The High-Tech Patent Agent: A View from the Trenches in Silicon Valley

Strategies to Argue Patentable Subject Matter per USPTO Eligibility Memo

2018-05-03T08:46:00.000-07:00

It is time to take a deeper look and derive or strengthen some strategies to argue for patentable subject matter eligibility during patent prosecution, now that the first round articles on the USPTO Memorandum April 19, 2018, SUBJECT: Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) have been digested. One strategy is suggested by the opening paragraph on page 1 of the memo, which says, “this memorandum addresses the limited question of whether an additional element (or combination of the additional elements) represents well-understood, routine, conventional activity.” Examiners have been arguing that individual elements are well-understood, then ignoring arguments that the combination of elements (i.e., the claim as a whole) is not shown in the Office action to be well-understood, routine conventional activity. The memo makes it clear that it is necessary for a proper rejection under 35 USC §101 for the combination of the elements to be shown (in the Office action) as well-understood, routine, conventional activity through a factual determination (see page 3), which can be a citation to an express statement in the specification or a statement made by applicant during prosecution, a citation to a court decision, a citation to a publication, or a statement of official notice (see page 4). If the Office action just has assertions, and no factual determinations, this can be argued as improper, citing the memo. Facts matter. If the examiner takes official notice, this can be challenged as discussed in MPEP §2144.03, requiring the examiner to produce a factual determination.

Another strategy is suggested in the middle of page 2. An argument that the claims are directed to an improvement, provided the specification explains how the improvement is brought about by the limitations in the claims, gains strength from Berkheimer. The relevant issue is whether the claims do or do not include limitations that realize these purported improvements. This is again a factual determination. Note that the Federal Circuit holding applied to some of the dependent claims, not necessarily to the independent claim or all of the claims. From this is derived the caution to construct the independent claim carefully to include sufficient limitations that realize the improvement described in the specification. This may be accomplished at the time of filing, or through amendment during patent prosecution. Also, a strategy is derived of observing whether the Office action has properly examined all of the dependent claims as well as the independent claims for subject matter eligibility, and arguing the rejection is improper when such is not the case, citing the memo.

Next, a strategy is derived from the bottom of page 2, in which the memo notes, “the Federal Circuit drew a distinction between what is well-understood, routine, conventional, and what is simply known in the prior art”, requiring a factual determination. Moreover (on page 3), “a showing that additional elements are obvious under 35 USC §103, or even that they lack novelty under 35 USC §102, is not by itself sufficient to establish that the additional elements are well-understood, routine, conventional activities or elements to those in the relevant field.” Also, “The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.” Berkheimer, 881 F.3d at 1369. An argument that the examiner has not produced a factual determination in this regard for the combination of additional elements in the claim as a whole has strength and consistency with the memo, and might be even stronger accompanied by an argument that the examiner has not produced a factual determination in this regard even under 35 USC §103 or 35 USC §102, in cases where either there is no remaining rejection under 35 USC §103 or 35 USC §102, or such rejection has been argued strongly.

If an examiner cites an express statement in the specification or a statement made by an applicant during prosecution (see pages 3 and 4), as a factual determination that additional element(s) are well-understood, routine and conventional, a strategy of detailed analysis of the cited statement in response could counter an overbroad and thus unfounded assertion in the Office action, when such is the case. Analysis could reveal that the statement made in the specification or during prosecution pertains to a specific element, or a specific aspect of a known use of an element, but does not more broadly establish that claimed aspects or the element in combination with other elements i.e., the “combination of additional elements”, is well-understood, routine and conventional. This strategy is also applicable to citation of a court decision or a publication (see page 4), and can be set forth as a factual determination, and even as a factual determination that refutes the examiner’s factual determination.

A final strategy is derived from the wrap up of the memo (see page 5), which reminds that, “to represent well-understood, routine, conventional activity, the additional elements must be widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 USC §112(a).” In the event that an office action has issued a double rejection, under both 35 USC §101 for subject matter in eligibility and 35 USC §112(a) for lack of claims enablement in the specification, analysis of the additional element(s) could produce a factual determination effective to counter both rejections. It may be that some aspect(s) of the additional element(s) are described in an examiner cited publication or court decision for the §101 rejection, in sufficient detail that those aspects of the additional element(s) do not need to be written in the specification, but that further aspects of the additional element(s) and/or combination with other elements in the claims are not described in the cited publication or court decision. This can be set forth as a factual finding countering the §112(a) rejection, and also as a factual finding that the further aspects of the additional element(s) and/or the additional element(s) in combination with other elements in the claims are not “well-understood, routine, conventional activity”, thus also countering the §101 rejection.

Takeaways

Assertions of patent subject matter ineligibility made by an examiner must be backed by factual determinations: citation of an express statement in the specification or prosecution, a court decision, a publication, or a statement of official notice, and if not so can be argued as improper.

Official notice can be challenged, requiring examiner production of a factual determination.
A factual determination made by an examiner can be countered by analysis and a factual determination made in response.

Drafting initially, or amending, so that the claim limitations bring about an improvement described in the specification, and arguing such as a factual determination applies towards subject matter eligibility.

Dependent claims as well as independent claims must be examined for subject matter eligibility, and a rejection without such can be argued as improper.

Arguing lack of a factual determination that additional elements are well-understood, routine, conventional activities or elements may be made stronger by a the factual determination that the combination of additional elements is not shown in a 35 USC §103 or 35 USC §102 rejection.

Detailed analysis of a cited express statement in the specification or prosecution as to scope of what is and is not disclosed may refute examiner assertion that claimed aspects or the element in combination with other elements are well-understood, routine and conventional, as a factual determination.

Analysis of an examiner cited publication or court decision may show some aspects of an element are sufficiently well known to counter a §112(a) rejection, but refute that further aspects of the element or the element in combination with additional elements are sufficiently well known to support a §101 rejection, as a factual determination.

Arguing Definitions in Patent Prosecution

2018-03-26T08:29:00.000-07:00

Claim terms are given a broadest reasonable interpretation (BRI) consistent with the specification, ideally. Occasionally, a USPTO examiner interprets a claim term in a manner different from what the applicant in a patent application intended, in order to make a rejection of the claims during patent prosecution. Available options for response include to argue, or amend the claim and argue. What are the pros and cons of each?

Arguing the claim interpretation, from a definition or context in the specification, prevents the loss of equivalents that may occur if a claim is amended. This should preserve the maximum breadth of claims coverage, if this approach works. But, the examiner may accept this, or may continue the rejection, arguing that the specification is not imported into the claims and staying with the previous interpretation of the claim language.

Amending the claim, to bring in a definition or narrowing limitations for the claim term, with support in the specification, can overcome an examiner interpretation of the claim that is overbroad, overreaching, misconstrued, or that refuses to recognize the specification. The amended claim may be subject to loss of equivalents, and all of the usual cautions about claim language for amendments apply. If the claim has already been amended, there may be less concern about surrender of equivalents, and amending the claim may be the more pragmatic approach in circumstances involving an entrenched examiner, anyway.

An examiner interview is an opportunity to present arguments of claim interpretation based on the specification, to see if that line of reasoning can prevail, prior to offering a claim amendment. There is always the option of appeal, should the above approaches not progress the application. Clients that want to preserve a crown jewel, and equivalents in the claims, may prefer arguing without amending, and proceeding to appeal if a claim rejection is continued. Clients that seek to obtain an issued patent with fewer delays and costs may prefer narrowing claim amendment and avoidance of appeal.

Takeaways
Broadest reasonable interpretation of claim terms in light of and consistent with the specification is the standard.
Arguing claim interpretation from the specification, without claim amendment, preserves equivalents in the claim.
The specification is not imported into the claim.
Amending a claim can overcome problematic interpretation of a claim term, but may lose equivalents.
Examiner interview may give insights about arguing versus amending.
Appeal is available, but adds time and costs.

What Patent Attorneys, Patent Agents and Law Firms Need to Know about Communications with Clients

2018-03-06T09:07:00.000-08:00

By Chris Kokoska and Chris Hall

Womble Bond Dickinson (US) LLP

This article originally was published by IP Watchdog.

Patent agents in the United States are authorized to practice in patent prosecution matters before the United States Patent and Trademark Office (“USPTO”). Such authorized practice includes both preparation and prosecution of patent applications as well as appeals and AIA review proceedings before Patent Trial and Appeal Board (“PTAB”). Unfortunately, it has been unclear whether communications between patent agents and their clients are protected as privileged in proceedings before the USPTO or U.S. courts. Recently, however, the USPTO and the Federal Circuit each has clarified that a patent agent’s communications related to his or her authorized practice are protected in the same manner as attorney client communications, such as those by patent attorneys. Specifically, in In re Queen’s University at Kingston,[1] the Federal Circuit affirmed the privilege between patent agents and clients for communications reasonably connected to the preparation and prosecution of patent applications. The USPTO, meanwhile, finalized rules in December further clarifying the scope of the privilege in AIA proceedings.[2] Interestingly, while the court decisions don’t address privilege with respect to foreign jurisdiction patent practitioners,[3]the USPTO rules further provide for protection of privileged communications between foreign practitioners and U.S. practitioners or clients.[4]

Patent practitioners certainly appreciate the clarification from multiple authorities, but potential gaps in protection remain. Notably, there may be a lack of protection for correspondence with foreign associates on matters not related to preparation and prosecution of patent applications. In addition, protection may not be afforded in state courts, which are not bound by USPTO or Federal Circuit decisions. In view of potential gaps in protection, many practices may choose to keep caution as the general rule for correspondence with patent agents.

By way of example, although the USPTO rules indicate that foreign associates will be given the same privilege in AIA proceedings as those that are afforded to patent attorneys, federal and state courts have not addressed whether communications with foreign patent practitioners will be afforded privilege. So while communications between foreign patent practitioners and United States clients may be protected in proceedings at the PTAB, the same protections may not be provided in other countries, or federal or state courts.

Further, state courts are not bound by USPTO rules or Federal Circuit law[5]. Accordingly, to the extent a patent agent’s communications regarding his or her authorized practice are at issue in a state court proceeding that can’t be removed to a federal jurisdiction, the communications may not have the same protection as that provided in a federal court or AIA proceeding. Although the circumstances under which communications between a patent agents and a client would be discoverable in litigation in state court are limited, the potential admissibility in various states leaves a gap in the potential privilege.

Lastly, communications that exceed the authorized practice of patent agents “fall outside the scope of patent-agent privilege”.[6] The new USPTO rules state that the privilege is limited to those communications “reasonably necessary and incident to the scope of the practitioner’s authority.”[7] The Federal Circuit decision in In re Queens goes even further to clarify that privileged communications are limited and privilege does not apply to those “communications with a patent agent who is offering an opinion on the validity of another party’s patent in contemplation of litigation or for the sale or purchase of a patent, or on infringement,” because such communications “are not reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office.”[8]

Most patent agents do understand the scope of their role in providing a service to their clients. However, it is imperative that attorneys supervising patent agents ensure that any work product or communications provided by a patent agent fall within the authorized scope of the patent agent’s work. For instance, technical expertise provided by a patent agent may be worthwhile in an infringement, licensing, validity, or other legal analysis, but to the extent a patent agent is putting such opinions in writing, privilege may not protect such analysis in potential litigation. Patent agents are not legally allowed to practice law outside of patent prosecution matters.[9] However, under the direction of a patent attorney, a patent agent can perform research and draft written analysis, opinions or recommendations that the patent attorney then reviews, approves or edits, signs and communicates to a client, which is then a protected communication under the attorney-client privilege. In contrast, communication directly between a patent agent and a client on matters that are outside of the scope of the patent agent’s authorized practice would not be protected.[10]

Patent agents often have been advised by supervisors to communicate directly with clients only on matters related to patent drafting and patent prosecution, and to route any other work to and from clients through a supervising attorney. That policy, when followed, has long protected patent agents from accidentally straying into the practice of law that is not within the scope of a patent agent’s authorized practice and could cause trouble for clients and law firms alike. But now, such caution and practice is seen as consistent with the treatment of patent agent-client and patent attorney-client communication.

The use of patent agents to prosecute patent applications in the United States confers several benefits to clients, such as cost reduction, and the provision of specific knowledge or expertise in specific technical areas. While recent clarification from the USPTO and the Federal Circuit appear to offer the protection of privilege to certain authorized communications among patent agents and clients, the best practice for now, at least, is to continue limiting communication between clients and patent agents in view of assurances provided by the more certain and complete privilege provided to attorneys. Additionally, as with patent attorneys, in many cases the best option is to continue to avoid emails or other correspondence by patent agents that could be harmful if discoverable later. For example, even protected communications may become discoverable if privilege is later waived, intentionally or not. As many attorneys are told when beginning their legal career, picking up the phone for a quick call is often the best option. That being said, additional protection of patent agent correspondence should offer some comfort to patent practitioners and clients alike.

[1] In re Queen’s University at Kingston, 820 F.3d 1287 (Fed. Cir. 2016).

[2] 37 C.F.R. § 42.57 (2017).

[3] See e.g., In re Queen’s.

[4] 37 C.F.R. § 42.57 (2017).

[5] Amanda Frost, “Inferiority Complex: Should State Courts Follow Lower Federal Court Precedent on the Meaning of Federal Law?”, Vanderbilt Law Journal no. 53 (Jan. 2015).

[6] In re Queen’s, 820 F.3d at 1301.

[7] 37 C.F.R. § 42.57 (2017).

[8] In re Queen’s, 820 F.3d at 1301-1302.

[9] Id. at 1315.

[10] In re Queen’s, 820 F.3d at 1301.

Arguing Connections and Relationships in Patent Claims

2018-01-18T11:57:00.000-08:00

During examination of claims in a patent application, claim rejections from the USPTO (United States Patent and Trademark Office) under 35 USC §102 and/or 35 USC §103 usually assert that one or more cited references show all of the elements in the claims. It is usually not too difficult to find issued patents, patent application publications, or non-patent literature that shows many, or even all of the tangible elements that are in the claim, the so-called fundamental building blocks, components or pieces of an apparatus or that are used in a method. But, is this sufficient for a proper rejection of the claims?

A well-written claim should be more than just a preamble and a list of tangible elements, and should also recite the connections or relationships among the tangible elements, and possibly the functions the tangible elements perform or are capable of performing. These connections and relationships are also elements. Possibly, it could be arguable that the connections and relationships are not tangible elements in the narrowest sense of tangible being something you could reach out and touch or hold in your hand. But, the connections and relationships are tangible in the sense of being a real part of an invention. A claim rejection that shows only the narrowly definable, physically tangible (touchable) elements of the claim has not shown all of the elements of the claim.

Facing such a rejection, the patent practitioner can argue that the reference(s) cited in the Office action do not show this connection or that relationship among the elements that are shown. Where this gets subtle is that sometimes a reference shows several tangible elements and a relationship among these tangible elements, and another reference shows another tangible element and a relationship to some other tangible element in that reference. But, where there is no relationship or connection shown between a tangible element in one reference, or a relationship between tangible elements in one reference, and the tangible element or relationship in another reference, that can be argued as not showing all of the elements and all of the relationships among the elements, in the claims.

Patented Halloween, Thanksgiving and Christmas Inventions

2018-01-16T09:02:00.000-08:00

Part of the enjoyment of Halloween and Christmas is seeing the clever decorations and novelties people come up with for these two celebrations. But did you know, some of these are patented inventions? With (belated) Season’s Greetings for you, however you celebrate the holidays or this time of year, the following are presented for your pleasure.

NOVELTY HALLOWEEN PUMPKIN, US 3,250,910 (Raymond R. Authier, issued May 10, 1966) has a plurality of face representations, each lighted differently from the other using a dry cell battery and an electric lamp bulb. Safer than a candle, no doubt. Life size Halloween novelty item, US 7,878,878 (Darren S. Massaro, issued February 1, 2011) has motion sensors, a voice recorder and speaker, and a reservoir of fluid with timed electromagnetic valve inside a head that allows fluid to expel out of orifices attached to a tongue when the item is approached. Eek! Halloween portable container, US 7,594,669 (Linda Acosta, granted September 29, 2009) is a portable apparatus with container element and cover element in the form of a Halloween object on a wheeled base, which may be pushed or pulled or maneuvered by a gripping element. Presumably, this is for receiving treats while out trick-or-treating, and hauling back home.

Toy stuffed animal having convertible configurations, US 6,962,517 (David Murray, issued November 8, 2005) emulates awakening when the user touches locations and activates a prerecorded message, and has multiple configurations with different head portions, reversible hands, paws or legs and a rear flap that is reversible as a coat or garment. Appearance can be altered to dress the character in a festive holiday garment for Christmas, Easter, Thanksgiving, New Year’s, Independence Day, Halloween, Valentine’s Day, or St. Patrick’s Day. Decorative lights with addressable color-controllable LED nodes and control circuitry, and method, US 7,131,748 (Dennis Michael Kazar et al., issued November 7, 2006) has switch settings and holiday color schemes for most major US holidays, including Christmas, Valentine’s Day, St. Patrick’s Day, Easter, Independence Day, and Halloween.

Fire safety Christmas ornament, US 4,113,020 (Anthony Panetta, issued September 12, 1978) is for a Christmas tree ornament containing fire extinguishing powder. Remember when people used to put lighted candles on Christmas trees before the electric lights were invented? Light strand Christmas tree for flagpole, US 8,678,615 (Gordon Ko, issued March 25, 2014) is a string light Christmas tree kit, raised with rope and pulley and supported from a flagpole. Now, your Christmas tree is no longer at ground level. Artificial Christmas tree, US 1,606,535 (Jakob Hojnowski, issued November 9, 1926) is an improvement on the artificial Christmas tree, and has exchangeable branches sections so that different types of trees can be simulated, and is readily assembled and disassembled. You can reuse your Christmas tree. Christmas tree vibrator, US 2,522,906 (Leo R Smith, issued September 19, 1950) imparts a slight two-dimensional vibration to the tree and its decorations, using an electric motor, thereby enhancing the appearance and obtaining a pleasing sound from the decorations so vibrated. One hopes the ornaments don’t get vibrated right off of the tree. Apparatus for the production of Christmas crackers, US 3,264,797 (Philip Steward Powling, issued August 9, 1966) presents an improved method of tying the ends of the Christmas cracker after forming shapes of various materials into a cylinder, filling the cylinder with novelties and favors and inserting a snap. These are fun to open.

Negative Limitations in a Patent Claim – Broad or Narrow?

2017-09-29T08:33:00.000-07:00

Negative limitations, using words like “not”, “without”, or “excluding” in a patent claim, understandably make patent practitioners and clients nervous. Generally, positive limitations are preferred and negative limitations are to be avoided. Why is that?

Scope of positive claim limitations affects the claim in the same manner as it does the limitation itself. A narrow claim limitation, positively stated, makes the claim as a whole narrower than a broader claim limitation affecting the same subject matter. A broad claim limitation, as you might expect, makes the claim as a whole broader than a narrower claim limitation.

Negative limitations behave the opposite of this. Excluding a narrow amount of subject matter makes the claim broader than excluding a broader amount of the same subject matter. Excluding a broader amount of subject matter narrows the claim more so than excluding a narrower amount.

Claim scope analysis is vital when crafting a claim. The above characteristics of negative claim limitations suggest a test for claim scope when using negative claim limitations. Is what is being excluded narrow or broad? Is what remains, i.e., what is still included in the claim, narrow or broad? If the answers to these tests conform to the above characteristics of negative claim limitations, that suggests analysis is correct, and the patent practitioner now has a solid understanding of the scope of the claim and can proceed with writing more claims, etc. If the answers to these tests are inconsistent with the above characteristics of negative claim limitations, or are counter to the intended scope of the claims, this suggests the claims should be rewritten or reworked, as there is a strong possibility of confusion for claim interpretation, or argument over claim scope. That is an undesirable situation for patent prosecution and possible later tests in courts.

Whenever negative claim limitations are contemplated, it is wise to consider whether there are positive claim limitations that can more safely express a desired claim scope. Instead of a claim limitation of “without requiring X”, would “independent of whether X is present” work? Instead of “A and not B”, would a “B-less A” or “non-B A” do the job?

A narrower, more extensive set of positive limitations could make it clear that the excluded element is not used. Another solid tactic is to use well-written definitions in the specification to show that A is not equivalent to B, so that when the claims recite A, it is clear that the claims exclude B. Claim amendment during prosecution to include part of this definition in the claim could progress the examination without needing negative limitations in the claim.

Sometimes, during patent prosecution, an examiner will turn up some close art, and the patent practitioner may need to carve around the art by amending the claims to include negative claim limitations specifically excluding some aspect of the close art. An explicit limitation of “excluding X” or “without performing/executing/adding/etc. Y”, when the art shows X or Y, might well suffice, provided the above cautions are observed about scope. But it could also be worthwhile to try writing variations on this, using positive limitations or positive ways of stating negative limitations, as outlined above, and then test each of these to see which one is most suitable. One could even try amending each of three independent claims using a different tactic, to preserve breadth of scope.

Takeaways

• Exercise caution with negative claim limitations.

• Try using positive limitations with various wordings instead of negative claim limitations.

• Definitions in the specification can be brought into the claims to exclude an interpretation or possibility.

• Amending multiple independent claims using different tactics can preserve breadth of scope.

• Test scope of various possibilities for claim limitations. Scope, as a whole, for negative claim limitations behaves opposite that of positive claim limitations, i.e., the narrower the exclusion, the broader the claim.

Testing a Patent Claim against an Abstract Idea, in Response to 35 USC §101 Rejection

2017-08-11T08:35:00.000-07:00

USPTO (United States Patent and Trademark Office) rejection of a patent claim, alleging the claim is not significantly more than an abstract idea under 35 USC §101, is a frequent and often frustrating occurrence during patent examination of claims in any technology that involves computers, controllers or processors. Here is another useful strategy the patent practitioner can use in writing a response to an Office action, or an appeal brief.

Suppose a USPTO examiner has written a rejection that the claims amount to nothing more than the abstract idea of a mathematical calculation (or other abstract idea) plus the instructions to implement it on a generic computer, and are therefore directed to patent ineligible subject matter. The patent practitioner could get into a back-and-forth argument with the examiner about whether or not claim limitations are significantly more than the abstract idea, wasting multiple cycles of examination because examiners can be very difficult to convince of this. One promising approach is to argue that the claims are directed to a specific technological solution to a specific technological problem, as has been successful in the courts. But, even this may not be convincing, if argued in the abstract, because, after all, we are dealing with abstract ideas to begin with, and it is all too easy for an examiner to dismiss an abstract argument as “not convincing”.

A concrete, bright line test can be constructed, which may sway an examiner (or appeal board, if the rejection is appealed). Articulate a specific technological problem that the claims solve or are directed to solving. Analyze the claim and cite some of the important claim limitations that are not present in the alleged abstract idea, and explain the significance of these claim limitations in terms of the technological problem and technological solution. Then, compare the abstract idea, for example “mathematical calculations” in and of itself, without the claim limitations that extend beyond the abstract idea, to the technological problem. Does the abstract idea in and of itself, with or without a generic computer, solve the technological problem? Of course not. Does the abstract idea plus the claim limitations that extend beyond the abstract idea, solve the technological problem. Yes, the combination of abstract idea plus claim limitations that extend beyond the abstract idea does solve the technological problem. This means the claim as a whole amounts to significantly more than the abstract idea plus the instruction to implement the abstract idea on a generic computer. This bright line test makes it very difficult for an examiner to prove that the claim is nothing more than an abstract idea implemented on a computer. The examiner would either have to prove that the additional claim limitations are mere field of use limitations, which assertion is readily refuted through the above analysis, or that the claim as a whole does not solve the specific technological problem, which you have just demonstrated it does. This carefully constructed argument passes logical rigor, and any attempts in further patent examination to defeat it can be addressed on a point by point basis with factually based logic.

Takeaways
• Concrete statement of a specific technological problem that the claims solve or address lays a strong foundation for arguments of patent eligible subject matter under 35 USC §101.
• Testing to see whether the abstract idea in a claim rejection solves the specific technological problem provides a basis for comparison with the claim as a whole.
• Testing to see whether the abstract idea in combination with the claim limitations that are beyond the abstract idea solves the specific technological problem provides a comparison for the claim as a whole versus the abstract idea.
• Once the abstract idea has been compared with the claim as a whole, in light of the specific technological problem, the conclusion can be drawn that the claim is significantly more than the abstract idea with instructions to implement it on a generic computer.

Inherency and Patent Claims

2017-05-01T08:45:00.000-07:00

A patent claim can be rejected for inherency over a reference. An inherent property cannot be claimed, even if that property was not known at the time a prior art composition was disclosed or prior art invention was made. But, what happens if a new invention makes use of an inherent property, and this new use is not known by others? This is where the art of claims drafting comes in.
Claim limitations directed to an action that makes use of this inherent property could be argued as novel or unobvious, if the known reference(s) only disclose the original article, composition, process that results in a compound or article, etc., but do not disclose the new action that makes use of the inherent property. Relatedly, claim limitations directed to a structure that makes use of an inherent property could be argued as novel or unobvious, if the known reference(s) explicitly or implicitly suggest the inherent property, but do not explicitly show or suggest a structure comparable to the claimed structure.

Whether arguments about novelty or unobviousness in such a case would be successful is going to depend on the inherent property itself and what can be deduced from the inherent property, as far as usage of the inherent property and structures that make use of the inherent property.
Here are a couple of generic, fictional examples. Suppose it is inherent that the two different types of memory shown in a reference include fast memory and slow memory. Even if the reference doesn’t explicitly say one of the types of memory is faster than the other, a claim to some structure that has fast and slow memory is readily rejected as inherent over this reference. But, a claim to using the faster memory for some new function and using the slower memory for some other new function, or the structural combination of these functions and the memories, might be novel or unobvious over this reference, depending on what those functions are and whether how they make use of the faster and slower memories could be directly inferred from the reference(s).

Suppose it is inherent that some article or compound has some types of behavior or characteristics over various temperature ranges. A claim to the article or compound exhibiting these types of behavior or characteristics at the various temperature ranges is readily rejected, even if the cited prior art reference(s) do not explicitly disclose these behaviors or characteristics, and they are later determined, because the article or compound itself is known in the prior art. But, a claim to some use of one of these behaviors or characteristics of the article or compound at some specified temperature or temperature range, or a structure that makes use of one or more of these behaviors or characteristics over some temperature range might be novel or unobvious, if the prior art does not teach or suggest the use or the structure.

Keep in mind, apparatus claims can be directed to a structure, or a structure that performs a function (i.e., functional claiming), method claims are directed to a series or sequence of steps (or actions), and the associated claim limitations are what are compared to cited references during patent examination. Writing the claim limitations, or amending them during examination, so that the claim limitations exhibit more than just the inherent characteristic(s) of a known material or known structure, for example by showing a new structure or new combination of steps or actions, is a strong strategy to take when faced with possible rejection over inherent characteristics.

Recursive and Iterative Algorithms in Patent Claims

2017-02-13T08:36:00.000-08:00

Some inventions operate in a recursive or iterative manner. This could be so of a machine that repeats actions or functions on a single article or to produce multiple articles, or operates on data.

Software-based inventions, with computer programming sometimes execute recursive or iterative algorithms. Even so, claiming for the invention might not need to invoke recursion or iteration, as the point of novelty might involve a characteristic or a function itself, and the repetition of that series of actions or functions is a necessary for the novelty. In that case, it may suffice to mention recursion or iteration in a dependent claim. Or not, if it really isn’t needed.

But, what if the recursion or iteration is important to the point of novelty? How could that be represented in a claim, without the claim becoming overly complex and wordy, or worse yet, the claim resembling a software listing? Below is a handy template for a claim that can be written compactly and elegantly, focusing on the recursion or iteration.

[Independent claim] 1. A method of [performing a function], performed by [a machine, possibly a computer-based machine], the method comprising:
[some preliminary action, introducing input(s)];
proceeding, starting with the [input(s) or initial value(s) or state of the machine], to [perform a function] in an iterative or recursive manner, with [some intermediate parameter value or machine state] acting as a [initial value or state of the machine] for a next iteration, until [some condition is satisfied or a result is produced];
and
[some later action, making use of the result, output or end-of-iteration or recursion final state of the machine].

Claims written with the above template capture initial values, iterative values and results in the context of an iterative algorithm tied to a machine (which could be a computing machine of some sort, for computer-based algorithms). Variations on this can be written for tangible media and for system claims. This approach should pass muster for arguments and subject matter patent eligibility under 35 USC §101, because the algorithm and presumably tangible result are inextricably tied to the machine that is executing the algorithm, so that a computer is not a mere field of use limitation.

Takeaways:
– Decide whether recursion or iteration is important to the novelty of an invention.
– If so, figure out what are the inputs, outputs, intermediate values or states that should be captured in the claim.
– The template provided above can be adapted for method, tangible media and system claims involving recursion or iteration as part of the novel functionality of a mechanical or computing machine.
– Emphasis on a useful result, and the necessity of the machine operating in recursion or iteration, in the claim is a vital part of this strategy.

Rapid Patent Application Claims Drafting Technique

2016-09-15T08:50:00.000-07:00

Here is a technique for rapidly drafting claims, for a patent application. This is a brainstorming mechanism that works for one person, or two, or more, and uses a free-form drawing or diagram to both gather words and prompt writing. Patent claims, after all, are collections of words in a highly stylized format, describing an invention. Grab a piece of paper, pencil and eraser, or pen. Or use a whiteboard or a computer application. While thinking about the invention to be claimed, write down a phrase that is at or near the point of novelty. Or, write down a few sentences or a paragraph describing the invention. Get another piece of paper, if necessary, or continue on the same paper.
On the paper, write, optionally with a circle or shape around each one, key words, phrases, actions that are part of or essential to the invention. Draw lines connecting some of these. Write words or phrases on some of the lines, in explanation of the connections.

Now it’s time to start writing the claim. What is the invention? An article, a system, a method? Pick one type of claim, and write the preamble to the claim, naming the invention or describing a purpose or function of the invention, using some of the words from the paper. If actions are involved, what is the actor for a system or method claim?

What are the pieces of the invention, and how do they interact or fit together? If a method, what are the pieces that are used in the method, and what do they do or what is done to or with them? Choose some of the words or phrases for the pieces, and some of the words for actions and/or connections. Put these together into a sentence fragment, and write that down as part of the claim. Repeat this step, forming other sentence fragments. It is not necessary at first cut to connect all of the sentence fragments, although sometimes that is the way to proceed. It is not necessary to arrange the sentence fragments in the final order for the claim, at first, although sometimes that happens.

Connect one sentence fragment and another sentence fragment, with an action or a connection, again using words from the drawing. Any of the above may prompt adding some more words, lines for connections, or notes on the drawing. And, that may prompt picking more words for sentence fragments are connections between sentence fragments. Draw arrows to show rearrangement of phrases, other connections to capture. Draw arrows to show causes, results, and attach words to these. When you have enough written out this way, do a more formal draft of the claim using a word processor and computer screen. Proceed from one independent claim to another and another, or to dependent claims, or back and forth among these.

The process is iterative, free-flowing, dynamic. There is no one correct way to do this, if any of it helps you write a claim, it’s useful. Alternatively, you can do all of this in your head, and use the above as a conceptual framework for claims drafting. Of course, claims refinement should be practiced along the way. Decide what claim terms, actions, connections etc. should be moved to dependent claims, and which claim terms can be simplified or broadened, as well as which claim terms need to be narrowed or made more specific. Crosschecking back to client disclosure, original thoughts or notes, to make sure that claiming is on track with best understanding of the invention and client needs is a good process to do more than once. All part of the art of patenting.

A Response to Rejections Under 35 USC §101

2016-08-02T09:05:00.000-07:00

By Christopher Hall & Mike Gencarella

Here is an argument we are using in response to rejections under 35 USC §101 that allege the claims are directed to an abstract idea and are patent ineligible. This is useful in Office action responses, and appeals.

The situation we have seen multiple times is that the Examiner, in an Office action, rejects the claims and cites a small number of the claim elements such as “a processor” “a memory” “a module,” and an alleged abstract idea such as an algorithm or data processing, and states that the claim limitations, considered individually and as a whole, are not significantly more than the abstract idea.

The argument, submitted in a response to the Office action or in an appeal, is that the Examiner and/or the Office action have committed a procedural error, and failed to analyze all of the claim limitations. The assertion that the claim limitations considered as a whole are not significantly more than the abstract idea is an unsupported allegation, because the claim limitations as a whole have not been considered. The only claim limitations cited in the rejection are the above-mentioned small number of claim elements, and the remainder of the claim limitations have neither been cited nor analyzed. Because the Office action has a procedural error, the rejection is improper and invalid, and should be withdrawn.

Prior Art and Continuation-in-Part Claims

2016-05-03T09:03:00.000-07:00

What are the dates to which prior art must adhere, in examination of claims in a continuation-in-part (CIP) nonprovisional patent application? Each claim in a CIP, whether independent or dependent, has its own priority date. Each claim in a CIP that is fully supported in the parent application should be examined in comparison with prior art that has a filing date preceding the filing date of the parent application. Generally, any claims in a CIP that are not supported in the parent application (i.e., which would have been new material and disallowed in a continuation or divisional application) can be examined in comparison with prior art that has a filing date preceding the filing date of the CIP. This can get messy if there is a long chain of continuations mixed with one or more CIP applications. Even the parent application itself can be cited as prior art for any CIP claims not supported in the parent (see, e.g., Dennis Crouch, Patentably-O, “Continuations-in-Part (CIPs) and Priority Claims”, September 7, 2012, and “A Higher Written Description Standard for Negative Claim Limitations?”, September 6, 2012, both writing about Santarus v. Par Pharma (Fed. Cir. 2012), brought to my attention by a colleague, Patent Attorney Reg Ratliff).

It is hypothetically possible that a CIP application, during examination, could have an allowed independent claim supported in the parent application, and a dependent claim not supported in the parent application and rejected with art that is newer than the parent application filing date but older than the CIP application filing date. This would appear to contradict the common (and usually believed inviolable) situation that when an independent claim is allowed, its dependent claims are almost always automatically allowed (e.g., unless they suffer from an objection or some other, non-art related rejection such as under 35 USC §112). And, the above is the opposite of the occasionally seen rejected independent claim and allowed dependent claim. Would this seeming paradox be resolved by moving up the independent claim to have the same priority date as the dependent claim, since the independent claim is inclusive of the dependent claim? But then, two claim sets, one with just that independent claim, and the other with that independent claim (or a slight variation of it) and the dependent claim supported in the CIP but not supported in the parent application would have two different priority dates for the (relatively) same independent claim. The single independent claim (or one followed by parent-supported dependent claims) would have the priority date of the parent application, and the variation independent claim with the newer dependent claim would have the priority date of the CIP application. Another paradox.

This curious situation aside, there are some subtleties worth exploring in terms of claim strategy, and which may prove advantageous towards getting claims allowed, which the following genericized examples elucidate.

Suppose the parent application discloses A, B and C, and prior art preceding the filing date of the parent application only shows A and B in combination, but not the combination of A, B and C. The CIP discloses and claims a method of using A and B, and discloses variation methods for using A and C, and using A, B and C. During examination of the CIP, prior art preceding the filing date of the CIP is found showing a (similar enough) method of using A and B, which thus anticipates or makes obvious the present claim. What are some options for amending and arguing the claims?

A method of using A, B and C, if satisfactory to the client and not shown in cited references might be a good choice for an amended claim. What happens if a reference showing a method of using A, B and C is cited during examination? Well, if that reference predates the filing date of the parent application, the amended claim is anticipated (and the parent application is likely at risk). But, if that reference is later than the filing date of the parent application, albeit predating the filing date of the CIP, there may be some room for argument. True, the method itself is now shown to predate the filing date of the CIP, but the combination of A, B and C is not shown to predate the filing date of the parent application. One could argue that, since the combination of A, B and C appears in the parent application and is relied on in the amended claim limitations to show novelty supported by the filing date of the parent application, that the amended claim limitations should have the same priority date as the parent application. A proper rejection of the amended claim would have to show the combination of A, B and C was known prior to the filing date of the parent application. Success or failure of the argument may depend on the nature of support for the combination in the parent application in comparison to the claim language in the CIP, especially if negative limitations are involved (see Dennis Crouch, op. cit).

An even stronger argument can be made if a rejection of this amended claim combines multiple references, even if some of them predate the filing date of the parent application. If these references, singly or in combination, do not show the combination of A, B and C is known prior to the filing date of the parent application, especially if some aspect of the motivation cited in the rejection relies on taking a reference that is after the filing date of the parent application, the argument can be made that these references are not properly combined to show A, B and C prior to the filing date of the parent application.

Alternatively, a method of using A and C might be acceptable to the client, and, if not shown in cited references or generally known, might be a worthwhile claim amendment to pursue. The client might actually be interested primarily in protecting a method of using A, and most competitors would use A and C because B is more expensive or not as reliable, etc., so this would get useful patent protection for the products the client is actually going to make and sell. These are just examples, and one could develop others with structures and/or methods to explore how prior art and CIP applications interrelate. This is all part of the art of patenting.

Formal Logic Reveals Hidden Dangers of Logical Fallacies in Patent Claim Rejections

2016-04-20T09:35:00.000-07:00

There is no statutory requirement that formal logic be adhered to during examination of patent claims. Examiners and patent practitioners are free to use a wide variety of discussion and argument styles and topics, and these tend to be specific to the subject matter at hand and more informal than reliance on pure, formal logic. Yet there are times when a formal logic fallacy is committed in the rejection of a claim, and formal logic tools can be applied to the specifics to analyze and then formulate a response to refute the rejection. The following (fictionalized) example is given in generalized specifics, and followed by a formal logic discussion.

Suppose the independent claim under examination has, as an intended point of novelty, claim limitations involving moving an object (if this is a physical machine) or some specific data (if this is a processor-based invention) to a specified location responsive to a condition that the object or the data has some specified property, and leaving the object or the data where it was if the object or the data does not have the specified property. The Examiner, in an Office action rejecting the claims, has set forth a first reference that shows two possible locations for an object or data, and moving the object or data from the one location to the other. The Examiner has set forth a second reference that shows various conditions and properties the object or the data could have, and various operations that could be performed on the object or the data responsive to the object or data either having or not having the various conditions and properties. The Office action asserts that the claim limitations of “leaving the object or data where it was, and moving the object or data from where it was to the new location” are shown in the first reference, and the claim limitations of “responsive to the object or data having or not having the various conditions and properties” are shown in the second reference, therefore all of the limitations are shown in the combination of the references. Can you spot the logical fallacy in this argument?

In terms of formal logic, there is a logical fallacy in the proposition set forth in the rejection of the claims. The proposition is of the form of showing A in a first reference, and “responsive to condition B” in a second reference, with that assertion that this proves “A is responsive to condition B”. But, neither reference teaches a logical connection between A and B. The second reference teaches actions, in the second reference, that are responsive to condition B. The first reference teaches action A, possibly responsive to conditions taught in the first reference. But, the conditions in the first reference are not equivalent to the conditions in the second reference, and the actions taught in the first reference are not equivalent to the actions taught in the second reference. The two teachings cannot be logically combined to prove that A is responsive to condition B. That this is a logical fallacy can be shown by reductio ad absurdum, a formal logic proof style. Suppose that the proposition that A shown in the first reference, and “responsive to condition B” shown in the second reference, does show that A is responsive to condition B, is true. But, while the second reference teaches that action C is responsive to condition B, the second reference also teaches that action D is responsive to not condition B, which could be called action D is responsive to condition E. By the logical proposition, the combination of the first reference and the second reference therefore teaches that A is responsive to condition E, which is equivalent to A is responsive to not condition B. But, this contradicts the supposition that the combination of the references teaches that A is responsive to condition B. The two are in logical contradiction, which now disproves the proposition, by reduction to a contradiction or reductio ad absurdum.

In terms of arguments to be made during examination of patent claims, there is no teaching to combine the references. That the second reference teaches some other actions responsive to the condition that the object or the data has or doesn’t have some specified property has no bearing on whether or not the actions of leaving the object or data where it was, or moving the object or data from where it was to a new location as taught in the first reference are to be performed responsive to the conditions in the second reference. They are independent of one another, and neither reference teaches the connection between the actions in the first reference and the conditions in the second reference. Therefore there is no teaching to combine. Any Office-cited general-purpose motivation, such as that the two references are in the same or related fields, are general in nature, and do not direct or reveal that purported specific connection between the actions in the first reference and the conditions in the second reference. A proper combination of the two references would teach that the actions of the first reference are performed responsive to the conditions in the first reference, and the actions in the second reference, unrelated to those in the first, are performed responsive to the conditions in the second reference, unrelated to the conditions in the first reference. Only if one or both references teach a connection between actions in the first reference and conditions in the second reference would they be properly combined to show the claim limitations.

Returning to formal logic, the logical deduction from the proof by contradiction or reductio ad absurdum is that the combination of reference one and reference two shows that the actions A shown in the first reference are not dependent on the conditions B shown in the second reference, since the (fallacious) logical proposition could be used to show that action A is responsive to both B and not B. In other words, condition B is a “don’t care” condition for action A. Formal logic shows that the two references do not establish a connection between action A and condition B (or not B). In formal logic terms, according to the (fallacious) logical proposition and what is shown in the two references, A is dependent upon (B or not B), which logically resolves to just A (independent of or not dependent on any state of condition B).

Thus, the formal logic proves the invalidity of the proposition in the Office action, and the validity of arguing that the references do not teach or establish any connection between the actions of the first reference and the conditions in the second reference. Practically speaking, where formal logic is a useful tool is when it is not immediately clear how to argue against a claim rejection that somehow feels fallacious or just plain wrong. Formal logic can point to a logical fallacy advanced in the rejection, which can then point to what specific claim terms and what specific factual findings to apply and arguments to refute the rejection. For the patent practitioner, abstracting the rejection to formal logic terms clears away the specific details of the subject matter, and lets us look at whether or not the argument proposition or format itself, advanced in the rejection, is based on sound reasoning. If the argument itself is employing fallacious logic, the patent practitioner can then resolve this to the specific details of the subject matter, and develop a response strategy with reference to those details. While formal logical will not necessarily develop every possible response or argument (see, e.g., the incompleteness proof by Goedel), it can be used as good guidance and is a useful tool to have in the toolkit. The above examples are just one application of one part of formal logic, and there are many more constructs in formal logic and many more places where it can be applicable in reasoning during patent claim examination. This is all part of the art of patenting.

Claims Strategies in Patent Applications – Matching or Varied?

2016-02-01T09:22:00.001-08:00

Up to 20 claims, including three independent claims, are paid for in the standard filing fee for a US non-provisional patent application. Some clients prefer matching claims in the claim set, others prefer varied claims. What are the pros and cons of each?

Matching claims have identical or near-identical claim language across the independent claims and again across the dependent claims, and near identical scope. Varied claims have different words, phrasing, punctuation and/or scope. For example, a claim set could have a method for the first independent claim, a tangible, computer-readable media with instructions for a processor to perform a method as the second independent claim, and a system in which components perform actions of a method, as the third independent claim. Clearly, these claims have at least slightly different scope, as one is to a method, one is to a media and one is to a system. In a matching claim set, these three types of claims would have different preambles, and the bodies of the independent claims would have identical or near-identical claim language tailored to meet the preamble. In a varied claim set, different claim terms, nouns, verbs, adjectives, structures, connections among elements, actions, relationships among elements, etc., can be employed to capture various novel aspects.

Matching claim sets have the advantage that they may be relatively easier to prosecute, since the arguments need be made only once (e.g., for the first independent claim and the first of any dependent claims argued). Arguments for subsequent independent claims and dependent claims can just reference the earlier arguments. Amendments, similarly, need be crafted only once for the first independent claim and any dependent claims that depend from it, as needed, and then copied (or slightly modified) for the other two independent claims and respective dependent claims. This can save costs for a client, since it should take less time to write amendments and arguments.

Varied claim sets have the advantage that they cover more scope for the invention. They can also allow for exploration of different amendments, to see which one has better success during examination. For example, if one independent claim has allowed subject matter, and the other two don’t, the strategy followed in the successful independent claim can be propagated to the other two independent claims. A varied claim set may have a (slightly) better chance of surviving legal challenge, with one branch of claims surviving, although claims often stand or fall together in the courts.

A varied claim set can get restricted during examination. This isn’t necessarily good or bad, just something to be aware of. A restriction requirement, and the paperwork to elect an invention and select corresponding claims, followed by submitting additional claims to fill out the claim set again for examination, can add to costs and delays for a client.

Matching claim sets can be easier to handle for PCT (patent cooperation treaty) and foreign applications. It is easier to meet the unity requirement, and likely also easier to communicate across different languages, with a matching claim set. There are also licensing considerations, however licensing issues are beyond the scope of this article. Ultimately, with all the above considerations, it can also just come down to personal preference. Write them the way they want them. All part of the art of patenting.

Patent Claim Preambles Post-Alice

2015-12-15T08:38:00.000-08:00

What is in the preamble of a patent claim? And, can the contents of the preamble influence the claim examination process? Ever since the US Supreme Court ruling in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., patent claims have faced an elevated possibility of being rejected under 35 USC §101 as being directed to an abstract idea, or being not significantly more than an instruction to implement an abstract idea on a generic computer. The preamble introduces the limitations of the patent claim, and in so doing, sets the stage for interpretation of the claim and examination of the claim. Often, the preamble acts as a sort of title for the claim, and suggests a focus or primary subject matter for the claim.

We patent practitioners have seen, in Office actions from the USPTO (United States Patent and Trademark Office), rejections of claims in which the material in the claim preamble is paraphrased or even quoted word for word as an abstract idea to which the claim is allegedly directed. This suggests a strategy for claim preambles. We may consider writing claim preambles that set forth just enough of an abstract idea to where there is plenty of material in the claim limitations, outside of the claim preamble, that can act as the “significantly more” that the Alice ruling suggests claims that have patent eligible subject matter should have. Too narrow a claim preamble might leave not enough in the claim limitations to convince an Examiner that the claim has significantly more than an instruction to implement the abstract idea (as set forth in the preamble) on a generic computer. Too broad a claim preamble, for example claiming just A method, comprising:, or A system, comprising:, does not set forth anything that the Examiner could grab as an alleged abstract idea and so does not shape the examination process.

An article, “Judge Lourie Suggests Jepson Claims For Patent Eligibility”, by Courtenay C. Brinckerhoff (December 8, 2015), reviews the suggestion that returning to Jepson format claims might be helpful in patent eligibility. Although this suggestion is made with regard to diagnostic methods in medical innovations, it might apply to other types of claims. Generally, a Jepson format claim (to review) is of the form, An improved [article, method, system, etc., having certain features, often a quite detailed description], wherein the improvement comprises: [the limitations of claim]. This has a similar effect of setting forth the subject matter of the claim, by introducing in a preamble a brief description of subject matter from which the remaining claim limitations distinguish.

So, in both of the above ideas for preambles, the first of setting forth in the claim preamble a just right level of detail to frame an abstract idea, the second of setting forth in the claim preamble a known subject, presumably with patent eligible subject matter, the presentation of the remaining claim limitations has a similar effect. The remaining claim limitations distinguish from the material in the claim preamble. During examination, if the claim is rejected as patent ineligible, directed to an abstract idea without significantly more, the argument is then to show that the remaining claim limitations constitute the significantly more.

And that is where inventiveness comes in. When the claim limitations have tangible aspects, and show inventiveness (for example, as argued in the Office action response under 35 USC §102 and 103 rejections), this can be argued as showing substantially or significantly more than an instruction to implement an alleged abstract idea on a generic computer, in the claims. This can be a stronger argument, if the preamble of the claim shapes perception of what the abstract idea is. It can then be argued in a straightforward manner that the distinguishing limitations, showing the inventiveness, are not shown anywhere in the abstract idea in and of itself. The abstract idea, per se, doesn’t say how the generic computer implements the abstract idea, and doesn’t say anything about the new distinguishing limitations, so these distinguishing limitations are substantially more. If the Examiner says otherwise, this can be challenged as not factually shown by the Examiner. In the Jepson format, one could even argue that the preamble shows the claim is directed to patent eligible subject matter, and the further limitations narrow that and show an improvement to a known process or article, which is patentable subject matter. This is all part of the art of patenting.

Case Law Arguments for “Abstract Ideas” Rejection of Patent Claims

2015-10-22T08:16:00.001-07:00

Ever since the Supreme Court ruling on Alice Corporation Pty. Ltd. v. CLS Bank International, et al., patent practitioners have seen an historic increase in the number of 35 USC §101 “abstract ideas” rejections of patent claims in patent prosecution. We write Office action responses, and have Examiner interviews, yet sometimes it is not enough to convince an Examiner that claims are directed to patent-eligible subject matter, for we have heard from Examiners that the USPTO (United States Patent and Trademark Office) has assembled a committee that looks at patent subject matter eligibility issues in cases. One hint that more than one Examiner has mentioned is that there may be a comfort zone about claims, established by case law with which they are familiar, and that positioning claims relative to this comfort zone may be beneficial towards a positive finding of subject matter eligibility.

On January 27, 2015, the USPTO published “Examples: Abstract Ideas” as a companion to the “2014 Interim Eligibility Guidance”. This cites Federal Circuit rulings, some of which have found claims that are not patent eligible subject matter, and others of which found the claims are patent eligible subject matter. Below are suggested arguments that can bolster the assertion that claims are directed to statutory subject matter under 35 USC §101, by citing case law from the USPTO Examples document and comparing to present claims. Since Examiners may be familiar with the cases in the Examples document, they may be more comfortable with claims that are either similar in some way to cases that have rulings of patent eligibility, and/or claims that are dissimilar to cases that have rulings of patent ineligibility.

As an example, suppose the present claims have been rejected as being directed to an abstract idea implemented on a computer. A good question to ask is, are the claims directed to an abstract idea with a mere field-of-use limitation, or are the claims inextricably tied to a particular technological field? For instance, if the computer-implemented claimed subject matter solves a particular problem in a particular branch of medicine, vehicle or machine control, computing or communication, etc., or improves a specific technological process, the patent practitioner can argue that the claim is inextricably tied to a particular technological field. Possibly, the narrower the technological field, the better. Another good question to ask is, is a computer merely an accessory to performance of the claimed method, or is the computer required? Many computer-implemented inventions would be impossible for a human to perform using purely mental processes in any reasonable amount of time and with any reasonable expectation of accuracy. The patent practitioner can argue that a computer is required for performing the claimed method. The above can be followed up by comparison to appropriate case law, with analysis of aspects of the claims in light of relevant court cases, a few of which are discussed as examples below.

In SmartGene, according to the USPTO 2014 Interim 101 guidance (Section IV.B.4), “Claim 1 does no more than call on a ‘computing device’ with basic functionality for comparing stored and input data and rules, to do what doctors do routinely” (emphasis added). In other words, doctors (people, performing mental tasks) routinely compare stored and input data and rules, and the computing device was employed in the claim to do so “to identify medical options”. By contrast, doctors or other people, performing mental tasks, are not capable of performing the present claimed method, a computer is required, as discussed above. In the present claims, the computer (or processor or other machine) is not merely called on to do what doctors do routinely. The present claims are thus unlike the patent ineligible claims of SmartGene.

In Diehr, according to the USPTO 2014 Interim 101 guidance (Section III, Example 3), “The combination of steps recited in addition to the mathematical formula show that the claim is not to the formula in isolation, but rather that the steps impose meaningful limits that apply the formula to improve an existing technological process. Thus the claim amounts to significantly more than the judicial exception. The claim is eligible.” Like the claims in Diehr, the present claims are not to a formula in isolation, but rather have meaningful limits that apply to improve a specific technological process, namely here in [fill in the technological process].

In Flook, according to the USPTO 2014 Interim 101 guidance (Section III, Example 4), “there is no disclosure relating to that system, such as the chemical processes at work, the monitoring of process conditions, the determination of variables in the formula from process conditions, or the means of setting off an alarm or adjusting an alarm system… The claimed invention focuses on the calculation of the number representing the alarm limit value using the mathematical formula. Thus, the claim is directed to a mathematical formula, which is like a law of nature that falls within the exceptions to patent-eligible subject matter.” By contrast, the present specification discloses a large amount of detail in support of how the various steps or actions of the claimed method are performed, and the present claim does not broadly attempt to claim just a mathematical formula with no further limitations. Unlike Flook, but like Diehr, the present claims are not to a formula in isolation. In Flook, “Limiting the claim to petrochemical and oil refining industries, such that the claim does not seek to wholly preempt the mathematical formula, is a field-of-use limitation that does not impose meaningful limits on the mathematical formula.” In the present claims, [fill in the technical area to which the claims are inextricably tied] is not a mere field-of-use limitation. The claimed method is specifically useful in [deriving, solving, whatever it is the claimed method or apparatus, etc., does], and the claim is thereby inextricably tied to [the technical area].

The patent practitioner should follow up these arguments, or weave into the arguments, factual findings wherever possible. For example, a factual finding about the necessity of using a computer or other machine, as recited in the claims and described in the specification, supports the assertion that the computer is required and the claims are thus strongly tied to a machine. A factual finding about the technical problem specific in a technical field that is solved by the claimed method or device, etc., supports the assertion that this is not a mere field-of-use limitation. Then, the patent practitioner has a number of factual findings in support of patent eligible subject matter that can outweigh unsupported Office action assertions that the claims are patent ineligible. It is particularly useful to point out when an Office action assertion is unsupported, and contrasted to a factually supported assertion.

Takeaways:

– Examiners may have a comfort zone about claims that in some way resemble claims of familiar cases with patentable subject matter, or that are dissimilar to claims of familiar cases without patentable subject matter.

– Comparing claims in an application under patent prosecution to claims in familiar cases can draw similarities to cases with patentable subject matter and dissimilarities to cases found to not have patentable subject matter.

– Tying a claim inextricably to a technological field, and arguing that, can powerfully support an assertion to patentable subject matter.

– Arguing that a computer or other machine is required for performing a method, which cannot be reasonably performed as a series of mental steps with any expectation of timeliness or accuracy, can support an assertion to patentable subject matter as the claim is strongly tied to a machine.

– Factual findings supporting arguments that the claims are to patentable subject matter should outweigh unfounded assertions that they are not.

Structure and Connectivity in Patent Claims

2015-10-08T12:01:00.000-07:00

Patent claims are commonly understood to define the structure of an invention, and claim limitations should delineate the connections and relationships among claim elements. Occasionally, claims are rejected during examination as indefinite, with the Examiner pointing out that it is not clear how the claim elements are interrelated and interconnected and/or that there is insufficient structure in the claim. What sorts of claim amendments or arguments should be considered?

It may be a first instinct to add physical structure to the claims, such as fasteners or joiners for a mechanical invention or wires, busses or connectors for electronic invention, etc. But, it may be equally valid to add functional connectivity and relationships among claim elements, without limiting to specific physical features. Choice of which to pursue should be carefully considered, so that claims are not unduly or inadvertently narrowed in areas where they don’t need to be.

Here’s an example for electronics. Suppose the claim has a first module and a second module, each with functions, and the claims are rejected as above. One type of amendment would be to say that the first module and the second module are each implemented using electronic hardware, software executing on a computer, etc., and the first module is coupled to the second module by a bus or a network. Another way of handling this would be to say that the claim is now amended to recite a computing device having a first module and a second module, with the first module producing a first result and the second module performing a function on the first result to produce a second result. This connects the first module and the second module functionally, without limiting to the particular type of physical connection these modules have.

Next, an example for a mechanical article. Suppose the claim is of a handle, a body and an actuator and is rejected as above. One type of amendment would be to say that the handle and the body are coupled to each other at a particular range of angles and have a cable, a rod or an hydraulic line running from the handle through the body to the actuator, or an electric motor positioned in some manner. Perhaps the novelty is in the actuator itself. But this amendment doesn’t emphasize the novelty of the actuator, and limits the claim to those particular added elements in combination with the actuator. Another way of connecting the base elements would be to add an amendment that says operating the handle transfers a force or a motion through the body to the actuator, resulting in the actuator performing a function. This functionally connects the handle, the body and the actuator, without limiting to the particular type of physical coupling of a specific embodiment.

Sometimes it is important to emphasize the physical structure connecting elements. A mechanical invention or electronic invention might function better with a certain type or class of connectors, a material might function better with a certain type of bonding or with a specific sequence of layers or class of materials for some of the connecting layers, and that would be a good way to claim any of these. But, look also at the functions that any of these perform, and see if it is possible to claim the connections functionally. Perhaps a good claim set has aspects of each of these.

Or, it may be possible to argue the claim already does the above and doesn’t need amendment. By carefully explaining how certain limitations show connection from one element to another, and other limitations show relationship of one element to another, it may well be possible to argue that the claims have sufficient connectivity and show sufficient relations among the elements as to have sufficient structure for patentability. To amend, argue or both, and how, will be situation specific. This is all part of the art of patenting.

Logic, Arguments and Patents

2015-09-28T08:39:00.000-07:00

Patent prosecution involves one side arguing for, and another side arguing against, the validity of claims in a patent application. This takes the form of a written discourse, in which an Examiner for the USPTO (United States Patent and Trademark Office) generally argues (in an Office action) the claims are not valid, and a patent practitioner acting on behalf of an applicant generally argues (in a reply) that the claims are valid. To be effective at this, generally each side tries to set forth facts, premises and arguments that it believes valid, and tries to find fallacies in the supposedly valid facts, premises and arguments that the opposition has presented. Each argument is fit to the particulars of the situation at hand, and choices of what to pursue, and possible pitfalls, are manyfold.

As a patent agent, I draw argument styles and techniques from many sources in philosophy, mathematics, and sciences. Curious about what else is out there, and desirous of a brief refresher course, I spent some time wandering through various interconnected subjects in Wikipedia ™, and can recommend a few for your own self-study. Formal logic, informal logic, argumentation theory, fallacy, deductive reasoning, epistemology, validity, are a few that should get you started. I enjoy applying logical constructs, establishment of facts and factual findings, spotting and enunciating fallacies in alleged facts, premises and conclusions, pointing out contradictions, and applying rational thinking to the entire process of patent prosecution.

Missing premises and hidden assumptions are especially vital to find. Finding one of these in an argument made by an opponent may offer a path to disproving an assertion or conclusion. Finding one of these in one’s own argument may offer a path to improving the argument, by making explicit the premise or assumption and backing it up with a factual finding, or may suggest a weakness in the argument and reevaluation of whether the argument is worth making or whether there is another argument to be made.

Psychology plays a role, often, in this. As a patent practitioner and somewhat of a reformed idealist, I often wish this were not so, and we could proceed solely on the basis of objectivity, rationality, reasonability, and an agreed-upon set of rules. This is, I think, an ideal. Yet, I often find it helpful to understand the mindset of an Examiner, to grasp why a rejection is being made and why the Examiner has (apparently) a set of beliefs about the claim interpretations and the interpretations of the cited references that differs (often substantially) from my own. Doing so then affords insights as to how to frame, focus and carry out a discussion and argument, because then I know what to address in terms of what part of the understanding that I have is lacking in my opponent. Combining these insights, gleaned from psychology, with argument styles and techniques drawn from these many sources and experiences, can produce successful arguments in patent prosecution. All part of the art of patenting.

Practical Claim and Specification Drafting, Following Williamson v. Citrix

2015-07-01T08:11:00.001-07:00

Patent claims that use so-called “nonce words” in lieu of means plus function language can be correctly construed as applying the equivalent of means plus function language under 35 USC §112, sixth paragraph, and can be invalidated as indefinite under 35 USC §112, second paragraph, when the specification doesn’t disclose an algorithm, according to the recent (June 16, 2015) Williamson v. Citrix (Fed. Cir. 2015) en banc opinion. What are some practical strategies patent practitioners can implement in claim and specification drafting, now that some words are more likely to be interpreted as nonce word substitutions for means plus function language? Let’s look at the opinion.

In page 17, the opinion talks about generic words such as module, mechanism, element, and device describing software or hardware, and on page 18 determines that the case-specific “prefix ‘distributed learning control’ does not impart structure into the term ‘module.’ These words do not describe a sufficiently definite structure.” On page 15, the court opines “we should abandon characterizing as ‘strong’ the presumption that a limitation lacking the word ‘means’ is not subject to §112, para. 6.” In practical terms, what this means is that we in the patent community should be aware that the above and other so-called “nonce words” in claims using functional language may well trigger interpretation as means plus function language. Patent practitioners should make certain that the specification discloses as many embodiments, variations and equivalents as befits desired representation of the client’s invention. Where, in the past, one could rely on the doctrine of equivalents being applicable to claim language (at least in unamended portions of claims), the reliance appears to now shift to the specification in these types of patent applications. Of course, it has always been good practice to put further embodiments, variations and equivalents in the specification, but now it is more important to do so.

In page 22, the court opines that “The specification does not set forth an algorithm for performing the claimed functions.” Particularly, the court looks at figures 4 and 5 which were argued as disclosing an algorithm, and concludes that figure 4 shows a representative display, but no algorithm. From this, we patent practitioners can glean that we should always disclose one or more algorithms in any specification to a claim that might be subject to the means plus function interpretation. This, too, has always been good practice, but is now relatively more important. A flowchart or a flow diagram, and descriptions of steps or actions of a method, have long been considered good disclosures of algorithms. Patent practitioners should make sure these are in the specification when nonce words and functional language are used in the claims. Where formerly we might have put a flow diagram in a software-based specification, a flow diagram may well be useful in hardware, mechanical, or materials-based specifications, etc. Examples of applicable flow diagrams include ones for methods to make an article, device, material or apparatus, or use an article, device, material or apparatus.

Another good practice is to put structure in the claim, so that the person of ordinary skill in the art could recognize the claim as having sufficient structure so as to not invoke means plus function interpretation. It may not be sufficient to just have the word processor there in the claim, or module, etc., but structure could include descriptions of data structures, registers, types of memory, ports, or other pieces of computers or devices, e.g. in a network or a machine. On the other hand, in light of these changes in court interpretation of claim language, it may actually be desirable to shift the burden of providing equivalents to the specification, which can be more voluminous than the body of the claim and thus has more room for descriptions of equivalents.

Takeaways –

– Structure, structure, structure in the claim may avoid means plus function interpretation.

– Flow diagrams and descriptions of steps of the method may constitute disclosure of an algorithm and avoid negation of a claim construed as using nonce words in means plus function language.

– Further embodiments, variations, and equivalents in the specification play an important role in claims construal, more so with nonce words in the claims.

All part of the art of patenting.

Factual Findings for Arguing a Post-Alice 35 USC §101 Patent Ineligible Subject Matter Rejection

2015-06-08T08:26:00.000-07:00

During patent prosecution, the US Patent and Trademark Office (USPTO) may reject claims in a patent application as being directed to an abstract idea as a judicial exception to patent eligible subject matter under 35 USC §101. The USPTO is considering cases on an individual basis, and has issued examination guidelines for patent subject matter eligibility (see USPTO 2014 Interim Guidance on Patent Subject Matter Eligibility), following the Federal and Supreme Court rulings in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. How do we, as patent practitioners, apply factual findings to argue for eligibility of subject matter in claims?

In a previous article by the present author, Arguing a Post-Alice §101 “Abstract Idea” Rejection during Patent Prosecution, the use of factual findings based on 35 USC §102 (anticipation) and/or 35 USC §103 (obviousness) analysis in answer to a 35 USC §101 “abstract idea” rejection was discussed, and various lines of inquiry and analysis were developed. Reg Ratliff, Esq., a colleague of mine here at the Silicon Valley branch of Womble Carlyle Sandridge & Rice has developed a specific model for a reply to an Office action regarding such a rejection, and has given permission for me to share and expound upon this. Below is an abstraction or template for a response to an Office action.

Setting up an example scenario, suppose the USPTO, during examination of a patent application, has issued an Office action rejecting the claims as patent ineligible subject matter, but has indicated some (or all) of the claims would be allowable under 35 USC §102 and 35 USC §103 provided the rejection under 35 USC §101 could be overcome. Or, the claims are rejected under 35 USC §102 and/or 35 USC §103, with various references cited. The patent practitioner finds a good, solid argument, or amends the claim(s) and then argues, that there are limitations in the claims that are not shown in the cited references. In these examples, the patent practitioner can present, in a reply, the USPTO acknowledgment that specified claim limitations are allowable, or the claim limitations argued by the patent practitioner as not found in the cited references, as factual findings. Let us call these the “distinguishing limitations”, as these limitations distinguish from that which is previously known, e.g., in the cited references.

Next, the patent practitioner can state, in the reply, the limitations which the Applicant acknowledges as known. These could be foundation elements, such as a processor (e.g., absent the novel instructions for performing the method), a server (absent the novel programming), a network, a substrate, a transistor (e.g., absent the novel circuit connections), a gear, cam or lever (e.g., absent the novel mechanical connections), etc. By separating out the claim elements into a known foundation and the “distinguishing limitations”, the patent practitioner is setting up the argument.

The Office action, in this example, is seen to frame the claims in terms of an alleged abstract idea. One main argument to be made in a reply is that, while some or all of the foundational limitations can be found in the alleged abstract idea, the distinguishing limitations cannot. Particularly, the factual finding of allowable subject matter in the distinguishing limitations is a showing that the distinguishing limitations are not generally known, are not routine and conventional, are not found in the cited references, and are not found in the alleged abstract idea. The distinguishing limitations constitute the “significantly more” than the abstract idea, and constitute the “significantly more” than the instruction to implement the abstract idea on a generic computer (or a generic widget or whatever is being cited in the Office action).

The argument is then summed up as factual findings that the claim includes limitations not found in the alleged abstract idea, and that such distinguishing limitations, which are not generally known, show that the claim is significantly more than the abstract idea and significantly more than just implementing the abstract idea on a generic computer. The factual findings can also be presented as a showing that the claims do not attempt to preempt essentially all possible uses of the abstract idea, as the claims have narrower limitations, viz., the distinguishing limitations. And, the factual findings can be presented as a showing that the claims include concrete (i.e., non-abstract) limitations (these may be part of the known foundation), which are not part of the alleged abstract idea, and that the concrete limitations plus the distinguishing limitations (there may be some overlap) form a claim to a specific concrete article, or method involving a specific concrete article, etc., which, again, is not shown in the alleged abstract idea. Further arguments can be developed if there are factual findings that support that the claimed system, method or article shows improvements to computing technology or other technology, and that such improvements are not shown in the alleged abstract idea or in the known, cited art. In all of this, the patent practitioner emphasizes the factual findings.

Per a previous article by the author, “A Powerful Tool: Challenging Assertion during Patent Prosecution”, a USPTO attempt to dismiss relevant arguments as unconvincing, or an Office action that is unresponsive to factual findings, can be challenged as not properly Officially Noticed or not properly based upon common knowledge, per MPEP (the Manual of Patent Examining Procedure) 2144.03 “Reliance on Common Knowledge in the Art or ‘Well-Known’ Prior Art” section C, subtitled “If Applicant Challenges a Factual Assertion as Not Properly Officially Noticed or Not Properly Based Upon Common Knowledge, the Examiner Must Support the Finding with Adequate Evidence”. A USPTO Examiner assertion that the claims of the Applicant are not significantly more than an instruction to apply an alleged abstract idea to a generic computer (or other machine or article), or other 35 USC §101 rejection, can be challenged as not factually based, and not properly officially noticed nor properly based upon common knowledge, using the above factual findings.

By properly applying and properly insisting upon factual findings in a 35 USC §101 subject matter inquiry, the patent practitioner and the response to the Office action can argue for patent eligibility of the subject matter of the claims logically, with fact-based building blocks on a fact-based foundation. Such an approach also formally sets up for an appeal, should the subsequent Office action still reject the claims as patent ineligible subject matter under 35 USC §101. And, the prosecution history records all of the above, should a court challenge occur. This is part of the art of patenting.

Opportunity for Equivalents in Claim Amendments

2015-05-07T08:09:00.000-07:00

It is commonly held that the doctrine of equivalents is lost when claim amendments are made during patent prosecution. That is, any claim amendment that is made during patent prosecution surrenders or gives up elements which are equivalent to those elements claimed in the amendment. Surrender of the doctrine of equivalents places the burden on the patent Applicant, and the patent practitioner representing the Applicant, to carefully consider any amendments to the claims prior to issuance of the patent (when such occurs). This principle is neatly summed up in the rulings on the following two cases.

In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (manner of claim interpretation that is used by courts in litigation is not the manner of claim interpretation that is applicable during prosecution of a pending application before the PTO).
Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425, 44 USPQ2d 1103, 1107 (Fed. Cir. 1997) (patentee who had a clear opportunity to negotiate broader claims during prosecution but did not do so, may not seek to expand the claims through the doctrine of equivalents, for it is the patentee, not the public, who must bear the cost of failure to seek protection for this foreseeable alteration of its claimed structure).

What does this mean for the patent practitioner? The claims as originally filed in a non-provisional patent application have full use of the doctrine of equivalents. In an infringement proceeding, any claim that is granted as originally filed covers not only the literal elements in the claims but the equivalents of those elements. But, an amended claim loses the equivalents. So, the patent practitioner should exercise caution and prudence when amending claims. Usually, a claim is amended during patent prosecution to clarify the meaning of a claim element, or to narrow or broaden the extent of a claim element in light of art that is cited by the Examiner. As the Sage ruling above warns us, we have the opportunity to negotiate broader claims during prosecution. If we don’t take advantage of this opportunity to establish a desired breadth of any claim element amended, we give up that broader breadth.

Some examples may illuminate. In an electronics patent application, suppose the claim as originally filed recites MOS transistors. But, the specification teaches that bipolar transistors could also be used in a circuit, as could relays, etc. If the claim as originally filed is granted, it may be possible to argue that the claim covers other types of transistors and also relays and so on, as these are equivalent to the MOS transistors recited in the claim. If, during prosecution, the claims are amended to recite NMOS transistors (e.g., because some of the art cites a PMOS transistor embodiment and there is good reason to argue that an NMOS embodiment is not shown in the art), then the claims only cover NMOS transistors. It will not be possible to argue that the claim covers other types of transistors and also relays, because these equivalents have been surrendered in the amendment.

In a mechanical patent application, suppose the claim as originally filed recites threaded fasteners. But, the specification teaches that nails, welding, rivets, etc. could also be used to hold something together. If the claim is amended to recite nuts and bolts, instead of threaded fasteners, then screws, which are not nuts and bolts, and nails and rivets, etc. are surrendered through loss of the equivalents.

Now, supposing in each of these cases, there are other arguments to be made that differentiate the claims from the art, and these other arguments don’t depend on the narrowing as described above. If the patent practitioner carelessly leaves the above amendments in place, the equivalents are surrendered needlessly, and the issued patent is narrower than was necessary in light of the cited art. This situation is to be avoided. What should a practitioner do?

When other arguments are found successful against cited art, one strategy is to revisit previous amendments and carefully consider whether a broadening amendment could then be made so that the literal equivalents are captured in the claims. In the electronics example, suppose an amendment is made elsewhere in the claim, and the limitations regarding NMOS transistors are amended to recite transistors, or better still, switches (provided the specification explains that various types of transistors, relays, etc. can be used as switches). Now, the amended claim element recites switches, and has literal coverage for the types of equivalents the Applicant intends. In the mechanical example, suppose an amendment is made elsewhere in the claim, and the limitations regarding nuts and bolts are amended to recite fasteners, or attachment, or some other broader term, or a list of devices that fasten or attach two materials together. Now, the amended claim recites the literal coverage for the types of equivalents the Applicant intends. This is taking advantage of the opportunity that the above cases suggest is before us. Failing to take advantage of this opportunity may have dire costs for the Applicant, in terms of lost claims coverage. Of course, art cited by the Examiner should be considered, as the above tactic of broadening may reintroduce art earlier eliminated by the initial narrowing amendment and arguments. The broadening tactic is successful only if the claims, as amended as a whole, do not read on any of the art under 35 USC §102 and 35 USC §103.

There are also more subtle aspects to this. Comparison language such as less than or equal to, greater than or equal to, thresholds and limits may also be subject to the loss of equivalents in amendment. Words and phrases such as “or”, “and”, “one of” versus “at least one of” or “one or more of” may be subject to strict scrutiny during Markman hearings, and the doctrine of equivalents may have bearing on the scope of the claims. Watch these carefully, and amend these prudently. The doctrine of equivalents, and loss thereof through amendments, is a recommended awareness to have in the art of patenting.

Context and Relationships among Claim Elements in Patents

2015-04-23T07:52:00.000-07:00

A claim in a patent application or issued patent should express not only the building blocks of an invention but also the relationships among the building blocks. Understanding and expressing these relationships clearly in a claim is vital for all types of claims. Without the relationships, claims would merely express an unorganized set of elements, such as building blocks. As an analogy, compare a pile of bricks, cinderblocks, steel girders or lumber to a finished building. A claim set without relationships among the elements would be comparable to a list of construction materials. A claim set with relationships among the elements would be comparable to an architectural set of building plans. Continuing with the analogy, the specification would provide a description of the building, giving context to the claim elements. Likewise, the entirety of the claims gives context to each of the claim elements.

Relationships are important in structural claims, but can be elusive in method claims. Often, we wish steps or actions in a method to be broadly claimed so that the steps can be performed in various orders and are not limited to being performed in the order recited in the claims. Other times, the order is specific and the method claim is written to recite steps, in sequence, such as with letters or numerals indicating such a sequence, or with specific mention in each step as to one or more steps that precede that step or follow that step. Other relationships in method claims can describe how some of the physical elements relate to the actions or to other physical elements recited in the claim.

Where the context and the relationships in the claims are clearly, unambiguously developed, there is firm ground to be argued during patent prosecution. When an Examiner from the USPTO issues an obviousness rejection under 35 USC §103, there is no single cited reference which shows all of the elements in the claimed relationship. So, the Examiner and the rejection rely on showing each of the elements in one or more of the multiple references cited. But, if we can show that an element in one of the references does not show that element in the same relationship or the same context as the present claims under examination, we can argue that not all aspects of the claims are shown in the cited references. This is particularly powerful if the reference, which shows the element in question, teaches to use that element in a different manner or different relationship to other elements than what is presently claimed. Both structural claims and method claims, which may have different approaches to describing the invention, are applicable in this type of analysis. Sometimes, an argument developed with reference to a method claim will guide amendments to a structural claim, and vice versa.

To finish up with the analogy, suppose we are comparing a particular bridge to a particular skyscraper. Both structures use steel girders, rivets, connections of one girder to another, and triangulation in their construction. But, if one says that the existence of skyscrapers predicts all bridges, one is wrong. A showing of a collection of steel girders and rivets in a skyscraper does not show steel girders and rivets in the same relationship and context as shown in a bridge. Relationship and context among elements in patent claims are part of the art of patenting.

Testing a Patent Application Claim

2015-03-09T18:21:00.000-07:00

During the drafting process, claims in a patent application may be written, edited, revised, reviewed in-house, revised again, reviewed by a client, and revised yet again, or have some subset of these applied to it. But, is the claim good enough? Here are some tests we like to perform on claims.

Basic tests include grammar, spelling, punctuation, format, correct establishment of antecedent basis and reference, correct claim dependencies and other formal aspects of claims. Beyond that, one should ask: does the claim capture the intended point of novelty as conveyed by the inventor(s) and as determined by the practitioner(s)? Does the claim distinguish from known art? Whether or not the client has directed to perform a search or provided references, does the claim distinguish from general, widely known examples in related fields?

Does the claim have appropriate scope? Is the claim broad enough to ensnare an infringer who makes a clever variation of one or more parts of the invention? Is the claim narrow enough, with sufficient detail in the claim elements, to not read on the general examples in the art? This is a variation on some of the above questions, and brings focus on a recommendation. The claim should be broad with respect to description of elements, or even inclusion of elements, that are not close to the point of novelty, and should be provided with sufficient detail or narrowness of breadth with respect to the point of novelty. If there is more than one point of novelty in the claims, careful consideration should be given to whether to move one point of novelty into the dependent claims (or a continuation or parallel application with another claim set) and focus on one of the points of novelty, and only one, in the independent claims.

Are the claims clear as to meaning and scope? Is it clear, upon reading a claim, what the invention is? Can one understand the claim just by reading the claim, without having read the specification or looking at the drawings? Hint: Examiners may do just that during patent prosecution. Is there any ambiguity, which can be addressed by punctuation, moving claim terms, adding or deleting a phrase or other editing? Once ambiguity is removed, do the claims establish a clear boundary as to what is claimed? This is just another way of asking if the claims are clear as to scope, but by asking it another way, one may catch what is otherwise missed.

As to scope, does the claim protect what the client actually sells? A claim that requires induced infringement or multiple parties to join together in infringement is not as strong or desirable as a claim that would catch a single infringer directly. If a specific claim (e.g., a dependent claim) is directed to an embodiment that isn’t precisely what the client sells, this may be useful as a defensive posture to prevent an infringer from selling a variation, but an entire claim set that doesn’t encompass what the client actually sells may provide little protection for a direct copy by an infringer.

Does the claim have a good claim strategy behind it? There are many claim strategies (some would argue there are as many claim strategies as there are patent applications or inventions). Here are a few.

– Aim broadly, to capture as much scope as possible, knowing it is likely the claims will be amended in light of cited art during patent prosecution.

– Aim narrowly, to carve around close known art, knowing it is likely patent prosecution will face an uphill battle.

– A “picture claim” describes, more or less exactly, a specific embodiment. These are usually very narrow, and may be employed when the point of novelty is not known or not readily discerned. Hint: it is not usually a good idea to draft a claim without having a strong understanding or belief of what the point of novelty is, in the invention. A picture claim may be a fallback position in lieu of a more targeted strategy.

– Aim for a claim that can survive patent prosecution with little or no amendment, in order to preserve the doctrine of equivalents.

– Aim for a claim that can survive both patent prosecution and attempts in the courts to invalidate the claim. This is the so-called “bulletproof” claim.

– Write what you've got. The client may insist that the invention has novelty, even though there is close or even overlapping art. Do your best to represent the client’s invention in the claims and advise the client as to the likely difficulties to be faced during prosecution.

Once the claims are drafted, and the specification is written and accompanied by appropriate drawings, the claims should be tested to see if each and every aspect of the claims is supported in the specification and in the drawings. Read each claim, and each claim element, and ask if this is found in the specification. Exact literal support in the written description is not necessary, as the claims themselves are part of the specification, but each part of the claims should be found in both the drawings and the specification. This is a vital test, as claims can be rejected if the drawings and/or the specification do not support the claims. Yes, the drawings and the specification can be amended during prosecution, but new matter is prohibited.

Each field, and even each specialty within the fields, may have its own jargon, some of which are terms of art. Also, each field and specialty may have preferred styles and types of claims. For example, software-based claims often encompass an algorithm in the claim, and the claim can be tested to see if the algorithm in the claim behaves as a computer or processor with appropriate programming would. Claim language, especially claims to software-based inventions, may need to be debugged, much as a computer program is debugged. A claim including an algorithm with recursive or self-referenced elements may present difficulties for antecedent references. If the claim doesn’t quite work correctly, spend the time to analyze why this is so, and revise it. A method claim should be tested to see if following the method results in actions that are novel or results in an embodiment having the novel features of the invention. An apparatus, system or other structure claim should be tested to see if it embodies the essence of the novelty of the structure of the invention. A tangible, computer-readable media claim should be tested to see if it embodies what a processor (or computer or other machine) would do if it read the computer-readable media.

One good test of dependent claims is to see whether some of them act as a fallback in case an independent claim is invalidated. This could happen during patent prosecution, in which case moving some of the limitations of a dependent claim into an independent claim, by amendment, may be a good strategy. Or, bringing in limitations from part of the specification into the independent claim, and keeping the dependent claim as a fallback may work well. An independent claim could also be invalidated in a court case, and a fallback dependent claim might survive. Writing the claims so as to support this possibility is a good strategy.

Do the dependent claims encompass all of the variations that the client discloses, and all of the variations that a person of skill in the art would devise upon reading the specification? If there are any gaps, it may be worth revising the dependent claims for additional breadth, or adding dependent claims or recommending the client file a continuation application with another claim set.

Another test, based on the “less is more” concept of claims scope, is to ask whether the claim could be written in fewer words. Fewer words in a claim generally (but not always) broadens the scope of the claim. An overbroad claim is usually not desirable, unless the strategy is to set forth a very broad claim and amend it during prosecution. But, a claim might be unintentionally narrow. By looking at each claim term, asking if this claim term is necessary in the claim, and deleting unnecessary words or moving some words to dependent claims, one can pare down the claim to an appropriately broad scope.

One last test (for the present article, although this test could be applied at any time during the drafting process) is to ask whether the claims, particularly the independent claims, match both the preambles to the claims and the title for the patent application. If so, good, if not, it may be worth revising one or more of these. And, after revising for any or all of the above, read the claims one more time, to catch anything you might have missed. This is all part of the art of patenting.

Arguing a Post-Alice §101 “Abstract Idea” Rejection during Patent Prosecution

2015-01-26T09:23:00.000-08:00

Since the Federal and Supreme Court rulings in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., we have seen some issued patents invalidated on the grounds of patent-ineligible subject matter directed to an abstract idea under 35 USC §101, judicial exceptions (see articles on Ultramercial, patent invalidations). Patent applications are also facing similar challenge, with some claims being rejected during examination by the United States Patent and Trademark Office (USPTO), as allegedly directed to patent-ineligible subject matter per the above. What can we, as patent practitioners, do during patent prosecution, to argue for patent claim subject matter eligibility, when faced with such a rejection?

There is an advantage we can make use of during patent prosecution. One excellent article, “Are Questions of Fact Being Overlooked in Software Cases?” by Alexander Hadjis
analyzes recent appellate decisions, dispositive motions at the onset of litigation, and dismissals of patents based on assertion of patent claims having patent-ineligible subject matter. This provides us with some clues as to differences between the litigation environment and the patent prosecution environment. According to the analysis in that article, such dismissals of patents early during litigation proceedings do not rely on formal claims construction before a jury and do not rely on analysis of claims under the obviousness doctrine, particularly regarding scope and content of prior art, level of ordinary skill in the pertinent art, differences between the claimed invention in prior art and other objective evidence. In other words, such dismissal of a patent during litigation does not require analysis of the claims under 35 USC §102 and §103.

But, fortunately for patent prosecution, the USPTO 2014 Interim Guidance on Patent Subject Matter Eligibility, issued December 16, 2014, recommends (on pages 25-26):

II. Complete Examination

Regardless of whether a rejection under 35 U.S.C. 101 is made, a complete examination should be made for every claim under each of the other patentability requirements: 35 U.S.C. 102, 103, 112, and 101 (utility, inventorship and double patenting) and non-statutory double patenting.

So, during patent prosecution (for the near term, anyway) we should expect that any rejection of claims as allegedly directed to patent-ineligible subject matter, under 35 USC §101 judicial exceptions including abstract ideas, will also be accompanied by cited references and Examiner analysis of claims under 35 USC §102 and/or 35 USC §103, in an Office Action. This provides us with the advantage, as compared to the above-discussed litigation environment, of having (usually) other patents or patent application publications with specifications and claims to which the present claims under examination can be compared as to scope.

Assuming we can convincingly argue that the present claims are neither anticipated (under 35 USC §102) by nor obvious (under 35 USC §103) over the reference(s) cited in the Office Action (this is part of our usual job during patent examination, as patent practitioners), we may then have additional material to bolster arguments relative to 35 USC §101. For example, one line of inquiry to pursue is to determine whether the cited references are in some other way related to the abstract idea that the Examiner is citing during the §101 rejection (in which the present claims are alleged to be directed to an abstract idea). If the present claims can be shown different from the cited references, per the §102 and/or §103 analysis, then it could be argued that the present claims constitute more than just a collection of computer components, the abstract idea, and the instruction to “apply it” (per Alice). In the language of Alice, the present claims could then be shown to be inventive over both the cited art and the abstract idea, because of this difference in scope as compared to the cited art under §102 and/or §103.

Another line of inquiry to pursue is to determine whether the present claims attempt to preempt all possible uses of the abstract idea (per Alice), or in the language of the USPTO Interim Guidance (cited above, and see page 25) “attempt to tie up use of the mathematical relationships”. If the Office Action cited art shows some other use of the abstract idea or the mathematical relationship, and particularly when (as above) there is a difference between the present claims and the cited art under the §102 and/or §103 analysis, it could be argued that this is a factual finding showing that the present claims do not preempt all possible uses of the abstract idea or tie up the use of the mathematical relationships.

Of course, these lines of inquiry and analysis should be tailored to the specifics of the claims being examined during patent prosecution. Variations of the above and other lines of inquiry relating to Alice and the USPTO Interim Guidance can be developed. The key leverage to apply during patent prosecution, is that cited references, §102 or §103 analysis, claims construction, and claims scope analysis and comparison are available for factual findings in answer to a §101 “abstract idea” rejection. Having such arguments, and factual findings, available in the patent prosecution history, may even be of benefit later on if a patent is challenged in the courts. This is all part of the art of patenting.

Decreasing Ambiguity in Claims

2015-01-12T08:58:00.001-08:00

A well-written claim should not be ambiguous. At least, that is one goal. Yet, language is full of imprecision, many words have multiple dictionary definitions, and ofttimes lengthy and complex grammatical constructions in patent claims give rise to multiple possible interpretations. How can we reduce ambiguity in claims?

Time-honored and valuable techniques are to read, proofread, and reread each claim thoroughly, and have a reviewer do likewise. A key test is to ask one’s self, is the claim clear? Could an Examiner, or an opponent in court, misinterpret or twist meaning in some part of this claim? If so, is there a way of rewriting that part of the claim so as to make it clearer? Claim drafting is an iterative process, and this test should be applied many times while writing, and again when reviewing each claim.

Here is a misleadingly simple phrase, with multiple interpretations, which could serve as a template for a line or subparagraph in a claim: an X having a plurality of Y with Z. Does the phrase mean one X that has several instances of Y, and each instance of Y is accompanied by a Z that belongs with the Y? Or, does it mean one X that has several instances of Y, and the X is also with a Z? Adding punctuation might not help. Consider: an X, having a plurality of Y, with Z. This is no clearer. How about: an X having a plurality of Y, each Y having a Z. Or, an X having a plurality of Y, the X with a Z. These seem clearer. Breaking up a phrase into sub phrases, and referencing part of one of the sub phrases in another one of the sub phrases can bring clarity.

A useful exercise, if faced with a challenging, compound phrase, is to take the phrase apart and write a series of separate sentences (e.g., as if drafting an abstract or summary for the patent application). Make sure each sentence is straightforward and clear. Then rewrite the original compound phrase in terms of the sentences, re-crafting each sentence as a phrase in the new claim. Make sure the new phrases connect well, and use proper antecedent establishment and reference. Then, massage, iterate, smooth and retest the claim. Does the claim flow? Is the claim clear? In time, with practice and experience, this process gets to be part of the toolset. All part of the art of patenting.