Title: Patent Prosecution at the USPTO: Tips and Recent Developments
1Patent Prosecution at the USPTOTips and Recent
Developments
- Kathleen Kahler Fonda
- Legal Advisor, Office of Patent Legal
Administration - Loyola Law School Los Angeles
- March 10, 2009
-
2Overview
- Examiner's view of a patent application
- Tips for filing and prosecuting a patent
application - Examination Guidelines in view of KSR
3Examining an Application
- Published in the Federal Register
- On October 10, 2007
- At 72 FR 57526
3
4Preparing the Application
- Forms
- Do use USPTO forms without altering the language.
- Do not use a combined declaration and power of
attorney form. - USPTO forms can be found at http//www.uspto.gov/
web/forms/index.html
4
5Preparing the Application
- Application Data Sheets
- Do use an Application Data Sheet (ADS), although
an ADS is not required. Customers using an ADS
can expect two advantages when applying for a
patent - 1. Improved accuracy of filing receipts.
- 2. Accurately recorded application data.
5
6Preparing the Application
- Application Data Sheets (Contd)
- Use of a supplemental ADS is possible even though
no original ADS was submitted on filing. - The following information can be supplied on an
ADS - Application Information
- Applicant Information
- Correspondence Information
- Representative Information
- Domestic Priority Information
- Foreign Priority Information
- Assignment Information
6
7Preparing the Application
- Preliminary Amendments In New Applications
- Avoid submitting Preliminary Amendments on filing
- A substitute specification will be required if a
preliminary amendment present on filing makes
changes to the specification, except for - Changes to title, abstract, claims or addition of
benefit claim information to the specification - See the notice Revised Procedure for
Preliminary Amendments Presented on Filing of a
Patent Application, 1300 Off. Gaz. Pat. Office
69 (November 8, 2005), available at - http//www.uspto.gov/web/offices/com/sol/og/2005/
week45/patrevs.htm
7
8Preparing the Application
- Preliminary Amendments in
- Continuations and Divisionals
- Avoid submitting Preliminary Amendments on filing
a Continuation or Divisional - Avoid Preliminary Amendments that cancel all the
claims and add new ones
8
9Filing the Application
- Select a method of filing the application
- 1. Accelerated Examination
- 2. EFS-Web
- 3. Traditional Mail Route
9
10Accelerated Examination
- Change in practice effective August 25, 2006
- Opportunity for final determination in 12 months
- Participation requires
- Applicants provide greater information up front
pre-examination search and accelerated
examination support document - file application using electronic fling system
- agree to interviews
- limited number of claims
10
11Accelerated Examination Statistics
- As of July 08
- 293 applications allowed
- On average, 182 days to complete prosecution
- Minimum number of days to complete prosecution
18 - 193 patents have issued (8/19/08)
- 293 applications allowed
- Participants response comments positive not
only faster, but high quality
11
12Accelerated Examination Issues
- Accelerated Examination Common Failings
- Failure to provide the text search logic. A mere
listing of terms will not suffice. - Failure to search the claimed invention. The
petition for accelerated examination may be
dismissed if the search is not commensurate in
scope with the claims. - Failure to show support in the specification
and/or drawings for each limitation of each claim.
12
13Accelerated Examination Issues
- Accelerated Examination Common Failings (Cont)
- Failure to show support in the specification
and/or drawings for each limitation of each claim
for every document of which benefit is claimed. - Failure to specifically identify the limitations
in each claim that are disclosed in each
reference.
13
14EFS Web
- New EFS-Web system launched March 2006
- allows PDF-based submissions
- replaced XML-based system
- 2005 result 2.2 of applications filed
electronically - 2006 result 14.3 of applications filed
electronically - 2007 result nearly 50 of applications filed
received through EFS-Web over 1,000,000 (total)
follow-on papers and new applications received - 3rd Qtr 2008 69.8 of applications filed
electronically
14
15EFS Web
- Safe, Simple, Secure
- Many corporations, law firms, and independent
inventors moving to 100 electronic filing for
new applications and follow-on papers.
15
16EFS Web Issues
- Avoid coding (identifying) a Request for
Continued Examination (RCE) as an Amendment
when filing an RCE - Avoid identifying papers after the initial filing
as new - Avoid common PCT filing mistakes
- Avoid filing color images or images that have a
resolution higher than 300x300 dots per inch
(dpi)
16
17General Prosecution Advice
- Proofread claims for clarity and precision
- Present all cogent arguments and evidence before
final rejection - If the examiner is believed to be ignoring a
claim limitation, a personal or telephonic
interview may facilitate the prosecution to
completion.
17
18General Prosecution Advice
- Amendments to the claims and/or specification
should be accompanied by a written statement
indicating specific support for the change. If
the support is implicit, an explanation is
beneficial. - In response to restriction requirements, where
inventions are indeed patentably indistinct,
applicants should present arguments to that end. - Read the entire prior art reference cited by the
examiner, not just the part relied upon by the
examiner in the rejection.
18
19General Prosecution Advice
- Dont initiate a response on the absolute last
day of the statutory period, if possible. - Dont personally attack the Examiner in a
response to Office Action. - Follow the chain of command for assistance
- First, call the Examiner.
- If he or she is non-responsive or unavailable,
contact the Supervisor. - If the issue is still not resolved, contact the
Technology Center Director.
19
20Patent Prosecution Tips
- Pre-Appeal Brief Conference
- Avoid sending the request separate from the
Notice of Appeal. - Avoid making a request when there is an
outstanding after-final amendment. - Avoid attaching more than five pages to the cover
form. - Avoid sending in a supplemental request.
- Avoid paying a second Notice of Appeal fee in the
application.
20
21Patent Prosecution Tips
- Consider prosecuting an improved CIP invention
independently of the prior invention - File, if need be, a continuation only to the
original invention, or take an appeal on the
original invention, and - File a new application, rather than a CIP, for
only the new invention - without a benefit claim (35 U.S.C. 120, 37 CFR
1.78) to the initial application, and - therefore without shortening the patent term of
the initial invention if it were to be included
in the CIP application, as - any benefit claim in a CIP cannot protect the new
invention.
21
22 103 Examination Guidelinesin view of KSR
- Guidelines were published in the Federal Register
on October 10, 2007 at 72 FR 57526 now also
available in MPEP 2141. - Guidelines do not constitute substantive rule
making, so any failure by Office personnel to
follow these guidelines is neither appealable nor
petitionable.
23KSR Background
- Technology
- Procedural
- History
- KSR Int'l Co. v. Teleflex Inc.,
- 550 U.S. , 82 USPQ2d 1385
- (2007)
24KSR Reaffirms the Graham Analysis for Obviousness
- "In Graham , the Court set out a framework
for applying the statutory language of 103, . .
. The factors continue to define the inquiry
that controls. If a court, or patent examiner,
conducts this analysis and concludes the claimed
subject matter was obvious, the claim is invalid
under 103." KSR at 1391.
25Federal Circuits Four Errors
The Supreme Court stated that the Federal Circuit
erred when it applied the well-known
teaching-suggestion-motivation (TSM) test in an
overly rigid and formalistic way. KSR at 1396-97.
26TSM Remains a Valid Approach to the Graham
Inquiries under KSR
- "When it first established the requirement of
demonstrating a teaching, suggestion, or
motivation to combine known elements in order to
show that the combination is obvious, the Court
of Customs and Patent Appeals captured a helpful
insight. . . . There is no necessary
inconsistency between the idea underlying the TSM
test and the Graham analysis." - KSR at 1396.
27The Basic Approach to Determining Obviousness
Remains the Same
An examiner is still required to provide a
reasoned statement of rejection grounded in the
Graham inquiries. He or she must articulate a
reason or rationale to support the obviousness
rejection. See KSR at 1396 (To facilitate
review, the obviousness analysis should be made
explicit,) (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
28KSR Provides a More Expansive View of Prior Art
- "The obviousness analysis cannot be confined . .
. by overemphasis on the importance of published
articles and the explicit content of issued
patents. . . .
29KSR Provides a More Expansive View of
Prior Art
- . . . In many fields it may be that there is
little discussion of obvious techniques or
combinations, and it often may be the case that
market demand, rather than scientific literature,
will drive design trends." - KSR at 1396.
30Any Reasoned Argument Grounded in Graham May Form
the Basis for a Prima Facie Case of Obviousness
- The TSM test is just one of a number of valid
rationales that may be employed when determining
obviousness under 35 U.S.C. 103. - The inapplicability of the TSM test does not
necessarily result in a conclusion of
non-obviousness.
31The Examiner as Fact Finder
- Examiners act as fact finders when resolving the
Graham inquiries. - Examiners must articulate findings as to the
scope and content of the prior art, as necessary,
to support the obviousness rejection being made.
32The Examiner as Fact Finder
- In formulating a rejection under 35 U.S.C.
103, the examiner should focus on the state of
the art and not impermissible hindsight, e.g.
applicant's disclosure. - See KSR at 1397 ("A factfinder should be aware,
of course, of the distortion caused by hindsight
bias and must be cautious of arguments reliant
upon ex post reasoning.") (citing Graham, 383
U.S. at 36).
33Key Points
- Prior art is not limited to the four corners of
the documentary prior art being applied. - Prior art includes both the specialized
understanding of one of ordinary skill in the
art, and the common understanding of the layman. - It includes "background knowledge possessed by a
person having ordinary skill in the art. . . .
A court can take account of the inferences and
creative steps that a person of ordinary skill in
the art would employ." KSR at 1396. - Examiners may rely on, for example, official
notice, common sense, and design choice.
34Making a Prima Facie Case of Obviousness
- Examiners must
- Resolve the Graham inquiries.
- Articulate appropriate factual findings.
- Explain the reasoning that provides a nexus
between the factual findings and the legal
conclusion of obviousness.
35Rationales
- One or more of the rationales set forth in the
following slides may be relied upon to support a
conclusion of obviousness. The list of
rationales provided herein is not intended to be
an all-inclusive list. - The key to supporting any rejection under 35
U.S.C. 103 is the clear articulation of the
reasons why the claimed invention would have been
obvious.
36Rationale A. Combining prior art elements
according to known methods to yield predictable
results.
- "The combination of familiar elements according
to known methods is likely to be obvious when it
does no more than yield predictable results. . .
. When a patent 'simply arranges old elements
with each performing the same function it had
been known to perform' and yields no more than
one would expect from such an arrangement, the
combination is obvious." - KSR at 1395-66 (citing Sakraida v. AG Pro, Inc.,
425 U.S. 273, 282 (1976)). -
37Rationale A. Combining prior art elements
according to known methods to yield predictable
results.
- Findings to support obviousness
- a finding that the prior art included each
element claimed although not necessarily in a
single reference - a finding that one of ordinary skill in the art
could have combined the elements as claimed by
known methods and that in combination, each
element merely would have performed the same
function as it did separately and - a finding that one of ordinary skill in the art
would have recognized that the results of the
combination were predictable. -
38Rationale A. Combining prior art elements
according to known methods to yield predictable
results.
- Reasoning All the claimed elements were known
in the prior art and one skilled in the art could
have combined the elements as claimed by known
methods with no change in their respective
functions, and the combination would have yielded
predictable results to one of ordinary skill in
the art at the time of the invention. -
-
39Rationale B. Simple substitution of one known,
equivalent element for another to obtain
predictable results
- "When a patent claims a structure already
known in the prior art that is altered by the
mere substitution of one element for another
known in the field, the combination must do more
than yield a predictable result." - KSR at 1395 (citing United States v. Adams, 383
US 39, 50-51 (1966)). -
40Rationale B. Simple substitution of one known,
equivalent element for another to obtain
predictable results
- Findings to support obviousness
- a finding that the prior art contained a device
which differed from the claimed device by the
substitution of some components with other
components - a finding that the substituted components and
their functions were known in the art and - a finding that one of ordinary skill in the art
could have substituted one known element for
another and the results of the substitution would
have been predictable. -
41Rationale B. Simple substitution of one known,
equivalent element for another to obtain
predictable results
- Reasoning The claim would have been obvious
because the substitution of one known element for
another would have yielded predictable results to
one of ordinary skill in the art at the time of
the invention. -
42Rationale C. Use of known technique to improve
similar devices (methods, or products) in the
same way.
- "If a technique has been used to improve one
device, and a person of ordinary skill in the art
would recognize that it would improve similar
devices in the same way, using the technique is
obvious unless its actual application is beyond
his or her skill. . . . A court must ask
whether the improvement is more than the
predictable use of prior art elements according
to their established functions." - KSR at 1396.
-
43Rationale C. Use of known technique to improve
similar devices (methods, or products) in the
same way.
- Findings to support obviousness
- a finding that the prior art contained a base
device upon which the claimed invention is an
improvement - a finding that the prior art contained a
comparable device that was improved in the same
way as the claimed invention and - a finding that one of ordinary skill could have
applied the known improvement technique in the
same way to the base device and the results
would have been predictable.
44Rationale C. Use of known technique to improve
similar devices (methods, or products) in the
same way.
- Reasoning The claim would have been obvious
because the technique for improving a particular
class of devices was part of the ordinary
capabilities of a person of ordinary skill in the
art, in view of the teaching of the technique for
improvement in other situations. -
45Rationale D. Applying a known technique to a
known device (method, or product) ready for
improvement to yield predictable results.
- "The claimed subject matter may involve the
mere application of a known technique to a piece
of prior art ready for the improvement." - KSR at 1396.
-
-
46Rationale D. Applying a known technique to a
known device (method, or product) ready for
improvement to yield predictable results.
- Findings to support obviousness
- a finding that the prior art contained a "base"
device - a finding that the prior art contained a known
technique that is applicable to the base device
and - a finding that one of ordinary skill in the art
would have recognized that applying the known
technique would have yielded predictable results. -
47Rationale D. Applying a known technique to a
known device (method, or product) ready for
improvement to yield predictable results.
- Reasoning The claim would have been obvious
because a particular known technique was
recognized as part of the ordinary capabilities
of one skilled in the art. -
-
48Rationale E. "Obvious to try" choosing from a
finite number of predictable solutions.
- "When there is a design need or market pressure
to solve a problem and there are a finite number
of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the
known options within his or her technical grasp.
If this leads to the anticipated success, it is
likely the product not of innovation but of
ordinary skill and common sense." - KSR at 1397.
49Rationale E. "Obvious to try" choosing from a
finite number of predictable solutions.
- Findings to support obviousness
- a finding that there had been a recognized
problem or need in the art including a design
need or market pressure to solve a problem - a finding that there had been a finite number of
identified predictable potential solutions - a finding that one of ordinary skill in the art
could have pursued the known potential options
with a reasonable expectation of success. -
50Rationale E. "Obvious to try" choosing from a
finite number of predictable solutions.
- Reasoning The claim would have been obvious
because "a person of ordinary skill has good
reason to pursue the known options within his or
her technical grasp. If this leads to the
anticipated success, it is likely the product not
of innovation but of ordinary skill and common
sense." -
51Rationale F. Known work in one field of endeavor
may prompt variations of it for use in either the
same field or a different one based on design
incentives or other market forces if the
variations would have been predictable to one of
ordinary skill in the art.
- "When a work is available in one field of
endeavor, design incentives and other market
forces can prompt variations of it, either in the
same field or a different one. If a person of
ordinary skill can implement a predictable
variation, 103 likely bars its patentability."
- KSR at 1396.
-
-
52Rationale F. Known work in one field of endeavor
may prompt variations of it for use in either the
same field or a different one based on design
incentives or other market forces if the
variations would have been predictable to one of
ordinary skill in the art.
- Findings to support obviousness
- a finding that the scope and content of the prior
art, whether in the same or different field of
endeavor, included a similar or analogous device. - a finding that there were design incentives or
market forces which would have prompted
adaptation of the known device. - a finding that the differences between the
claimed invention and the prior art were
encompassed in known variations or in a principle
known in the prior art and - a finding that one of ordinary skill in the art,
in view of the design incentives or market
forces, could have implemented the claimed
variation of the prior art, and the claimed
variation would have been predictable. -
53Rationale F. Known work in one field of endeavor
may prompt variations of it for use in either the
same field or a different one based on design
incentives or other market forces if the
variations would have been predictable to one of
ordinary skill in the art.
- Reasoning The claim would have been obvious
because the design incentives or market forces
provided a reason to make an adaptation, and the
invention resulted from application of the prior
knowledge in a predictable manner. -
-
54Rationale G. TSM Test
- Findings to support obviousness
- a finding that there was some teaching,
suggestion, or motivation, either in the
references themselves or in the knowledge
generally available to one of ordinary skill in
the art, to modify the reference or to combine
reference teachings and - a finding that there was reasonable expectation
of success.
55Rationale G. TSM Test
- Reasoning The claim would have been obvious
because a person of ordinary skill in the art
would have been motivated to combine the prior
art to achieve the claimed invention and that
there would have been a reasonable expectation of
success. -
56Applicant's Response
- If an applicant traverses an obviousness
rejection under 103, a reasoned statement must
be included explaining why the applicant believes
the Office has erred substantively as to the
factual findings or the conclusion of
obviousness. 37 CFR 1.111(b).
57Rebuttal Evidence
- Applicant may submit evidence, in a timely
manner, to rebut a prima facie showing of
obviousness. - Rebuttal evidence may include evidence of
secondary considerations such as commercial
success, long felt but unsolved needs, failure of
others, and unexpected results. - Rebuttal evidence may address the particular
findings of fact or line of reasoning provided by
the examiner in support of obviousness.
58Rebuttal Evidence
- An mere argument that an examiner has not
provided an argument based on TSM, or that no
motivation is explicitly stated in the applied
reference(s), is not sufficient to overcome a
prima facie case of obviousness. - If an examiner maintains a rejection under 35
U.S.C. 103 after receiving applicant's
response and reweighing all of the evidence, he
or she must clearly explain the reasons for doing
so.
59KSR Summary
- reaffirmed the four-prong analysis for
obviousness set forth in Graham - stressed that a reasoned analysis must be
provided to support any conclusion of
obviousness - recognized the continued viability of the
"teaching, suggestion, or motivation" (TSM)
approach when properly applied
60KSR Summary
- explained that TSM is not to be employed in a
rigid or formalistic manner - clarified that TSM is not the exclusive test
whereby obviousness may be determined and - explained that a broader range of rationales may
be employed to support an obviousness rejection.
61Useful Web Links - http//www.uspto.gov
- Notices, Recent Patent-Related a very current
list of all Federal Register, Official Gazette
and pre-Official Gazette notices, and certain
Office memoranda http//www.uspto.gov/web/offices
/pac/dapp/ogsheet.html - Forms Page current USPTO forms available for
use by the Public http//www.uspto.gov/web/forms/
index.html - Manual of Patent Examining Procedure (MPEP)
http//www.uspto.gov/web/offices/pac/mpep/mpep.htm
61
62Useful Web Links - http//www.uspto.gov
- Mailing Addresses and Mail Stops
http//www.uspto.gov/web/offices/com/sol/og/patbox
s.htm - Facsimile Numbers http//www.uspto.gov/web/office
s/com/sol/og/2005/week42/patcorr.htm - USPTO Glossary http//www.uspto.gov/main/glossary
/index.html
62
63Contact Information
- Thank You!
- For help with patent prosecution questions,
contact the Office of Patent Legal
Administration. -
- e-mail patentpractice_at_uspto.gov
- phone (571) 272-7701
63