Patent Prosecution at the USPTO: Tips and Recent Developments

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Patent 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

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Overview

• Examiner's view of a patent application
• Tips for filing and prosecuting a patent
  application
• Examination Guidelines in view of KSR

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Examining an Application

• Published in the Federal Register
• On October 10, 2007
• At 72 FR 57526

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Preparing 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

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Preparing 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.

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Preparing 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

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Preparing 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

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Preparing 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

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Filing the Application

• Select a method of filing the application
• 1. Accelerated Examination
• 2. EFS-Web
• 3. Traditional Mail Route

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Accelerated 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

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Accelerated 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

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Accelerated 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.

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Accelerated 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.

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EFS 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

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EFS Web

• Safe, Simple, Secure
• Many corporations, law firms, and independent
  inventors moving to 100 electronic filing for
  new applications and follow-on papers.

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EFS 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)

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General 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.

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General 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.

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General 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.

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Patent 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.

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Patent 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.

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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.

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KSR Background

• Technology
• Procedural
• History
• KSR Int'l Co. v. Teleflex Inc.,
• 550 U.S. , 82 USPQ2d 1385
• (2007)

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KSR 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.

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Federal 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.
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TSM 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.

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The 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)).
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KSR 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. . . .

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KSR 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.

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Any 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.

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The 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.
  

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The 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).

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Key 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.

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Making 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.

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Rationales

• 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.

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Rationale 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)).

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Rationale 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.

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Rationale 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.

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Rationale 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)).

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Rationale 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.

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Rationale 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.

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Rationale 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.

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Rationale 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.

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Rationale 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.

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Rationale 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.

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Rationale 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.

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Rationale 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.

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Rationale 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.

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Rationale 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.

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Rationale 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."

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Rationale 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.

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Rationale 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.

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Rationale 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.

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Rationale 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.

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Rationale 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.

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Applicant'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).

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Rebuttal 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.

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Rebuttal 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.

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KSR 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

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KSR 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.

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Useful 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

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Useful 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

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Contact Information

• Thank You!
• For help with patent prosecution questions,
  contact the Office of Patent Legal
  Administration.
• e-mail patentpractice_at_uspto.gov
• phone [phone]

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