Valerie K. Friedrich The JL Salazar Law Firm, PLLC

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
 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,
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
 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
◦ 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
 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
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., 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
◦ That is, just describe the state of the art without
◦ If you feel compelled to cite references or identify
existing technologies, cut and paste from them
(e.g., abstract) to avoid independent
Pitfall 4: Delaying arguments and entry of
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
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
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
Tip 5: Whenever possible “shoehorn” your
case into a patentable example from the
Updated examination guidelines on
obviousness-September 1, 2010:
Interim Guidance for Determining Subject
Matter Eligibility for Process Claims in View of
Bilski v. Kappos-July 27, 2010:
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.
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.
arguments and amendments at the earliest stage of
prosecution, and prior to a final rejection if at all
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.
what you want to protect before you file the
application and draft the claims toward the
MATERIAL: Submit a focused Information
Disclosure Statement (IDS). Include in an IDS only
those references material to patentability.
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.