Inspiring Arguments to Overcome Design Choice Rejections on Chemical Apparatus Inventions

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

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

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

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

Be on the Lookout for Impermissible Hindsight

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

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

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

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

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

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

 U.S. Patent No. 10,926,239

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

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

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

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

Design Choices Must be Choices Made Among Equals

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

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

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

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

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

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

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

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

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

KSR’s Rationale Requirement to Overcome Obviousness

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

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

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

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

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

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

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

Design Choice in Art Unit 1770

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

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

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

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

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.”

How to Write a Winning Patent Office Action Response | USPTO

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

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

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

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

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

Appearance Matters

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

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

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

Reading is Fundamental

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

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

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

Think Before You Write

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

IP Toolworks Demo

Interviewing the Case

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

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

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

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

Amending the Claims

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

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

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

Developing Your Arguments

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

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

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

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

Variance in Examiner Behavior

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

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

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

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

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

Successful Patent Prosecution is Not a Gamble

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

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

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

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

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

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

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.”

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.

  1. The oligonucleotide vesicular adaptor does not occur naturally. Rather, the inventors developed this molecule.
  2. 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!

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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:

  1. 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.
  2. The humanized antibody was not naturally occurring because artificial processes were needed to humanize a non-human donor antibody.
  3. 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:

  1. 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.
  2. 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.

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.”