Mr. IP Law | Your inside perspective on Intellectual Property
Articles about patent and prosecution issues at the United States Patent and Trademark Office regarding examiner behavior, rules and regulations, administrative law and responding to office action rejections.
While the statistics indicate that some times might be better than others, there is always the strategic question of whether the issues causing concern lend themselves to a discussion in the first place. And even if they do, does the record that will be created from the interview (examiner and applicant summaries) cause more problems (even if the interview is successful).
Clearly the data shows, as expected, that an examiner-initiated interview is always the best way toward allowance, but of course that is out of the applicant's control. Or is it?
Often an applicant can send some signals to the examiner in the written correspondence that they are open to an interview. While most responses have boilerplate language to this effect, making some specific statements in the remarks might be a way to spark more examiner initiated interviews. A specific offer to discuss a particular issue, with some specific reasons why a conversation might be helpful, could be more likely to receive a positive response than mere boilerplate.
Further, every time you have a positive interview, it creates an opportunity to let the examiner know that you are open to interviews in future cases. Over a career, there are often times where multiple cases end up before the same examiner. When the applicant's representative is reasonable, flexible, etc., in one interview (to the extent possible in zealously representing the best interests of the client), it creates increased chances for an examiner-initiated interview on a future case (for the same or different client).
In the old days, patent attorneys were based in D.C. so that they could physically search for patents in the "shoes" and meet with examiners in person to discuss a case.
Times have changed. The "shoes" have been replaced by online searching, most examiner interviews are conducted on the phone, and there are more patent attorneys outside of D.C. to avoid its extremely high overhead costs. Whether or not there is a benefit to in-person interviews compared with telephone interviews can be debated, but what many may not realize is that the USPTO has set up a free video conference option available for every single examiner. As explained on the USPTO website,
Video conferencing with a patent examiner gives you the ability to have face-to-face meetings, no matter the location of the examiner or attorney ... Video conference interviews will not be recorded. The substance of the interview will be documented by the examiner in an interview summary according to standard practice.
This service is available for any examiner interview and simply requires that you ask the Examiner to set it up. You can even include in-house counsel and/or the inventors. One way to request such an interview is to utilize the USPTO's online form (AIR), but you must give at least 5 days notice with this option. While often a phone call is sufficient to do the job, sometimes it can be helpful for everyone to see one another.
So, next time you are thinking of having an interview to discuss a case with an examiner, consider using the USPTO's free videoconferencing option and put a face to the name.
The USPTO violates Federal Rules every time it issues an "election by original presentation" restriction in a final rejection. While unfair to every applicant, these violations disproportionately impact those least able to defend against the violation - small, independent, inventors.
On April 26, 2018, a first letter was sent to the USPTO, explaining how the USPTO violates the CFR every time it issues a restriction, for the first time, in a final rejection under the guise of "election by original presentation" logic. The text of the original letter is included below.
The USPTO provided a response on June 5, 2018 (linked here). The USPTO's primary justification was that a different rule allowed restrictions at any time because that rule (defining a specific type of restriction, known as "election by original presentation") did not have a timing limitation. Of course this type of reasoning is nonsense.
Today, a response (linked here) has been sent to the USPTO pointing out the errors in their analysis and imploring them to reconsider their position.
Please support this effort and use your own resources to pressure the USPTO to follow its own regulations and rules.
Note that this issue was raised in a previous post, and is now gaining steam, including assistance from Sam Thacker, expecting his J.D. in 2019 from Lewis and Clark Law School.
Dear Director Iancu.
I understand you are extremely busy and have very limited time, but I write to you today to request your help in directing the USPTO examiners and the Office of Petitions to properly apply the Code of Federal Regulations when issuing restrictions, and particularly to address the practice of issuing new “election by original presentation” restrictions in a Final Rejection. This practice clearly violates 37 CFR 1.142(a), second sentence and should be stopped immediately. The issue is straightforward and would have a significant impact in reducing wasted effort and cost for applicants, while actually increasing efficiency at the USPTO. This action would also show your commitment to ensuring a fair and balanced examination process.
Restrictions are a major driver of increased costs and additional work on the part of Applicants and the USPTO. In most art units, restrictions occur in a majority of applications. The additional efforts in preparing restriction requirements, answering and responding to restriction requirements, petitioning restriction requirements, re-working office action when restrictions are overturned, etc., are not an insignificant endeavor. Thus, the USPTO should endeavor to only issue proper restrictions.
One aspect of restriction practice includes the Office’s approach to issuing new restrictions responsive to an applicant’s amendments. The USPTO refers to this as “election by original presentation” where newly amended claims are refused to be examined under the theory that the amendment has shifted the invention from the invention originally examined in the first or previous action. MPEP 821.03 explains the Office’s position that claims added or amended after an action on the merits can be restricted out (and thus not examined) even if no restriction was ever made originally if the new claims are directed to an invention that is independent or distinct from the invention originally claimed. The Office routinely issues such restrictions in final rejections and explains the actions as follows:
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims not directed to the elected invention are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Unfortunately, this practice flies in the face of 37 CFR 1.142(a), second sentence, which indicates that a restriction requirement “will normally be made before any action upon the merits; however, it may be made at any time before final action.” (emphasis added). Rule 142(b) states that "claims to the invention or inventions not elected, if not canceled, are nevertheless withdrawn from further consideration by the examiner by the election, subject however to reinstatement in the event the requirement for restriction is withdrawn or overruled." This section of the rule says nothing about claims elected by original presentation, and certainly does not provide an exception for providing restrictions at a time other than before a final action.
Whether or not the Office is able to lawfully issue a restriction if the Applicant presents new claim amendments that shift the invention after the first action, this does not mean that the Office can do so for the first time in a final rejection. Rather, the rules are clear it must do so, if at all, before the final rejection. This makes sense since often the Applicant has amended the claims to add additional features to distinguish art cited in the first action. If the Office now considers the invention to have shifted so as to require restriction, it can do so by setting forth this new restriction in a non-final action. This then gives the applicant the opportunity to modify or try alternative amendments that do avoid the shift without having to file an RCE. The Office would have no excess burden here because, in the (non-final) action providing the new restriction, the Office has not actually searched for the new features (this must be true since any restriction requires there to be a search burden and if the Office has already done the search then there can be no search burden).
Further, requiring examiners to follow the regulations would also improve compact prosecution and take away wasted effort in challenging improper restrictions. Under current practice, consider the pickle in which the applicant finds itself. The Applicant is now facing a final rejection and even if they believe the restriction is improper, filing a petition against the restriction does not toll the deadline to respond to the final rejection. Thus, either an RCE is filed, wasting time and money, or the Applicant runs the risk of abandonment should the petition be denied.
Unfortunately, there is a large incentive for Examiners to use the "election by original presentation" tool to aid in rejecting applications while spending little to no time or effort in the examination. In particular, any time an amendment is made that avoids the prior art but does not come directly from an already present dependent claim, the Examiner can simply refuse to consider the new claim element and issue a final rejection without even having to do any further searching or analysis by arguing that the invention has now shifted to something different. As explained above, the Applicant is then faced with a final rejection and most applicants are forced to file an RCE and try a different amendment.
I respectfully request that you investigate this issue and come to your own conclusions as to how to best address this situation. While it is a very narrow issue, it has a significant ripple effect and impacts a very large number of cases. Also, given the shaky ground on which Chevron deference stands, it would behoove the USPTO to follow the language of federal regulations rather than interpret the rule to be something other than what it says simply because it is beneficial to the USPTO.
If you have any questions or if I may be of service in any way in discussing this matter or otherwise, please do not hesitate to contact me.
I make this request as an individual interested in the fair administration of our patent system, and not for or at the request of any client.
Mazda and Mitsubishi Electric have apparently been collaborating on control strategies for internal combustion engines, the results of which have produced at least one patent application (13/290,437). The invention relate to a particular way of processing operating parameters to address both steady-state operation as well as transient operation. Those skilled in the art of engine control will recognize this age-old problem that only becomes more difficult as engine technology advances with the increased degrees of freedom due to the electrification of many engine components.
Unfortunately for Mazda and Mitsubishi, the case was assigned to art unit 3747, which is notorious for its supervisors who are prone to maintaining improper rejections that regularly cross the border of absurdity, and repeatedly re-opening prosecution. Assuming that this perceived animosity is more simply a lack of understanding of patent law, perhaps the repeated reversals by the PTAB will provide some education on the law.
Here, Mazda and Mitsubishi were forced to appeal a rejection that was easily decided based simply on the admissions of the Office. Claim 1 on appeal is reproduced below.
The Office forced the applicants to appeal by rejecting claim 1 on the allegation that the cited art showed similar steps and thus it was obvious for the following reason:
Those who understand patent law will immediately recognize the impropriety of such a rejection. It is based on mere conjecture and envinces disrespect for the detailed and complete analysis required for a proper obviousness analysis. Yet, this reasoning was signed off by both supervisors, as shown above. The applicant even tried a pre-appeal request (which of course was summarily dismissed by the same two supervisors).
The PTAB's decision was predictable here and illustrates even they were frustrated by the poor quality of the rejections:
In order for the USPTO to claim that they are providing high quality examination, it is important to ensure not just that overly broad claims are rejected, but also that allowable claims are not improperly rejected. There are two sides to the coin and pretending to ignore one whole side only results in perpetuation of supervisors who at best fail to understand the law improperly training new examiners to do the very thing seen in this case. One hopes that when the PTAB calls out the rejection as "particularly troubling," some action will be taken to correct not just this case, but the overall trend one can see by examining the art unit's overall data.
The PTAB has just designated multiple new opinions as "informative", including two cases from ex parte appeals. One of those decisions, ex parte Jung, involves the proper interpretation of “at least one of A, B, and C” as, by definition, meaning “at least one of A, at least one of B, and at least one of C.” The PTAB relied on the Federal Circuit's decision in SuperGuide (from 2004), even thought the applicant's specification did not even disclose A and B and C together (rather it only disclosed them as alternative options). This of course led the PTAB to enter a new ground of rejection for lack of written description.
Look for further posts on the implications of these decisions on patent drafting and prosecution strategy.
Inventions covering method of treatments, such as treating cancer with a particular antibody, have had a rough go of late. They are under attack by the PTAB under section 101 as discussed in one of the pharma blogs (PTAB Puts Method Of Treatment Patents Under The 101 Knife), but seem to have received a lifeline from the Federal Circuit in Vanda.
Another way in which the USPTO curtails method of treatment inventions is to issue complex restrictions meant to give the applicant a form of death by a thousand cuts. However, there are ways to push back against such restrictions and application S/N 13/282,065 illustrates some of the tools available.
The case relates to a method of treating cancer in a human by administering an anti-activin receptor-like kinase-1 (ALK-1) antibody or antigen-binding portion thereof, where the antibody comprises the heavy chain CDR1-3 and the light chain CDR1-3 found in certain amino acid sequences. The pending claims included not only method of treatment claims, but also methods for inhibiting angiogenesis, including methods specifying that the antibody comprises certain sequences encoded by the nucleotide sequence of the plasmid insert found in a certain E.Coli clone and methods for treating hepatobiliary cancer.
The Examiner required a restriction among three groups, as well as an election of various species. The Applicant here rightly traversed by pointing out that all three groups were categorized in the same field of search (i.e., the same class and subclass), and that therefore there could be no serious search burden. While one would think that this simple point would be sufficient for the Examiner to simply withdraw the restriction, the Examiner nonetheless maintained their position forcing the application to go through the expense and delay of a petition.
Further, the Examiner attempted to stick the applicant with some admissions (which would have been very damaging in the prosecution history) that the claims were admitted to be "co-extensive." Of course the applicant did not makes such statements, and rightly pointed this out in the petition. While not the focus of this post, it should be appreciated that one must be vigilant and acutely on-guard to ensure the Examiner does not improperly stick the applicant with what could be a devastating admission.
Turning back to the Petition, the applicant pointed out the lack of search burden and the Office of Petitions agreed.
So, if you are prosecuting treatment methods and encounter restriction roadblocks, consider whether the Office has properly established all of the requirements for restriction, including that there would be a serious search burden in examining all of the claims together, especially if they are all in the same class and subclass.
As discussed in past posts, the overall ex parte appeal statistics for the USPTO indicate that examiners are reversed or reversed in part in approximately 38.6% of appeals across all art units. Some art units have an unusually high reversal rate, such as art unit 3700. However, it should be appreciated that many appeals have multiple grounds of rejection. And since if any single rejection of a claim is affirmed (even if other rejections of that claim are reversed), the decision is still counted as a full affirmance in the above statistics. Thus, the data does not suggest that only 38.6% of appealed rejections are incorrect. Rather, the real number is much higher since the applicant only gets a reversal (or reversal in part) if each and every rejection of a claim is overcome.
A recent case illustrates the all too common situation where an Examiner throws every possible rejection they can think of hoping that one will stick, or the applicant will simply give up. The case is SN 12/980,840. The invention relates to a method of positioning an electrode cuff on a hypoglossal nerve of a patient. The examiner not only used restrictions to limit the applicant's ability to amend (see previous posts here and here and here, as a few examples) but threw every type of rejection they could think of, including Section 101 rejections (Alice), Section 112 rejections (written description), as well as prior art rejections. While the applicant here was successful in obtaining a reversal, they had to run the table in overcoming each and ever rejection. When taking cases such as these into account, it becomes clear that when asking the question of how often are examiners correct in forming a rejection, the answer is much higher than 38.6% of the time.
Turning back to the example case of the positioning of an electrode on a hypoglossal nerve, some additional lessons can be learned about how to deal with an examiner bent on rejecting the application no matter what (publically available data indicates that this particular examiner in art unit 3762 is a clear statistical outlier in rejecting cases at a much higher rate than other examiners in that art unit). Here, during prosecution, the Examiner used a "election by original presentation" restriction to block amendments aimed at avoiding the cited prior art. At the same time, as noted above, the Examiner threw improper 101, 112, 102, and 103 rejections at the applicant.
But in this instance, the applicant used a great strategy of combining petitions and appeals in a coordinated way (see previous post here). The nice thing about this strategy is that it turns the usual statistics that work against the applicant on their head by creating statistics that work against the Office. Specifically, the coordinated use of a petition and appeal create multiple chances for the applicant to win in parallel, rather than requiring the applicant to run the table on every issue. If the petition is successful, the applicant obtains a new non-final action and the ability to make desired amendments, even if the appeal is unsuccessful. Likewise, even if the petition is unsuccessful, there is still the chance of winning a reversal or reversal in part. In the hypoglossal nerve case, the applicant's petition ultimately was unsuccessful, but they won a full reversal on appeal.
It is also worth reviewing the Section 101 rejection in this case as the PTAB confirmed that the claim was not abstract at step 1 (and went on to confirm that even under step 2, the claim was eligible).
The Examiner first alleged that the claim was directed to a method of organizing human activity, but then in the Answer changed the reasoning as follows:
Of course, many reading this will recognize this basic reasoning as a common tactic for rejecting just about any method claim. In analyzing the claim, the PTAB first took issue with the fact that the Examiner did not actually identify any particular case which held that the "diagnosing an abnormal condition by performing clinical tests and thinking about the results" was abstract. The PTAB then pointed out that even under MPEP 2106.04(a)(2)(III)(A), and the related cases of in re Grams and CyberSource, the sole physical process step in the claims at issues was collecting data by performing a plurality of unspecified clinical tests, for which little detail was provided in the specification. Because the specification provided little detail on the test and instead focused on the algorithm for analyzing data, the claims were directed to the algorithm itself and were thus ineligible.
The PTAB distinguished the "mere data gathering" of the prior cases by noting that the claims required specific steps such as placing a particular device on a particular nerve, using the device to deliver stimulation to the particular nerve, and monitoring the patient's upper airway to determine the response. The PTAB noted that the positioning required specific surgical intervention and that significant details of the cuff were described in the specification. This was therefore enough to conclude that the claims were not directed to an abstract idea, even thought the claims included mental steps of evaluating whether the placement elicits a predetermined response. Thus, even though these mental steps were present, because they were coupled with physical steps (beyond mere data gathering), the claims were not abstract under step 1 of the Alice analysis.
So, there are many lessons to be learned from this case, including overall prosecution strategy in dealing with a difficult examiner, petitioning restrictions, and appealing rejections. Further, for medical device inventions that include particular methods that involve mental steps (e.g., by the surgeon), there are ways to successfully navigate a 101 rejection.
It seems straight forward that a claim requiring two distinct features cannot be rejected with a reference where the Office uses a single feature in that reference to show both claimed elements. Yet that is exactly what examiners (or supervisors) bent on rejecting an application often do, especially in Art Unit 3747.
Consider the following PTAB decision reversing such rejections. The case is serial no. 12/737,668, which relates to engine misfire monitoring. In rejecting the application as being anticipated by the prior art, the Office asserted that the same element in the cited art showed distinct claim limitations of the claimed method. Appellants pointed out this error in their brief, and the Examiner did not even respond to it in the Answer. It is amazing that the Office's quality review efforts have been unable to even identify problems such as this that seem to go on indefinitely and with no consequences.
Of course, the PTAB made short order of these improper rejections in their reversal, quoted below:
So, when an examiner (and their supervisor) persist in maintaining a clearly improper rejection where a single feature in the cited reference is relied on to improperly show multiple distinct claim elements, do not be afraid to take this issue up on appeal.
If you prosecute patent applications, you have likely seen this before with regard to rebuttals against obviousness rejections:
One cannot attack references individually, when the rejection is premised on the combination of the references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). (Nonobviousness cannot be established by attacking the references individually where the rejection is based upon the teachings of a combination of references.)
So what exactly does this mean? When arguing that a features is not shown, how else do you argue other than by noting that none of the references show the missing feature? How does one avoid this canned response, either from an examiner and/or the PTAB?
These are not easy questions to answer. Examiners and the PTAB love to respond to arguments with this simple assertion. Even upon reviewing numerous cases and decisions, it is hard to understand where the line drawn between an attack on a reference individually, versus an attack against the combination. Other commentators have argued that the citation Merck and/or in re Keller is not quite accurate, but the Federal Circuit, in Soft Gel, cites to this proposition with approval. Thus, ignoring the issue or burying your head in the sand, as well as trying to convince the Examiner that the MPEP has inaccurately stated the law, all seem to be losing strategies.
Another option is to address the issue head on and early in prosecution (maybe even preemptively before the Examiner makes such a rebuttal). In this approach, the applicant can break down the arguments into at least two sections.
One section deals with attacking the factual assertions made by the Examiner as to what an individual reference shows. In this section, the application can expressly point out that this argument is not an attack on the obviousness of the combination (and so in re Merck, and in re Keller are not applicable), but rather pointing out improper assertions upon which the Office has based the rejection. These arguments apply whether or not the combination as suggested by the Office is made.
Another section can then deal with arguments attacking the combination as suggested by the Office. Here, the applicant can argue that, even if the references are combined and modified as suggested by the Office, that combination/modification is still missing a claimed element. Here, one must be careful to understand what the Office has actually proposed and identify a missing element even in spite of the suggested changes. Sometimes there is no argument to be made here, but alas, all is not lost because there is still yet another line of attack, namely, attacking the reasoning or motivation for making the combination/modifications suggested by the Office. That approach can be still another section and included, where applicable.
A recent example from the PTAB might help further illustrate these issues. Specifically, Pratt & Whitney recently lost an appeal before the PTAB specifically because the PTAB felt that their arguments were attacking the references individually, rather than the combination as proposed. The case is 13/621,968 and relates to a component for a gas turbine engine. The claimed feature at issue included baffles including "a plurality of feed openings that extend through each of a plurality of walls of said first baffle and said second baffle; and said plurality of feed openings are positioned in a staggered relationship." The Examiner relies on combining two references, neither of which met all of these features, to obtain a modified system that met the claimed features.
The PTAB's decision affirmed the examiner's rejection that the combination proposed by the Examiner rendered the feature obvious. The PTAB focused on the appellant's arguments related to a third reference as missing these features and thus found that such arguments were an individual attack rather than addressing the actual combination used by the Examiner.
So, be careful in categorizing your arguments and expressly separate them out up front to reduce the ability of the Office to make the easy argument and paste in a generic assertion about attacking references individually.
In US 13/909,850, Honda seeks to patent an approach for controlling engine operation where the amount of internal exhaust gas recirculation (EGR) is calculated. Specifically, by changing a valve timing of the intake or exhaust valve, and thus adjusting the valve overlap, the amount of internal EGR is adjusted and so the approach calculates the amount of EGR. Specifically, Honda's approach calculates the internal EGR based on a center of the valve overlap position, which shifts as the valve timing shifts.
Unfortunately for Honda, this case ended up in Art Unit 3747, which has a history of unreasonable supervisors, statistically speaking. So, not unlike many other applicants, Honda was forced to appeal an unreasonable rejection. Specifically, the examiner and the two supervisors responsible for Art Unit 3747 rejected the application on the basis that a prior art reference (Koseki US 2004/0139949) anticipated the claimed features. Of course, Koseki did not actually show the claimed features but that did not stop these examiners.
Rather, these examiners maintained the anticipation rejection even though they could not point to any disclosure in Koseki of calculating the valve overlap center position, let alone determining internal EGR based on that parameter. Honda even explained the technical benefit of their claimed approach, as disclosed in the specification, in terms of improving the internal EGR calculation. Honda also cited their figures which further explained the invention in no uncertain terms.
The Examiner's Answer responding to these issues is comical. First the examiner and his supervisors try to deflect the lack of disclosure by alleging that the claim limitations at issue are calculations performed by the ECU and thus this places them "in the abstract realm." Answer page 2. Apparently this was some sort of veiled reference to an Alice rejection, even though no Section 101 rejection was present in the case (nor did the PTAB even address this issue let alone suggest any Alice problems with the claims).
Next, the Answer implies that since the claimed feature is a "calculation" then any sort of calculation could qualify, including the integrating of the area under the overlap curve since such an integration would "include the effect of all the points" and thus include the effect of the center position. Answer, pages 2-3. Such arguments are clearly designed to obfuscate the issues and illustrate a clear lack of understanding of how the law of anticipation operates.
The PTAB made short order of the Office's improper rejection, including relying on a good point made in the reply brief. Namely, Honda correctly pointed out that the center point may change without changing the integration area, and vice versa. From the PTAB's decision:
Like Appellants, we do not see that integration of an overlap valve period is the same as calculating an overlap center position, nor do we see that Koseki teaches the claimed "overlap center position-calculating means calculates the overlap center position based on changes in the timing of at least one of the intake valve and the exhaust valve which causes the overlap center position to shift." Appeal Br. 16, Claims App. As Appellants correctly point out, "Koseki fails to disclose or suggest a method that is capable of detecting this shift in the overlap center position recited in claim 1, and shown in Figures 8 and 10. The integration disclosed in Koseki merely describes calculating an integrated value of the smaller valve opening area." Id. at 8. Comparing Appellants' Figures 8 and 10 is informative to understanding the shift in the overlap center position
Why issues as clear as this one, which are supposedly in the wheelhouse of the technical expertise of the examiner and two supervisors, require the applicant to be forced to go through an appeal process is mind boggling. Nevertheless, it is not uncommon particularly in this art unit.
So, if you find yourself arguing with examiners who believe it is appropriate to interpret distinct features as being the same, merely because they are "abstract" calculations in a controller, make sure you have set forth a clear explanation to the Board as to why the features are not correlated and hunker down for the long haul.