Office Action Responses

Inspiring Arguments to Overcome Design Choice Rejections in the Mechanical Arts

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

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.

Why Innovative Features Don’t Overcome the Prior Art

Having an examiner treat a feature which is absent from the cited art as insufficient to establish patentability can be a serious setback during patent prosecution. If the applicant amends the claim to address whatever issue was raised by the examiner (e.g., adding concreteness to claim language which the examiner stated didn’t actually require the feature due to the broadest reasonable interpretation rule), the result is that they will have spent a rejection/response cycle (and maybe even an RCE) to get where they would have been originally if the feature had simply been compared to the prior art. Alternatively, if the applicant stands firm and argues that the examiner was wrong to treat the feature as insufficient to establish patentability, they are setting themselves up for an appeal of what may have been an easy allowance if whatever reason the examiner gave for treating the feature as insufficient had been addressed or avoided. In either case, dealing with arguments about why a feature which isn’t part of the prior art should or shouldn’t be sufficient for patentability increases costs, delays prosecution, and may also reduce the ultimate scope of protection as a result of amendment or argument-based estoppels.

To determine how to anticipate and avoid these issues, I did a study identifying the reasons examiners used most often when arguing that features which are absent from the cited art aren’t sufficient to establish patentability. In this study, I examined recent (i.e., from 2019-2022) obviousness rejections from the database which powers IP Toolworks’ Arguminer software. I used natural language processing and clustering software to identify keywords and n-grams that were cited repeatedly by examiners in their rejections. I then manually correlated the most common keywords, n-grams and citations with specific doctrines used to treat features as insufficient to establish patentability, such as intended use or nonfunctional descriptive material. Finally, I applied these correlations on a technology center by technology center basis, so that the study could identify whether, and how, the doctrines by examiners differed between types of innovation.

The study showed that drafting claims to reduce the risk that a feature which is absent from the prior art will be treated as insufficient to establish patentability requires a flexible approach which accounts for different doctrines which are likely to be applied during examination of different inventions. For example, while the most common argument overall for why a feature which was absent from the cited art wasn’t sufficient to establish patentability was that the feature was merely a recitation of intended use. However, for chemical inventions, the most common reason for treating a feature which was absent from the cited art as insufficient to establish patentability was that it was simply a matter of routine optimization. Similarly, while the argument that a limitation should not be given patentable weight because it recited nonfunctional descriptive material wasn’t in the top ten arguments overall, it was the third most commonly used argument for inventions in technology center 3600 (Transportation, Electronic Commerce, Construction, Agriculture, Licensing and Review). The most common doctrines used to treat features that are absent from the cited art as insufficient to establish patentability, and how those differed from technology center to technology center, are shown below:

Technology Center	Top Argument	Second Argument	Third Argument
1600 (Biotechnology and Organic)	Routine Optimization	Intended Use	Obvious to Try
1700 (Chemical and Materials Engineering)	Intended Use	Routine Optimization	Known Suitability for Purpose
2100 (Computer Architecture Software and Information Security)	Broadest Reasonable Interpretation	Intended Use	Obvious to Try
2400 (Computer Networks, Multiplex, Cable and Cryptography/Security)	Broadest Reasonable Interpretation	Intended Use	Obvious to Try
2600 (Communications)	Broadest Reasonable Interpretation	Intended Use	Obvious to Try
2800 (Semiconductors, Electrical and Optical Systems and Components)	Intended Use	Routine Optimization	Mere Change of Shape
3600 (Transportation, Electronic Commerce, Construction, Agriculture, Licensing and Review)	Intended Use	Broadest Reasonable Interpretation	Nonfunctional Descriptive Material
3700 (Mechanical Engineering, Manufacturing and Products)	Intended Use	Mere Change of Shape	Obvious to Try

Ultimately, there is no magic bullet to ensure that a feature (assuming it is absent from the cited art) will be sufficient to establish non-obviousness. However, by using data showing both common practices that are broadly applicable across the patent office, as well as idiosyncrasies associated with how the patent office treats particular types of invention, it is possible to identify doctrines which are most likely to be cited in a particular case, so that the claims for that case can be drafted to anticipate those objections and avoid them before they even come up.

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.”

obviousness Office Action Responses Office Actions Patent Prosecution prior art

RCEconomics

One of the things that I think has significantly improved both my quality of life and my success as a patent prosecutor is front-loading patent applications to avoid interminable cycles of RCEs. I wrote about this previously in Get Off the RCE Merry Go Round, and I continue to stand by that article as excellent practical advice. However, I recently had an interaction which has led me to revisit the question of RCEs and consider whether there are scenarios where front-loading an application to avoid RCEs may not make sense.

The issue which leads me to revisit the RCE question is economics: specifically whether avoiding RCEs became unfeasible when working with high-volume filers who set a limited budget for each office action response. An attorney I was corresponding with told me that in these cases, he found the budget was generally set too low to present arguments on all potential points of novelty in the initial office action response. As a result, it wasn’t unusual to file one, two, or even three RCEs, to incrementally address rejections as they were made until you ultimately found something that both the examiner and the client were happy with.

My intuition is that the economic argument for RCEs doesn’t make sense. Focusing purely on minimizing costs, filing a second (or third!) RCE seems counter-productive, since the cost for a second RCE is greater than the cost for simply filing a continuation with whatever amendments you would have included in the RCE. Additionally, even ignoring a continuation as an alternative to an RCE, each rejection-response cycle has a cost. Increasing the number of rejection-response cycles thus can be expected to increase the total cost of prosecution. However, intuition isn’t a particularly reliable guide, and the entities this attorney was talking about were quite sophisticated. I therefore felt it was worth actually working out the financial impact of incremental prosecution to determine if the economic argument really is a valid reason for an RCE.

To evaluate the financial impact of incremental prosecution relative to front-loading arguments, I created a simplified model of prosecution using the following assumptions:

An application has a fixed number of points of novelty.
Prosecution consists of presenting the points of novelty until the application is allowed or no points of novelty remain.
The cost to present a point of novelty is constant, regardless of whether the points are presented one at a time (as in incremental prosecution) or all at once (as in front-loading).
Every other office action is final, and so every other response requires submission of an RCE.

I also set the number of points of novelty at 6, since the other attorney said that incremental prosecution could lead to three RCEs, and if each response had a single point of novelty the lowest number of points of novelty which would require 3 RCEs is 6.

Formally, this simplified model allows prosecution to be represented by a set of equations,[1] but even without formal analysis, the simplified prosecution model makes clear that neither incremental prosecution nor front loading is a strictly dominant strategy (again, considering only direct costs of prosecution). In cases where it is only necessary to present a few points of novelty before an application is allowed, the cost of incremental prosecution is lower, since front-loading involves making more arguments than are necessary. On the other hand, as the number of rounds of prosecution increases, the advantage of incremental prosecution in terms of cost for presenting points of novelty decreases, and the cost for RCEs begins to dominate. For applications which have three or fewer rounds of prosecution (and therefore no more than one RCE), the incremental approach may still be less expensive, since the fee for a single front-loaded office action response *may* exceed the expected cost of 1-3 aggressively capped incremental responses by more than the cost of a single RCE (i.e., by more than $1,360). However, if an application requires two or more RCEs under the incremental approach, it almost certainly would have been cheaper to front-load prosecution. Based on my correspondence with the other attorney, I would say that it is not at all uncommon for applications with aggressively capped office action response budgets to have two or more RCEs, meaning that the incremental strategy which leads to those RCEs is likely to be self-defeating in the long run.

Ultimately, the decision of whether to file an RCE (or, more accurately, to adopt a strategy which is likely to lead to an RCE) will depend on more than just cost considerations. For example, the similarity of the prior art to the claimed invention, the importance of preserving patent term, and the likelihood of success on appeal are all factors that will play a role. However, my feeling is that the non-financial considerations will almost always come down in favor of avoiding RCEs. Additionally, given the analysis above, I think that even a purely cost based decision-making process should generally avoid RCEs, even though doing so may require paying more for individual responses.

[1] For the interested reader, those equations are:

T_I = N_R * C_N + $1,360 * N_R/(|N_R-1| + 1) + $2,000 * (Max(0,(N_R/2 – 1)) – (N_R%2)/2)

T_F = CN * 6

In which

T_I is the total cost to a large entity for prosecuting an application using incremental prosecution

TF is the total cost to a large entity for prosecuting an application using front loading

N_R: Number of rounds of prosecution, which I assumed is capped at six, since the application would theoretically either be allowed or abandoned after all points of novelty were presented

C_N: Cost to present a point of novelty

Office Action Responses Patent Prosecution

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.

Originally published on IPWatchdog.

Alice Rejections Gaming Molecular Biology Office Action Responses

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.

Molecular Biology Office Action Responses Office Actions in Gaming

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 MPEP	Arguminer
Foundational Knowledge	Teaches legal Rules & Procedures	Yes	No
	Sample Prosecution Arguments	Yes	Yes
Application	File Wrapper Search	No	Yes
	Rejection Specific Arguments	No	Yes
	Identifies Successful Responses	No	Yes
Strategy	Examples of Examiner Behavior	No	Yes

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).

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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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:

Delegate everything you can
Recognize the things that can’t be delegated
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.

#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.

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3 Anti Alice Responses to Overcome §101 Rejections in Molecular Biology

Patent lawyers love the overused quote from Diamond v. Chakrabarty, “everything under the sun invented by man.” Forty years later, this remains good law in most situations. However, Mayo v. Prometheus and AMP v. Myriad Genetics went on to make clear that not everything under the sun is patentable when it comes to biology. Most recently, Alice, and the associated 2019 PEG have come to dominate how examiners and attorneys approach subject matter eligibility arguments, even when it comes to inventions within the life sciences.

Even with the most conscientious claim drafting, rejections under §101 are not unlikely when the claimed subject matter centers on organic molecules or other “products of nature.” Given the dynamic state of legal arguments in this field, it can be particularly helpful to look at successful responses prepared by other attorneys facing similar rejections.

If you are dealing with §101 rejections involving molecular biology, or other technology classes where “natural phenomena” are frequently cited, you may want to consider taking a prong, (or better, two), from the winning arguments we’ve selected, below:

Molecules Created Through Human Efforts Can Lay a Path

If the subject matter is artificial, it does not fall under a judicially-created exception to §101 and, therefore, constitutes patent-eligible subject matter.

In biology cases, the examiners typically rely on the “natural phenomena” judicial exception in their §101 rejections. The Patent Office does not want to be responsible for issuing a patent on a biological matter that occurs naturally. This would potentially turn every living organism into an infringer.

To overcome this rejection under the Alice test and the 2019 examination guidelines, you must show the subject matter does not fall into the “natural phenomena” category or the claims include substantially more than a natural phenomenon. Where the claimed subject matter is artificial and the hand of an engineer or scientist is needed to produce it, the invention is legitimately the product of human ingenuity and human effort must be made to infringe the claims.

This argument succeeded in an application for a “Vesicular Linker and Uses Thereof in Nucleic Acid Library Construction and Sequencing” This case was filed in 2017 and issued in 2020.

The examiner issued a rejection under §101 citing the judicial exception for “natural phenomena.” In response, the applicant amended the claims to clarify the claimed kit did not contain a naturally occurring molecule, but rather an engineered product.

With respect to claim 3 as currently amended, the claim now recites “a first primer, having the same sequence as at least a portion of the first strand of the vesicular non-paired region of the oligonucleotide vesicular adaptor” and “a second primer, specifically paring with the second strand of the vesicular non-paired region of the oligonucleotide vesicular adaptor”. Thus, it would be appreciated by the one skilled in the art that the structures of the first primer and the second primer tightly depend on the oligonucleotide vesicular adaptor which is not a naturally occurring product and is instead is a novel and non-obvious presentation for constructing a nucleic acid library and of which specific nucleotide sequences are artificially selected in accordance with actual needs.

Specifically, the claims recited an oligonucleotide vesicular adaptor that connected to a first primer at one location and a second primer at another location. The first primer and second primer are molecules that can occur in nature. But the applicant argued the claimed kit was not a natural phenomenon for two reasons.

The oligonucleotide vesicular adaptor does not occur naturally. Rather, the inventors developed this molecule.
Although the molecules that make up the first primer and second primer occur in nature, a scientist must select and artificially design the first primer and second primer claimed in the application based on the application of the invention. As a result, the primers were not randomly assembled, as would occur in nature, but deliberately created, as would occur in an engineered molecule.

The examiner found these claim elements established that the claimed molecule could not occur naturally. The examiner withdrew the §101 rejection and allowed the claims.

The lesson drawn from this case is that your claims can include molecules that may occur in nature. But make sure that your claims either include non-natural molecules with them or make clear that the molecules are not the naturally occurring variety.

Kudos to Z. Peter Sawicki from Westman, Champlin & Koehler for exemplary work in drafting winning office action responses!

A Combination of Humanized and Natural Molecules Can Save the Day

This argument is a close corollary of the first argument. If the subject matter contains molecules that are arguably naturally occurring, you may be able to argue that the combination cannot occur in nature. This moves you out of the judicial exceptions for “products of nature” and “natural phenomena” and allows you to escape the second prong of the Alice test.

Avoiding Alice’s second prong can substantially improve your chances of allowance. The test’s second prong, which asks whether the invention includes substantially more than the ineligible subject matter, is highly subjective. Therefore, qualifying under the first prong should be your first, strongest, and best thought-out argument.

This argument was used in an application for “Humanized Antibodies” This application was filed in 2016 and issued in 2020. Prior to allowance, the applicant received a rejection under §101 on the ground that the claimed invention comprised products of nature.

The antibody or antigen-binding fragment thereof of the pending claims exhibit “markedly different characteristics” as compared to a naturally occurring counterpart in at least two ways. First, one of ordinary skill in the art would understand that the non-human donor antibody is itself “man-made” … Second, … the antibody, or antigen-binding fragment thereof of claim 1, and those dependent thereon, is eligible subject matter because it exhibits structurally distinct characteristics as compared to a naturally occurring counterpart by comprising both non-human donor and human donor residues, introduced into the claimed antibody by the “hand of man.”

In response, the applicant amended the claims to clarify that the claimed invention included a humanized antibody from a non-human donor. This gave the applicant three strong arguments in the office action response:

The humanized antibody behaved differently from naturally occurring antibodies. It did not behave like the non-human donor antibody because it had been humanized. And it did not behave like a human antibody because of its non-human donor origins.
The humanized antibody was not naturally occurring because artificial processes were needed to humanize a non-human donor antibody.
The final product, a humanized antibody, could not occur in nature because it contained both human and non-human residues.

The examiner allowed the claims. Although the examiner did not identify which of the arguments ultimately persuaded the examiner to allow the claims, all three of the arguments are powerful.

The lesson to be drawn from this case is that your chances for allowance improve if you can claim and argue for the non-natural creation, structure, and behavior of the claimed molecule.

Kudos to Elizabeth M. Rohlfs from Pfizer Inc for exemplary work in drafting winning office action responses!

A Real-World Application Can Carry You Through

Although you would prefer to satisfy the Alice test’s first prong rather than battling over the more subjective second prong, you should not limit your arguments to the first prong. If an examiner disagrees with your arguments under the first prong, you will need to present something under the second prong to try to satisfy the Alice test.

This occurred in an application for “Predicting the Ability of Atlantic Salmon to Utilize Dietary Pigment Based on the Determination of Polymorphisms” This application was filed in 2016 and allowed in 2020, although it has not yet issued as a patent because the applicant has not paid the issue fee.

The application claimed a process for sequencing the genes of an Atlantic salmon to detect cytosine at a particular location in the gene sequence. The examiner rejected these claims as directed to a natural phenomenon.

[A]lthough nature-based product limitations are recited by claim 15, analysis of the claim as a whole indicates that claim 15 is focused on a process of detecting the presence of a specific nucleic acid sequence in a sample from a salmon, and is not focused on the nature-based product per se. Id. at 11. For example, as amended herein, claim 15 recites, in part:
a) obtaining a nucleic acid sample from a salmon; and
b) assaying the nucleic acid sample to detect a presence of one or more alleles in the nucleic acid sample;
c) detecting the presence of a cytosine at position 36 in SEQ ID NO: 14.

In response the applicant amended the claims and presented two arguments:

Under the first prong of the Alice test, the applicant argued that the claims were not directed to a natural phenomenon. Specifically, the applicant pointed out that the process of obtaining a DNA sample from the fish, sequencing it, and looking for a particular gene was an artificial process even though it worked on a naturally occurring molecule. As stated by the applicant, the claims were focused on the process of detecting the naturally occurring product and not the naturally occurring product per se.
Under the second prong of the Alice test, the applicant argued that the claims were not merely directed to detecting the naturally occurring product. Instead, the results of the process were used to guide the selective breeding of the fish tested so that the desired characteristic was passed to the offspring. Thus, the claims recited “substantially more” than the process of detecting the naturally occurring product. Specifically, the test results had a real-world use in improving fish husbandry.

The examiner allowed the claims. But the examiner did not identify which of these arguments was found persuasive.

The takeaway from this case is that you should always present arguments on both prongs of the Alice test. In this case, while each argument was powerful independently. the applicant took measures to avoid prolonged prosecution, by presenting both sets of arguments in the office action response.

Kudos to Bradley W. Thomas from Shook, Hardy & Bacon LLP for exemplary work in drafting winning office action responses!

Overcoming §101 Rejections in Molecular Biology Cases

Although some patent practitioners might view Chakrabarty as dated, the “made by man” phrase remains one of the most powerful arguments you have to secure allowance of artificially-created biological inventions.

But you should not limit yourself to “hand of man” arguments. The chances for allowance increase as you present more ways that the claimed molecule differs from its natural counterparts. Look for specific differences in structure and behavior between the claimed molecule and naturally occurring molecules and recite these differences in the claims.

Finally, do not ignore the second prong of the Alice test. Even if you feel optimistic about your arguments that the claims do not embody a natural phenomenon or a product of nature, an examiner might disagree. As a result, you should also present arguments that the claimed invention includes substantially more than a natural phenomenon or product of nature. You can do this by reciting in the claims a real-world application for the invention.

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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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:

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.
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!

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