Valerie K. Friedrich The JL Salazar Law Firm, PLLC [email protected] Pitfall 1: Not traversing EVERYTHING in a substantive rejection ◦ Why? Ex Parte Frye, 94 U.S.P.Q.2d 1072, 2010 WL 889747 (BPAI 2010) (examiner findings are given no deference on appeal if challenged). So challenge away… Tip 1A: ◦ Don’t assume the Examiner has properly identified a reference under § 102 The priority date for a reference varies depending upon the particular subpart of § 102 that is being cited. Examiners are human and therefore, may err. Jurisprudence makes it easy to err – E.g., In re Giacomini , No. 2009-1400 (Fed. Cir. July 7, 2010). In re Giacomini – Secret prior art under § 102(e)(2) ◦ §102(e)(2) bars patentability if the invention was described in . . . a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent… ◦ Does the § 102(e) priority date for prior art reach back to the filing date of the provisional application? Yes. ◦ But doesn’t apply for foreign filings. (See, In re Hilmer, 359 F.2d 859 (CCPA 1966) (a U.S. application’s § 102(e) priority date does not extend to its §119 foreign filing date). ◦ Making it harder for Examiners to understand how to properly make § 102(e) rejections. Tip 1A restated and expanded: ◦ Check that the Examiner has properly identified a reference under the correct subsection of § 102 ◦ Respond to the cited subsection of § 102 by explaining how it does not apply. Respond to any other subsection/issue that could apply – preempt another rejection. In re Giacomini – Corollary ◦ §102(e)(2) dates back to the provisional filing date only if the provisional application adequately discloses the subsequently patented invention as required under § 112, 1st ¶. “An important limitation is that the provisional application must provide written description support for the claimed invention.” ◦ Giacomini never argued that the provisional application failed to meet those requirements. In re Giacomini – Corollary ◦ Tip 1B: Look at the provisional and assert, if appropriate, that the provisional did not meet § 112, 1st ¶ requirements. If successful. . . the § 102(e) date is the filing date of the nonprovisional application. Tip 1C: ◦ Don’t accept an Examiner’s assertion of “common knowledge” or “well known” to fill in the prior art gap. MPEP 2144.03 states: “Official notice without documentary evidence to support an examiner’s conclusion is permissible only in some circumstances … Official notice unsupported by documentary evidence should only be taken by the examiner where the facts asserted to be well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known.” Tip 1C continued: ◦ Documentary evidence not needed: when the fact being officially noticed defies dispute. “the fact that it is desirable to make something faster, cheaper, better, or stronger” Tip 1C continued: ◦ Applicant must “specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or wellknown in the art. ◦ The Examiner must then provide documentary support – reference or affidavit. Pitfall 2: Using unnecessarily detailed or lengthy preambles Examples ◦ Helmet accessories for helmets of the type having an opening for viewing and receiving the head of a wearer, the helmet opening having a lower side edge with adjacent inside and outside helmet surfaces above the lower side edge, said helmet accessories placing a microphone attached at the end of a boom proximate the helmet wearer's mouth, the accessories comprising: More examples ◦ A method of preparing and storing a freeflowing, frozen alimentary dairy product, comprising the steps of: ◦ A portable, hand-carried internal combustion engine powered air moving device convertible between blower and vacuum modes of operation, said device comprising: Why are these preambles a pitfall? ◦ Generally not useful in prosecution to establish validity MPEP 2111.02 – case by case basis, no litmus test Limits structure Recites intended use or purpose ◦ Can complicate prosecution ◦ Potentially (unintentionally) limiting in litigation “if it recites essential structure or steps” “if it is necessary to give life, meaning, and vitality to the claim” ◦ Bottom line – jurisprudence on this issue is a mess. J. Dyk has suggested the preamble should always limit claim TIP 2: Minimize preamble language ◦ A method [article, device, composition] comprising: ◦ Some have suggested longer preambles are acceptable in selected situations – A method for content selection of digital media stored in a memory…, the method comprising, assigning an individual portion of the digital media to a particular portion of the memory based on whether or not the content of that portion includes video data, selecting one of the individual portions by … American Medical Systems, Inc. v. Biolitec, Inc., No. 2009-323 (Fed. Cir. Sept. 13, 2010). Poly-America LP v. GSE Lining Tech. Inc., 383 F.3d 1303 (Fed. Cir. 2004). Catalina Mktg. Int’l v. Coolsavings.com, Inc., Other cases cited in MPEP 2111.02. 289 F.3d 801 (Fed. Cir. 2002). Pitfall 3: Characterizing (and identifying) the prior art (usually in background section) ◦ Old concern – accidental disclaimer E.g., Schwing v. Putzmeister, 305 F.3d 1318 (Fed. Cir. 2002); and J&M Corp. v. Harley-Davidson, Inc., 269 F.3d 1360 (Fed. Cir. 2001). ◦ Another old concern – admission of prior art In re Nomiya, 509 F.2d 566, 571 (CCPA 1975); and Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1362 (Fed. Cir. 2007). Another concern - inequitable conduct ◦ Ring Plus, Inc. v. Cingular Wireless Corp., No. 20091537 (Fed. Cir., August 6, 2010). Background of the Invention section of the patent-in-suit asserted that two prior art references proposed hardware based systems but no software to operate those systems. But the references did have software solutions. District Court found and Federal Circuit agreed that this was a material misrepresentation and not permissible attorney argument. BTW – they dodged the bullet. Tip 3: Don’t specifically identify or characterize existing or alternative technologies. ◦ That is, just describe the state of the art without judgment. ◦ If you feel compelled to cite references or identify existing technologies, cut and paste from them (e.g., abstract) to avoid independent characterization. Pitfall 4: Delaying arguments and entry of evidence From PatentlyO.com Tip 4: Establish a solid factual record in support of patentability early in prosecution. Why? As prosecution proceeds, it is more difficult to enter evidence/new arguments. Entry of evidence is a matter of right until the final office action. Following entry of final office action, must show good and sufficient reasons why necessary and not earlier presented (37 C.F.R.1.116(e)) Following notice of appeal but before appeal brief deadline, must show good and sufficient reasons…and the Examiner determines that the affidavit or other evidence overcomes all rejections under appeal (37 C.F.R. 41.33(d)(1)) The alternative to timely getting your evidence in the record is protracted and more costly prosecution – RCEs etc… Therefore, to achieve compact and cost efficient prosecution, get the best evidence of patentability in early – preferably in time to discuss with the Examiner in an interview. This may be most important when dealing with obviousness rejections. Post KSR – several fact intensive arguments of nonobviousness survive ◦ Declaration evidence of: unexpected results or advantages commercial success, long-felt need, skepticism of experts and other "secondary considerations” expert opinion evidence on the state of the art, predictability of prior art, and level of skill in the art Caveat: In a survey of BPAI reversals of obviousness rejections (Jan.-Feb. 2010), 55% were based on the Examiner’s failure to articulate a rationale and only 2% were based on secondary considerations. ◦ But very few of those cases included Rule 132 Declarations and you must have factual evidence for secondary considerations. ◦ Still. . . make sure to argue a failure to articulate a rationale. Pitfall 5: Not citing the PTO’s examination guidelines in responding to office actions ◦ What could be more convincing to the PTO than their own words? Even though failure to follow their own guidelines is not appealable. Tip 5: Whenever possible “shoehorn” your case into a patentable example from the guidelines. Updated examination guidelines on obviousness-September 1, 2010: http://edocket.access.gpo.gov/2010/pdf/2010-21646.pdf Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos-July 27, 2010: http://edocket.access.gpo.gov/2010/pdf/2010-18424.pdf Pifall 6: Failing to pay attention to Dir. Kappos’ ten tips for streamlining prosecution Tip 6: Consider following his tips: ◦ 1) CONDUCT INTERVIEWS: Interviews can help applicants and examiners quickly identify points of agreement as well as points of disagreement. ◦ 2) KEEP CLAIMS MANAGEABLE: Avoid filing excessive numbers of claims. Allows the examiner to enhance prosecution by directing examination efforts at the heart of applicants’ invention. ◦ 3) PROVIDE GOOD TRANSLATIONS: Do a careful job of translating foreign-language applications into English before filing an application in the United States. ◦ 4) CLEARLY IDENTIFY NEW LIMITATIONS: When adding new limitations to claims during prosecution, include a brief section in the remarks citing the location in the specification or drawings that provides support. ◦ 5) FILE THOROUGH RESPONSES: Take care to ensure that your response addresses the specific issues set forth in the examiner’s office action. ◦ 6) ADVANCE AMENDMENTS/ARGUMENTS EARLY: File arguments and amendments at the earliest stage of prosecution, and prior to a final rejection if at all possible. ◦ 7) COORDINATE US/FOREIGN APPLICATIONS: Draft or amend your U.S. application in view of the prosecution in a corresponding foreign or international application. PPH shows that applications drafted or amended in response to search reports and opinions in corresponding international applications have a much higher allowance rate. ◦ 8) DRAFT CLAIMS TOWARD THE INVENTION: Know what you want to protect before you file the application and draft the claims toward the invention. ◦ 9) KEEP INFORMATION DISCLOSURE STATEMENTS MATERIAL: Submit a focused Information Disclosure Statement (IDS). Include in an IDS only those references material to patentability. ◦ 10) DRAFT CLAIM SET FROM BROAD TO NARROW: Draft your claim set beginning with the broadest scope to which you feel you are entitled and concluding with the narrowest scope you feel merits protection.
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