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PATENT PROSECUTION
Once a patent application is filed, the US PTO conducts an examination of the patent application. The examination is usually conducted in two stages:
a. Pre-prosecution stage and 
b. Prosecution stage.
During the pre-prosecution stage, the US PTO identifies any defects in specification and drawing(s) of the patent application. The defects identified are communicated to applicant of the patent application using a notice, for example Notice of Missing Parts. If the applicant has given a Power Of Attorney to an attorney for the patent application, the office action is sent by the US PTO to the attorney. The pre-prosecution check is usually performed within the first 6 months from the filing date of the application. During the pre-prosecution check, the US PTO may for example:
• require the applicant to provide alternate drawings
• notify the client regarding a missing or an improperly executed oath or declaration
• raise objections.

Usually, the US PTO sets forth a time limit for replying to a notice, for example 30 days or 60 days. The PTO may also set forth certain fees to be paid while responding to a notice. During the prosecution stage, the patent application is examined by a US PTO examiner. After the application is examined, the examiner will issue an official communication known as an “office action” or an “official letter”.
  • Principles Of Law Regarding Patent Prosecution Of Claims Rejected For Lack Of Novelty And Obviousness

    Standard of Review:

    The Examiner has the initial burden to set forth the basis for any rejection so as to put the patent applicant on notice of the reasons why the applicant is not entitled to a patent on the claim scope that he seeks – the so called “prima facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial burden of proof is on the U.S. PTO “to produce the factual basis for its rejection of an application under sections 102 and 103”). (quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)). As the Federal Circuit has observed, “[t]he term “prima facie case” refers only to the initial examination step.” Oetiker, 977 F.2d at 1445; see also Oetiker, 977 F.2d at 1449 (“The process of patent examination is an interactive one.”) (Plager, J., concurring). The “prima facie case” serves as a procedural mechanism that shifts the burden of going forward to the applicant, who must produce evidence and/or argument rebutting the case of unpatentability. See Oetiker, 977 F.2d at 1445; Piasecki, 745 F.2d at 1472. Applicant’s rebuttal evidence “may relate to any of the Graham factors including the so-called secondary considerations.” Piasecki, 745 F.2d at 1472 (citations omitted). The examiner then determines patentability “on the totality of the record, by a preponderance of the evidence with due consideration to the persuasiveness of argument.” Oetiker, 977 F.2d at 1445.

    An applicant may attempt to overcome an examiner’s obviousness rejection by showing that the examiner made an error in either (1) an underlying finding of fact upon which the final conclusion of obviousness was based, or (2) the reasoning used to reach the legal conclusion of obviousness. Similarly, the applicant may submit evidence of secondary considerations of non-obviousness. See Kahn, 441F.3d at 985-86 (“On appeal to the Board, an applicant can overcome a rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of non-obviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998), overruled in part on other grounds, KSR, 550 U.S. at 422).

    Anticipation (or, lack of novelty):

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). To establish anticipation, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).

    Obviousness:

    “Section 103 forbids issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including 
    (1) the scope and content of the prior art,
    (2) any differences between the claimed subject matter and the prior art,
    (3) the level of skill in the art, and 
    (4) secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 406-07 (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418.

  • Office Action

    An office action consists of a cover page, a form and a letter from the US PTO examiner who examined the application. The cover page comprises the patent application number, its filing date, name of the first inventor cited in the patent application, mailing date of the office action, name of the examiner, address of the applicant or the attorney, and a four digit number identifying an art unit to which the patent examiner works in and who is in charge of prosecuting the patent application. An art unit (also known as group art unit) is a working unit responsible for a cluster of related patent art. It is staffed by a supervisory patent examiner (SPE) and a number of patent examiners who determine patentability of applications for a patent. The cover page also comprises another four digit number called “a confirmation number”. The confirmation number is an additional identifier assigned to the patent application by the US PTO. The confirmation number is first printed on the patent application’s official filing receipt along with the patent application number.

    The form attached to the office action provides a summary of the office action such as time period set for reply, status of the office action, disposition of claims, status of the specification/drawings, priority claim etc. The US PTO usually sets a time period of about 1-3 months from the mailing date of the office action to file a response to the office action. This time period is called a “shortened statutory period”. A response may also be filed within the next 3 months after the shortened statutory period, by filing a petition for time extension and paying a time extension fee.

    The letter from the examiner contains objections and rejections regarding various parts of the application and if a claim(s) is allowable, an allowance of the claim(s). An examiner can issue 5 basic types of office actions:

    1. Reject claims that do not comply with 35 USC 101, 102, 103, 132. These rejections are appealable before the Board Of Patent Appeal And Interferences. A claim can be rejected under section 101 if it contains non-statutory subject matter, lacks utility or for double-patenting. A claim can be rejected under section 102 if the claim anticipates a prior art. A claim can be rejected under section 103 if it is obvious in view of 2 or more prior art references.
    2. Object to the form of claims, or to matter contained in the specification including the drawings under section 35 USC 112. Objections are petitionable before the Board of Petitions, US PTO.
    3. Issue a restriction requirement.

    A claim can be rejected for lack of novelty over a prior art reference, lack of non-obviousness over one or more prior-art references, indefiniteness in the claim language, and presence of non-statutory subject matter in the claims. An objection is made to a non-claim defect such as incorrect numbering of claims, incorrect dependency of a claim, a spelling mistake in a claim or the specification, unclear drawings, etc. An objection can be generally overcome by filing necessary corrections in the response. The letter may also comprise several requirements that need to be fulfilled by the applicant when filing a response to the office action.

  • Preparing Response to an Office Action

    The response to an office action should be written persuasively and in a format that is readily understood by the examiner, and should minimize the creation of any unnecessary prosecution history estoppels. Prosecution history estoppel is a limitation in the disclosure or claim that the patentee has accepted or admitted to during the prosecution of the patent application to get a claim allowed. The Supreme Court held that an amendment narrowing the scope of a claim for “a substantial reason related to patentability” creates the rebuttable presumption that the patentee surrendered the scope of the claim between the original claim limitation and the amended claim limitation, thereby precluding the application of the Doctrine of Equivalents and therefore a finding of infringement for an alleged equivalent that falls within the scope of the claim surrendered. This presumption can be overcome by a showing by the patentee that the amendment does not surrender the particular equivalent in question. Festo Corp. v. Shoketsu Kinzoku Kogyo Co., 535 U.S. 722 (2002).

    General tips for preparing a response:
    Organize your response: 
    a)The response to an office action depends on the type of rejections the examiner has raised. A response must be filed for each rejection or objection, raised by the examiner in a separate paragraph. The response must consist of a cover letter that identifies, the patent application number, filing date, confirmation number, applicant’s name, art unit number, examiner’s name, type of response, attachments included with the response, etc. Amendments to claims and specification may be entered in separate sections, following the cover letter. Any arguments made against a rejection must be entered in a “remarks” section of the response (see sample response formats at the end of this chapter). 
    b) Keep the response to an office action short and to the point: Avoid using “legalese”, and use the shortest, simplest words possible in the response. While preparing a response, it is not necessary to reiterate exactly what the examiner has stated. Instead, for example say “Claim 1 has been rejected under section 35 USC 102 in view of reference A”. Do not quote the examiner verbatim for the rest of the response. Instead, for example, state: “Although the examiner has stated that reference A contains element 1, the reference in fact contains something completely different”. 
    c) Provide substance to an argument: In the response, one must explain how the original claims or claims as amended overcome the cited reference. In some cases, where it is clear from the office action that the examiner has not understood the inventive concept, reference an embodiment of the invention disclosed in the application. But when providing such an explanation, always quote the language in the claims and in the specification. 
    d) Carefully consider whether a claim should be amended: Avoid amendments if possible. However, if a claim needs to be amended to distinguish the claim from a reference, explain the amendment. For instance, if a non-substantive amendment is made, explain that the amendment was made “to improve the readability of the claims”. The response can also state that “amendment was made to more particularly point out and distinctly claim the invention”. The above mentioned statement may serve as an admission that an unamended claim did not meet the requirements of 35 USC 112. Thus selection of verbiage that does not mirror section 112 may be prudent. 
    e) Avoid under-stating or over-stating the art: Understating or overstating a reference may indicate a weak argument or may be viewed as an attempt to mislead the examiner. For example, do not solely address language in the reference cited by examiner, dismissing it as not suggesting certain claim language when other language exists in the reference that teaches or suggests that limitation in a the rejected claim. 
    f) Verify response completeness: Under Rule 111, the applicant must respond to all requirements, objections and rejections, or the response will be held non-responsive and the application will be considered abandoned. Furthermore, at the end of an argument for allowability of a claim, always state that in view of the argument advanced, applicant requests the rejection to be reconsidered and the claims allowed. 
    g) Sign the response: The response must include a signature of either the applicant or the attorney of the applicant. An unsigned response will result in a “Notice of Non-Compliant Amendment”. 

  • Manner of amending the claims and specification

    When preparing the response to an office action, the applicant may amend the claims and the specification as necessary. However, the amendments must be made according to the US PTO amendment practice under 37 C.F.R. 1.121. Given below are the set of rules for amending claims, specification and drawings under 37 C.F.R. 1.121:

  • Amendments in applications, other than reissue applications.

    Amendments in applications, other than reissue applications, are made by filing a paper, in compliance with section 1.52, directing that specified amendments be made.

    In order to claim the benefit of the provisional patent application, the applicant must file the corresponding non-provisional patent application within 12 months from the provisional application filing date. “Under the provisions of United States Code (U.S.C.) § 119(e), the corresponding non-provisional patent application would benefit in three ways: (1) patentability would be evaluated as though filed on the earlier provisional application filing date, (2) the resulting publication or patent would be treated as a reference under 35 U.S.C. § 102(e) as of the earlier provisional application filing date, and (3) the twenty-year patent term would be measured from the later non-provisional application filing date.” If the corresponding non-provisional patent application is not filed within 12 months of the provisional patent application filing date, the provisional patent application will be considered abandoned and cannot be revived or used for claiming its benefit or its priority date.

  • Specification.

    Amendments to the specification, other than the claims, computer listings (section 1.96) and sequence listings (section 1.825), must be made by adding, deleting or replacing a paragraph, by replacing a section, or by a substitute specification, in the manner specified in this section.
    (1) Amendment to delete, replace, or add a paragraph. Amendments to the specification, including amendment to a section heading or the title of the invention which are considered for amendment purposes to be an amendment of a paragraph, must be made by submitting:
    (i) An instruction, which unambiguously identifies the location, to delete one or more paragraphs of the specification, replace a paragraph with one or more replacement paragraphs, or add one or more paragraphs;
    (ii) The full text of any replacement paragraph with markings to show all the changes relative to the previous version of the paragraph. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strikethrough cannot be easily perceived;
    (iii) The full text of any added paragraphs without any underlining; and 
    (iv) The text of a paragraph to be deleted must not be presented with strike-through or placed within double brackets. The instruction to delete may identify a paragraph by its paragraph number or include a few words from the beginning, and end, of the paragraph, if needed for paragraph identification purposes.
    (2) Amendment by replacement section. If the sections of the specification contain section headings as provided in section 1.77(b), section 1.154(b), or section 1.163(c), amendments to the specification, other than the claims, may be made by submitting: 
    (i) A reference to the section heading along with an instruction, which unambiguously identifies the location, to delete that section of the specification and to replace such deleted section with a replacement section; and; 
    (ii) A replacement section with markings to show all changes relative to the previous version of the section. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. 
    (3) Amendment by substitute specification. The specification, other than the claims, may also be amended by submitting: 
    (i) An instruction to replace the specification; and 
    (ii) A substitute specification in compliance with section 1.125(b) and (c). 
    (4) Reinstatement of previously deleted paragraph or section. A previously deleted paragraph or section may be reinstated only by a subsequent amendment adding the previously deleted paragraph or section. 
    (5) Presentation in subsequent amendment document. Once a paragraph or section is amended in a first amendment document, the paragraph or section shall not be represented in a subsequent amendment document unless it is amended again or a substitute specification is provided.

  • Claims

    Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).

    (1) Claim listing. 
    All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of "canceled" or "not entered" may be aggregated into one statement (e.g., Claims 1-5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment. 
    (2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of "currently amended," and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of "currently amended," or "withdrawn" if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as "withdrawn- currently amended." 
    (3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of "original," "withdrawn" or "previously presented" will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of "withdrawn" or "previously presented." Any claim added by amendment must be indicated with the status of "new" and presented in clean version, i.e., without any underlining. 
    (4) When claim text shall not be presented; canceling a claim. 
    (i) No claim text shall be presented for any claim in the claim listing with the status of "canceled" or "not entered."
    (ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as "canceled" will constitute an instruction to cancel the claim. 
    (5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a "new" claim with a new claim number.

    Furthermore, a claim retains its original claim number filed in the original application throughout the prosecution throughout the prosecution of the patent application, so its history through successive office actions is traceable. This also holds true for any claim that is entered new while preparing a response to an office action or while amending the patent application. For example, if an application contains 8 claims and claim 2 is canceled, applicant must not renumber claims 3-8. Instead, the applicant must retain the original numbering of the claims.

    If a claim is amended while preparing a response to an office action, support for the amendment must be recited in “Remarks” section of the response. For example: Claims 1-7 are currently amended. Support for the amendment is found throughout the specification and the specifically in paragraphs [0022]-[0030] of the US publication no. 2008/XXXXXXX A1 published on Jan. 1, 2008. If paragraph numbers are not assigned to the specification, column and line numbers may be quoted. If the patent application is not published, applicant may cite the page and line numbers of the specification, as filed originally.

    Drawings.

    One or more application drawings shall be amended in the following manner: Any changes to an application drawing must be in compliance with section 1.84 and must be submitted on a replacement sheet of drawings which shall be an attachment to the amendment document and, in the top margin, labeled "Replacement Sheet". Any replacement sheet of drawings shall include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. Any new sheet of drawings containing an additional figure must be labeled in the top margin as "New Sheet". All changes to the drawings shall be explained, in detail, in either the drawing amendment or remarks section of the amendment paper. 
    (1) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as "Annotated Sheet" and must be presented in the amendment or remarks section that explains the change to the drawings. 
    (2) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner. 

    Disclosure consistency. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.

    No new matter. No amendment may introduce new matter into the disclosure of an application.

    Exception for examiner's amendments. Changes to the specification, including the claims, of an application made by the Office in an examiner's amendment may be made by specific instructions to insert or delete subject matter set forth in the examiner's amendment by identifying the precise point in the specification or the claim(s) where the insertion or deletion is to be made. Compliance with paragraphs (b)(1), (b)(2), or (c) of this section is not required.

    Amendment sections. Each section of an amendment document (e.g., amendment to the claims, amendment to the specification, replacement drawings, and remarks) must begin on a separate sheet.

    Amendments in reissue applications. Any amendment to the description and claims in reissue applications must be made in accordance with section 1.173.

    Amendments in reexamination proceedings. Any proposed amendment to the description and claims in patents involved in reexamination proceedings must be made in accordance with section 1.530.

    Amendments in provisional applications. Amendments in provisional applications are not usually made. If an amendment is made to a provisional application, however, it must comply with the provisions of this section. Any amendments to a provisional application shall be placed in the provisional application file but may not be entered.

  • Response to a “Notice To File Missing Parts”

    As explained above, a notice to file missing parts is issued primarily during the pre-prosecution stage of an application. However, the examiner may also require the applicant to file corrected or replacement drawings during the prosecution stage. If the notice or the office action requires the applicant to provide a missing figure which is described in the specification but is not present in the originally filed drawing sheets, the applicant must provide a copy of the missing drawing in a separate sheet. The separate sheet must be labeled “NEW SHEET” in the top margin.

    The US PTO may also require the applicant to provide replacement drawings, if the original drawings are not clearly reproducible electronically. Replacement drawings are also be required if the original drawings contain errors, or if the original drawings are inconsistent with the original specification. The applicant must file corrected drawings made in compliance with MPEP section 1.84 and must be submitted on a replacement sheet of a drawing labelled "REPLACEMENT SHEET" in the top margin. Any replacement sheet of drawings must include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is corrected or amended. All changes to the drawings must be explained, in detail, in either the drawing amendment or remarks section of the amendment paper (see MPEP section 1.121). Additionally, a marked up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labelled as "ANNOTATED SHEET" and must be presented in the amendment or remarks section that explains the change to the drawings (see MPEP section 1.121 (d)(2)). In some cases, the examiner may specifically require the applicant to produce a marked-up copy of any amended drawing figure, including annotations indicating the changes made (see MPEP section 1.121 (d)(2)).

    In any case, a drawing submitted/amended after the filing date of the application may not be used:
    (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or
    (ii) to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim (see MPEP 35 U.S.C. 113 Drawings. – Patent Laws).

    If the notice requires the applicant to file a properly executed oath or declaration, the applicant may obtain a fresh copy of the declaration from the US PTO website (www.USPTO.gov-->patents-->forms), fill it and file it with any associated fee, set forth in the office action.

  • Response to a restriction/election requirement (35 U.S.C. 121)

    If a patent application contains two or more independent and distinct inventions, the examiner will issue a restriction requirement and set forth a requirement for the applicant to elect a single species for prosecution and restrict the remaining species, which will require the applicant to cancel or withdraw claims belonging to the restricted or non-elected species.
    The examiner may also require the applicant to restrict the application, if two or more claims are directed to the same invention, but are directed to subject matter classified in two separate subclasses.
    Another example where a restriction requirement may be issued is when the patent application contains claims directed towards a system and a method utilizing the system. Examiners often consider such claims as two separate inventions and require the applicant to elect either the method or the system claims. The examiner may provide several reasons for issuing the restriction requirement such as:
    (i) There is an examination and search burden for the patentably distinct species due to their mutually exclusive characteristics,
    (ii) The species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries),
    (iii) The prior art applicable to one species would not likely be applicable to another species, and
    (iv) The species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.

    When preparing a response to a restriction requirement, applicant must remember that although it is not impossible to overcome a restriction requirement, it is very difficult to argue and convince the examiner that the restriction requirement was improper. In response to a restriction requirement, applicant should always elect, with traverse, one group or set of claims that the invention has been restricted to. An election with traverse preserves the right to petition the Commissioner under 37 C.F.R. 1.144 for the claims that were not elected.

    The applicant may then identify and recite technical features commonly found in each of the different species identified by the examiner. These common technical features may then be used to present an argument stating that the species are not independently usable.
  • Responding to a 112 Rejection

    112 objections are issued for improper usage of antecedents in the claims, incorrect spellings, improper usage of punctuations, missing words in the specification, etc. The claims and the specification in a patent application must be drafted according to the guidelines set forth by the US PTO under 35 USC 112. According to 35 U.S.C. 112, the specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
    The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form. Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
    A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
    An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Failure to draft the claims and the specification will result in the examiner rejecting them under 35 U.S.C. 112.

  • Responding to a 102 (novelty) rejection

    A 102 rejection is issued when the examiner is of the opinion that the applicant’s patent is not novel over a single prior art. Novelty rejections arise under 35 U.S.C. 102 (a) if the invention was known or used by others in the United States of America, or patented or described in a printed publication in U.S.A or a foreign country, before the invention thereof by the applicant for a patent (see 2132 35 U.S.C. 102 (a) Patentability).

    Novelty rejections arise under 35 U.S.C. 102 (b) if the invention was patented or described in a printed publication more than 1 year before the application. That is, for a 102 (b) rejection, the issue date of reference must be more than 1 year prior to the filing date of applicant’s application.

    For a section 102(e) rejection, the filing date of a prior art reference must be earlier than the filing date of the patent application. An applicant can overcome a 102(e) rejection by swearing behind the reference using a section 131 affidavit. For a section 102 rejection, the claimed invention must be identically disclosed in 1 reference, meaning that all of the limitations in the applicant’s claim must be within the 4 corners of the reference, or any limitation not disclosed in the reference must be common knowledge.

    The following guideline may be used to respond to a 102 rejection:
    (i) State the first limitation in applicants claim (copy wording from independent claim, but do not put them within inverted commas) that is novel over the cited prior art reference;
    (ii) In the same paragraph state: “In contrast to the above limitation, the reference discloses “………...”, see reference para …, line …. ;
    Or, state: “In contrast to the above limitation, the reference teaches away from the claimed invention and instead teaches “……………………….” 
    Repeat the first and second steps, above, for the 2nd limitation in applicant’s claim that is novel over the prior art.
    (iii) State: “Accordingly, the following limitation(s) recited on claim 1 is not expressly or inherently found in the reference (state reference by name): “paraphrase applicant’s limitation(s) that are novel over the prior art….”

    A 102 rejection may also be overcome by inserting a limitation in a dependent claim into the independent claim. For example, if the limitation “displaying second graphical representations for allocating or deallocating bandwidth” is novel over a cited prior art reference “PR1”, then after step (i) state, the limitation “displaying second graphical representations for allocating or deallocating bandwidth” of claims 4, 24, 76, 80 and 84 is not described, either expressly or inherently in PR1. The applicant must always remember that whenever a limitation from a dependent claim is added to an independent claim, that limitation must be removed from the dependent claim. If the dependent claim does not contain additional limitations, the entire dependent claim must be canceled.

    Applicant must also remember that, it may not be enough to simply add in a limitation to a claim to overcome the reference cited by the Examiner. Doing so may lead to the Examiner to agree that the 102 rejection has been overcome, but then find that the limitation added to the rejected claim is common knowledge and reject the claim under section 103. To avoid this, explain why the claim, as amended is novel, or why the limitation added makes the claim novel. For example, if the claim as amended teaches away from the reference, make the following argument: In contrast to the above limitation, the reference teaches away from the claimed invention and instead teaches “……………………….”.

    Furthermore, when an argument for novelty is presented, the argument must be directed towards the novel element of the applicant’s claim over the prior art reference. The argument must never be directed towards what the prior art teaches or does not teach. For example, in the response, applicant should not state: “Reference x cited by the Examiner teaches “…….” which is not taught by applicant”. An applicant gets a claim allowed by reciting the novel limitation in the application and distinguishing this limitation over the reference, and NOT by reciting what the reference teaches or does not teach.

    Also, whenever an argument for novelty of an element or a limitation is made in the “Remarks” section of the response, the element or limitation must be recited in the claim. If, an element or the limitation is disclosed in the specification and not claimed in any of the claims, the element or the limitation falls into public domain. Further, when a new claim is added to the listing of claims in a response, the applicant must explain how the new claim overcomes the prior art references cited in the office action.

  • Response to a 103 (obviousness) rejection

    A 103 rejection is issued when the applicant’s patent is not novel over more than one prior art reference. 35 U.S.C. 103 reads: “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 (as described earlier), if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made”.

    An examiner may reject a claim as being obvious if the teaching of the claim can be obtained by combining two or more prior art references. First, the applicant must check that each of the prior art references cited in the office action predates his or her application. For example, if the applicant’s patent application has a filing date of June 10, 2007, then each of the prior art references must have a filing date not later than June 10, 2007. If any of the prior art reference fails to fulfill this requirement, the references are not prior art and the applicant must inform the examiner regarding this. Also, an office can reject a claim as being obvious in view of a reference and an “official notice” which relies upon common knowledge or techniques generally known to a person of ordinary skill in the art. In such cases, the official notice is considered a prior art.

    The following guidelines may be followed to respond to an obviousness rejection:

    (i) Read the broadest claim (generally claim 1) in the patent application and determine whether the prior art references cited in the office action disclose all the claim limitations. Read each of the prior art references in their entirety to check if the prior art cited by the examiner teaches or suggests all the claim limitations. The applicant may then identify and recite each of the applicant’s claim limitations not taught or suggested by the prior art references when combined. The applicant may then state the following in the response: “Accordingly, reference A in view of reference B does not teach or suggest the following limitations in claim 1:….”.
    (ii) Repeat step (i) for each limitation in the broadest claim that is not taught or suggested by the prior art references either alone or in combination. Then conclude “Therefore, even if A and B are combined as suggested in the office action, the combination that results will be unsuccessful in arriving at the invention claimed in claim 1. For the reasons stated above, applicant respectfully submits that claim 1 is not obvious over reference A in view of reference B and accordingly the rejection of claim 1 be withdrawn. 
    (iii) See if the prior art references, if combined as suggested in the office action be completely operable for the purposes recited in the claim. If not, state: “Even if the references A and B are combined as suggested in the office action, the combination will still be inoperable for the purposes recited in the claim and will still have deficiencies with respect to the claimed invention as a whole”. Then, identify and recite why the combination will be inoperable and have deficiencies with respect to the claimed invention as a whole. 

    The following additional arguments may be used when a claim is rejected as being obvious in view of two or more references:

    No Articulated Reasoning: If the office action has not provided an articulated (or convincing) a reason with some rational underpinning for combining the references, then state: “there is no motivation for combining the references as suggested in the office action to arrive at the claimed invention. The office action has not articulated a reason with some rational underpinning for combining the teaching of reference A, reference B and reference C to support the legal conclusion of obviousness of claims 1, 2, 3and 7”.

    Mutually exclusive references: See if one of the references teaches or suggests a mutually exclusive path or approach than what is claimed, and the end result of such a combination will be different compared to what is claimed.

    References teaching away from claimed invention: See if one or more of the prior art references “teaches away from the claimed invention” or “teaches away from the proposed combination”. Then argue that a person skilled in the art would not reasonably combine the references.

    Inventive concept not a mere extension: Make an argument stating that from a common sense point of perspective of obviousness, the inventive concept is not a mere extension of the prior art reference cited by the examiner or steps that a person of ordinary skill and creativity would know how to perform.

    Claimed invention teaches away from a reference: If an aspect of the claimed invention can be considered counterintuitive or obtained by following an unusual direction, or if claimed invention teaches way from a reference, then it is critical evidence that the combination is not obvious.

    Reference is from a non-analogous field: Argue that the references may not be reasonably combined as the references sought to be combined are in non-analogous arts (if in fact this is the case). A person of ordinary skill in the art would not likely look at the non-analogous art references to combine their teachings to arrive at the claimed invention. If one of the problems shows no recognition of, or pertinence to the problem solved by the inventor, state that: Therefore one skilled in the art would not likely use such reference, alone or in combination with another reference, to attempt to solve the problem.

    Commercial success: Argue that the invention has achieved commercial success in comparison to the prior art references (prove this by providing necessary evidence). If the invention is not released to the market yet, but it will attain a huge commercial success due to several features not found in the cited prior art references, then state those features.

    Long felt but unresolved need: If the claimed invention solves a problem that was long felt but unresolved by others, then identify and recite the problem solved.

    Failure of others to recognize a problem: If the claimed invention identifies and solves a problem that was never recognized by others, then identify and recite that problem and the solution provided by the claimed invention.

  • Response to a section 101 rejection

    Section 101 provides a definition of patentable subject matter. 35 U.S.C. 101 provides: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title”. Thus, for a claimed invention to be patentable (or statutory), it must fall within one of the above mentioned categories. These categories are also referred to as statutory classes. Therefore, any claim reciting a new and useful process, a machine, an article of manufacture, a composition of matter, or a useful improvement can be held statutory. The claimed invention is therefore eligible for a patent under 35 U.S.C. 101.

    Since most inventions fall within one of the four categories, patentability under section 101 is rarely a problem. However, certain judicially recognized exceptions exist where the claimed invention is considered unpatentable under section 101.

    Abstract idea, natural phenomena and laws of nature: If a claimed invention does not recite a practical application or use of an idea (such as a mathematical formula or an algorithm), a natural phenomena or a law of nature, then that invention is unpatentable under section 101 (see MPEP section 2106).

    Printed or printable matter: A claim reciting only a musical composition, literary work, compilation of data, signal, or legal document, without actually transforming them cannot be patented because neither of them represents a process, a machine, an article of manufacture, or a composition of matter.

    Naturally accruing article: A new mineral discovered in the earth or a new plant discovered in the wild cannot be patented.

    Transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se).

    For claims including the above mentioned excluded subject matter to be patent eligible, the claim must be for a practical application of the abstract idea, natural phenomena or law of nature. Furthermore, the claim must either:
    (a) “transform” an article or a physical object to a different state or thing; or
    (b) produce a useful, concrete and tangible result (see MPEP section 2106).

    Assuming that the claimed invention satisfies the above requirements, it will be eligible for patent protection under 35 U.S.C. 101.

  • Additional requirement for patentability of process or method claims under 35 U.S.C. 101

    The US PTO has set forth additional requirements for method or process claims based on the decision of Court of Appeals for the Federal Circuit, affirming a final decision by the Board of Patent Appeals and Interferences, wherein the Board of Patent Appeals and Interferences had sustained a rejection of claims because they were not directed to patent-eligible subject matter under 35 U.S.C. 101 (See In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008)).

    Under the new guidelines a method claim must meet the following requirement:

    (1) the claim should be “tied to a statutory class such as a particular machine or apparatus”, or 
    (2) the claim should “transforms a particular article to a different state or thing”.

    This is called the "machine-or-transformation test. There are two corollaries to the machine-or-transformation test. First, a mere field-of-use limitation is generally insufficient to render an otherwise ineligible method claim patent- eligible. This means the machine or transformation must impose meaningful limits on the method claim's scope to pass the test. Second, insignificant extra-solution activity will not transform an unpatentable principle into a patentable process. This means reciting a specific machine or a particular transformation of a specific article in an insignificant step, such a data gathering or outputting, is not sufficient to pass the test.

    Interim Examining Procedure for Subject Matter Eligibility Determinations (See Interim Examination Instructions For Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101”, Aug. 2009)

    1. Determine the meaning of the claim: Determine the meaning of the claim using the “Broadest reasonable interpretation”, consistent with the specification and consistent with an interpretation a person skilled in the art would reach.
    2. Determine if the claim as a whole falls within one of the four statutory classes of invention.
    3. Determine if the claim as a whole is directed towards a particular practical application of the above mentioned judicial exceptions or towards a judicial exception in its entirety.
      a. Products (see flowchart for subject matter eligibility test for products); and
      b. Processes (see flowchart for subject matter eligibility test for processes).
    4. After subject matter eligibility analysis is concluded, continue full examination on the merits of the claims, including utility evaluation under § 101, statutory and non-statutory double patenting, compliance with § 112, novelty requirement under § 102, and non-obviousness requirement under § 103.
  • Responding to a 101 rejection

    If the examiner is of the opinion that claims in a patent application recite non-statutory subject matter, use the guidelines given below for amending the claims:

    (a) Identify statutory subject matter in the specification. For example, if the claim recites “a speech disambiguation mechanism comprising…”, and the specification discloses that the speech disambiguation mechanism resides inside a mobile device, then amend the claim to recite “a speech disambiguation mechanism resident in a mobile device, said a speech disambiguation mechanism comprising..”.

    (b) If the claim is a method or a process claim, tie as many steps of the claim to a statutory class such as a machine or an apparatus.

    (c) If a method claim is rejected under 35 U.S.C. 101 and a corresponding system claim is not rejected under 35 U.S.C. 101, then identify the statutory elements in the system claim and recite them in the method claim.

  • Double Patenting Rejection

    If an applicant has filed two or more patent applications claiming a similar or a substantially similar invention, the examiner may reject one of the patent applications under double patenting.

    The doctrine of double patenting seeks to prevent the unjustified extension of patent exclusivity beyond the term of a patent. Double patenting results when the right to exclude granted by a first patent is unjustly extended by the grant of a later issued patent or patents (see MPEP section 804), provided both the applications are commonly owned by a single entity. Overcoming a double patenting rejection is crucial, since both the applications may be held invalid.

    There are two situations where double patenting may occur:
    - a statutory same invention double patenting, and
    - a non-statutory obviousness type double patenting,

    A statutory double patenting arises under 35 U.S.C. 101 arises when an applicant tries to obtain two patents that cover exactly the same invention. Under MPEP section 804, a reliable test for double patenting under 35 U.S.C. 101 is whether a claim in the application could be literally infringed without literally infringing a corresponding claim in the patent. Is there an embodiment of the invention that falls within the scope of one claim, but not the other? If there is such an embodiment, then identical subject matter is not defined by both claims and statutory double patenting would not exist. For example, the invention defined by a claim reciting a compound having a "halogen" substituent is not identical to or substantively the same as a claim reciting the same compound except having a "chlorine" substituent in place of the halogen because "halogen" is broader than "chlorine." On the other hand, claims may be differently worded and still define the same invention. Thus, a claim reciting a widget having a length of "36 inches" defines the same invention as a claim reciting the same widget having a length of "3 feet" (see MPEP section 804).

    The judicially created non-statutory obviousness type double patenting arises when the applicant (or a single entity) tries to obtain two or more patent applications that claim inventions that are similar or identical to each other. A non-statutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or is obvious over the reference claims. Allowing these patent applications may unjustifiably extend the monopoly of an invention beyond the 20 year term of a patent. In such cases, the applicant is allowed to obtain two patent applications, provided the applicant expressly and in writing surrenders the “extra” term of the second, later filed patent so that both patents will end on the date of the earlier filed patent by filing a “terminal disclaimer”. One important aspect of filing a terminal disclaimer is that the same entity must own both issued patents and the common ownership must continue for the duration of the patents or the later patent will be voided.

 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
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