go of the adage, “If you want something done right, you must do it yourself.”

At some point in your career, you will undoubtedly have achieved enough experience in your practice to have younger attorneys working under your guidance. When the time comes, you will have to learn a whole new set of skills to pass on the torch in a way that is productive both for them and for you. Delegation of work might not be easy but when done well it has tremendous value both in maximizing the limited hours you have available in a day and in allowing younger attorneys you might be assigning tasks to to learn the tricks of the trade.

As challenging as delegation can be, these three steps will help you delegate effectively:

  1. Delegate everything you can
  2. Recognize the things that can’t be delegated
  3. Change your ‘cannots’ into ‘cans’

#1. Delegate Everything You Can

Try to delegate every task which can be delegated to your team. If you don’t delegate, you’ll always be overburdened, putting you at risk of missed deadlines and slippages in work.

Once you start delegating, you’ll soon realize that it:

  • Reduces your mental load
  • Saves time
  • Improves client relations

For example, you don’t need to deal with invoice disputes yourself. If your client thinks that your billing hours are too high, let one of your (less senior) team members tackle the situation.

The delegation will have the added benefit of freeing up your mind and time to better handle the more important tasks on your plate, resulting in a job well done.

#2. Recognize the Things That Can’t be Delegated

You need to know what you can and cannot delegate. If you are anything like me, you won’t let anything get out of the door on your project, unless you are completely comfortable with it. If you delegate work to a team member who cannot handle the particular task, you’ll end up doing it yourself, which is an inefficient use of everybody’s time. Often, the task will end up getting done twice, as it is easier to redo something from scratch than to fix somebody else’s shoddy job.

To avoid this situation, you need to recognize which tasks can be delegated to your team and which you have to handle yourself. While there will always be some level of rework when delegating tasks, especially when you are training someone, it is important to consider the strengths of your team members when making assignments. You don’t want to delegate a task that your team member might still be too inexperienced to handle. Thus, the key is to delegate all you can, but to also recognize what you cannot delegate.

IP Toolworks Demo

#3. Change Your ‘Cannots’ Into ‘Cans’ 

The final step to effective delegation involves a special alchemy: transforming your ‘cannots’ into ‘cans’. To achieve this, a few things are essential:

Recognize the Strengths of Your Team Members

Knowing the strengths and abilities of your team members is key. For example, one colleague might be good at drafting patent applications, while another might be good at analyzing office actions in order to draft a meticulous response. Acknowledging these strengths will make your job reviewing their work easier and faster. Everyone wants their team to do a spectacular job—because, let’s be honest, at the end of the day, you are still accountable for the work done by your team. Therefore, learning what to delegate to whom is an art, which you need to master as a leader.

Train Your Team Members to Overcome Weaknesses

You also need to recognize the areas where your your team members might be less capable. Once these areas are identified, training can be provided to turn weaknesses into strengths. It is essential to build support for people working on the tasks you assign. For example, you might provide a library of template communications, to give your team members examples of how to respond to a particular kind of communication from the USPTO. This will make it much easier for a newer attorney to put together the expected response.

Provide The Right Kind Of Support At The Right Time

Make sure that while delegating, you provide your team members with the support they need when they need it. For example, if you have tasked a colleague with analyzing an office action and drafting a response, you must explain what to look for and how issues can be tackled. You might want to point out key areas to focus on and refer them to your library of office action responses for additional guidance.

As a matter of habit, during the last fifteen years of my career, I put together a document containing examples of successful office action responses, to help with future responses. It was, in effect, a small library of office action responses that I could use in my own practice and share with colleagues I might be assigning work to. Eventually, I thought, why not build a library of office action responses that encompasses the work of other attorneys as well? This is when I put together the Arguminer software. It allows you to upload your office action and will analyze various parameters within it to match it with relevant responses other attorneys filed. It looks something like this:

You can customize the results by selecting different parameters, such as successful responses to office actions by the same examiner. You might want to show your team member the arguments used in similar office responses, which will have higher chances of succeeding.

Getting a younger attorney to get the same results as you would, is good delegation, which is exactly what this software helps to achieve.

Takeaway:

The more you delegate, the more trust you place in your team members. It boosts their confidence, helps in improving the overall team effort, and gives you time to focus on more important tasks.

Practicing good delegation also gives you a breather to concentrate on the things that are important to you. This is a special category of “non-delegable duties” that for me includes making time each night to spend with my one-year-old daughter before bed. There are some things I don’t assign out, even on my busiest days.

 I believe that the more you can outsource, automate and delegate out, the more time you have for your family and loved ones.

Good luck! I hope you can put Arguminer to use, to effectively delegate and train the young attorneys working with you. 

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.”

5 Tips to Having a Good Patent Examiner Interview

Interviewing with the patent examiner can provide many benefits to your clients. Oral communication is much more efficient than written communication. As a result, you can often cover more ground in a 30-minute interview than you can in months of prosecution.

Moreover, during a patent examiner interview, you get immediate feedback from the examiner. Listening to this feedback will help you hone your arguments on the fly. You can throw out arguments that have no traction with examiners while focusing on those that appeal to them.

You can also get a better feel for the examiner’s concerns. The MPEP gives examiners form paragraphs to use in office actions. These often do not illuminate the examiner’s specific problems with the invention or the claim language. Through careful questioning and active listening, you and the examiner can focus on the exact problems at issue in the office action.

Your conversation with the examiner might also yield information you might not otherwise obtain. For example, you might discover that the examiner misunderstood your claims or misinterpreted the prior art, which you could then work to clarify. Alternatively , the interview might reveal that the examiner had  a clear understanding of your claims and the prior art, but is unwilling to budge from his or her position no matter what arguments you present. You would go on to address these different outcomes through two very different courses of action. You can determine whether further prosecution before the examiner is worthwhile or appeal is necessary simply by talking to the examiner.

Every patent attorney uses a different strategy for conducting examiner interviews. Here is a countdown of five tips to consider as you develop your interview strategy.

Tip #5: Figure Out What You’re Going to Say

When you draft an office action response, you spend time sharpening your amendments and arguments. You should take the same approach when you prepare for a patent examiner interview.

Examiners will usually only grant one interview, so you should not waste your opportunity. More importantly, under the MPEP, interviews for “sounding out” the examiner are prohibited. When you and your client discuss the possibility of interviewing the case, you should have specific issues you want to discuss with the examiner and a clear goal.

You may have heard or read anecdotes about patent lawyers who get good outcomes while improvising during interviews. This strategy is probably not the best use of your time, the examiner’s time, and your client’s resources. Instead, have a game plan for what you will say and how you will say it.

Tip #4: Get the Right People in the Interview

There is nothing more frustrating than preparing your amendments, arguing your case to the patent examiner during an interview and reaching an agreement with the patent examiner about the amendments, only to have the examiner pull the rug from under you with another office action. Or, worse yet, to come out of an interview agreeing with the examiner, only to have your client overrule it.

Such misunderstandings happen because the interview lacked the people critical to the decision-making process.

On the patent office side, the necessity of on-the-job training for new examiners results in layers of checks. At a minimum, you should politely inquire if a primary examiner should attend the interview when you schedule it. Just beware that some examiners might take offense, so approach delicately.

On your side, you must make a prudent and deliberate decision whether to include the inventor and a representative for your client (if the inventor is not your client). Some advantages of having the inventor and client include:

  • Someone on your side can immediately approve the examiner’s amendments
  • Your client hears what happened rather than receiving a summary from you
  • The inventor can explain the invention and the prior art
  • Your client feels involved

Conversely, having your client in the interview poses some risks, including:

  • Your client can inadvertently make admissions adverse to your case
  • The inventor might take the examiner’s rejections personally, and tensions may rise
  • The client might waste your interview time talking about irrelevant issues

Having the right people in the interview on both sides can facilitate an agreement, but only if they can work collaboratively and not start a confrontation. Remember that a patent examiner interview is not an adversarial process. If the inventor and client attend, make sure they understand that persuasion, not confrontation, during the interview will likely be the easiest path to allowance.

Tip #3: Make an Agenda

The interview request form and patent examiner interview best practices suggest that you identify the issues you want to discuss during the interview. You should consider going beyond this by creating an agenda to will lay out each topic you wish to discuss with the examiner.

Many examiners ask for an agenda when you schedule the interview. You could share your complete agenda with the examiner, or keep your detailed agenda for yourself and instead provide an outline.

In either case, providing the patent examiner with an agenda will help you in a few ways:

  • The examiner has a roadmap, so you can move from issue to issue efficiently
  • You make sure you cover all the points you want to raise without leaving anything out
  • The examiner has a preview of your interview topics, allowing them to  prepare to respond to, or even concede specific points, so that the interview proceeds more smoothly

When you create your agenda, you should also consider including proposed amendments, as this will give the examiner something concrete to consider. Rather than talking in abstractions about the claims, you can point to specific proposed language for discussion. Providing the examiner with your proposed revisions further demonstrates your willingness to work with him or her to reach allowance, and invites the examiner to propose language as well.

The last two points on your agenda can then consist of:

  1. A discussion about whether the proposed amendments will result in an allowance of the case. This is also an opportunity to record proposed amendments that could lead to allowance.
  2. A discussion of whether there are any additional issues, arguments, or amendments to be addressed 

Remember, examiners work with hundreds of cases and thousands of claims every year. Diligent examiners often have suggestions that not only help you secure allowance, but improve your patent application.

You should approach the interview as a two-way communication rather than simply your opportunity to present your case to the examiner. In at least some cases, the examiner will help you on your path to allowance. Most importantly, when an examiner makes a suggestion, and you incorporate it into the claims, the examiner is much more likely to agree that your amendment moves the case forward.

Tip #2: Begin Conceptually

At the beginning of your patent examiner interview, try to identify the broad issues in the office action. One way to do this is to have a conceptual discussion about the prior art and the invention.

Summarize your understanding of the prior art and see if the examiner’s understanding matches. If the examiner has a different interpretation of the prior art, you may be able to address at least some grounds for rejection by persuading the examiner of your interpretation.

Keep in mind that because examiners have an enormous workload, they may not always have your client’s invention clear in their heads when you start an interview. Discussing the concept behind the invention can help get the examiner in the right mindset for the rest of the interview.

Tip #1: Close Concretely

Have a goal in mind before you start the interview. Try to close in a way that makes clear whether you reached your goal. Remember, closing concretely does not necessarily mean that you always win. Rather, it means that when you close, you know whether you reached an agreement and, which direction you and your client should go, if you have not.

For example, imagine  you have a prior art rejection under §102 that you believe your proposed amendments should successfully overcome. Several outcomes are in fact possible at the end of the interview:

  • The examiner agrees that your amendments overcome the rejection.
  • The examiner agrees the invention is distinguishable but disagrees that your amended claims distinguish over the reference.
  • The examiner agrees your amendments overcome a §102 rejection but switches to a §103 rejection.
  • The examiner believes the invention is not novel given the prior art. No claim amendments can overcome the rejection.

Each of these outcomes is acceptable. You know where you stand with the examiner, and you can advise your client about what to do next.

What you want to avoid is ending the interview without a clear understanding of where the case stands. It may take some cajoling to pin the examiner down, but try to reach a concrete conclusion.

A “Good” Patent Examiner Interview

A good interview moves your case forward. That movement could be an agreement or just a better understanding of where your case stands. You can use interviews to benefit your clients and keep their cases progressing by:

  • having a plan 
  • getting the right people in the interview 
  • following an agenda
  • opening conceptually
  • closing concretely 

Keep leveling up your patent prosecution practice! Take a look at 3 Obvious Mistakes to Avoid when Responding to Office Actions!

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.”

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.

IP Toolworks Demo

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.