Book Review: U.S. Patent Prosecutor's Desk Reference

U.S. Patent Prosecutor's Desk Reference
Joshua P. Graham and Thomas G. Marlow
Oxford University Press, May 2011
432 pages
$225
http://www.oup.com/us/catalog/general/subject/Law/?view=usa&ci=9780199740628

When I see the title "Desk Reference," I think of a book that covers a relatively broad topic in medium depth.  The "U.S. Patent Prosecutor's Desk Reference" delivers on this expectation. All four hundred pages in this book are devoted to what patent prosecutors do every day: responding to Office Action rejections. The depth is just right: much more than an overview, but not so many details that you lose the big picture.

The bulk of the book is the section "Rejections and Responses."  The remainder of the book consists of the text of the patent statutes and a Table of Cases.  My personal opinion is that the patent statute section is a waste of paper because if I want the text of a statute I look to the MPEP (online or my two-volume softcover). But going to a second source is an extra step, so maybe some will find it useful to have the statutes in this book.

The "Rejections and Responses" section is organized by statute –  § 101, § 102, § 103, § 112 – exactly how patent prosecutors categorize rejections.  It also covers design patents and reissue. For each rejection, the book first states the "Basis of the Rejection" (i.e., the text of the statute) and then includes sections for various responses to the rejection. For example, as possible Responses to anticipation, the book includes a section for "Reference Does Not Include Every Claim Element" and another section for "Reference Does Not Qualify as Prior Art." These sections are then broken down into subsections, for example, "Asserted Reference is Not a Printed Publication," "Asserted Reference is Publication of Applicant's Own Invention." In other words, these Response sections and subsections correspond to arguments you can make against the rejection.

The meat of the book, and its most valuable content, is in these Response sections and subsections. Here you learn not simply that "Does Not Include Every Claim Element" is an argument against anticipation, but exactly what words to use to make that argument. In other words, this is where you find boilerplate. 

The boilerplate arguments found in this book are derived from case law. In most Response section/subsection you get a choice of boilerplate based on different cases.  The boilerplate argument text is styled "Rejection Response." For many of these cases, you'll also find a "Quotable Language" section. Finally, each case includes a "Relevant Facts" discussion and a "Technology Area" category. A practitioner will find these two sections useful in choosing boilerplate which is most relevant to his particular rejection.

The case law, and boilerplate arguments taken therefrom, is quite extensive: well over two hundred different cases are included.  Of special interest to me was the fact that almost a third of them are BPAI decisions.  So when thumbing through the cases for a Response to Written Description rejection, you'll find not only a Federal Circuit case saying "drawings may be relied on to support the claims," but also a BPAI case standing for the same proposition. Thus, you can pick the case that fits your facts better, say, one related to drawings in a business method application rather than a mechanical application.

In my opinion, this book would be of great use to novice practitioners who have not yet developed a library of boilerplate arguments. For novices who practice outside of a firm and thus don't have access to boilerplate used by colleagues, this book might well be a lifesaver.  While a novice can find much of what he needs in the MPEP, the MPEP is focused on rejections. The structure of this book lends itself better to what a practitioner is looking for – arguments to use against rejections.

Even if you have been practicing for a while, you'll probably find more than a few useful items in the book. The list of rejections is very thorough, so it's a good place to turn for unusual rejections rejections like specific utility and multiplicity. The only rejection I wasn't able to find listed was the very rare 112 First, Fourth Paragraph rejection. And as I mentioned above, each Response section includes many different cases. So if you're an experienced practitioner and feel that your standard "does not teach" boilerplate just doesn't speak directly to the particular circumstances of the rejection, you can probably find something more specific to those circumstances in this book.

I believe most practitioners can benefit greatly from the book's section "The Examiner Misconstrued a Claim Limitation." I've said countless times on my blog that most rejections aren't really about what the reference teaches, but are instead based on a misunderstanding about claim construction. Yet from the file histories I read weekly in doing research for my blog, practitioners don't always get this. You should be arguing "The Examiner has misconstrued the claims" and this book gives you some boilerplate with which to do just this.

The book doesn't cover objections at all, but that choice doesn't surprise me. Most practitioners don't see objections as a big deal, and the MPEP does contain some bare bones information about objections. Also, because objections are handled by petition rather than appeal, there is very little precedential case law on objections.

The worst criticism I have of the book is this: it all but ignores KSR. In almost a hundred pages of various responses to an obviousness rejection, the sole mention of KSR is the "Non-Analogous Art" section, and only through a cite to the MPEP. Nor are there any post-KSR obviousness cases included in this 2011 book.

I find this baffling. Perhaps the absence of KSR is related to two other aspects of the case law chosen for this book. One, there are no Supreme Court cases. Two, the only Federal Circuit cases included in the book are appeals of BPAI decisions, rather than appeals of district court decisions. Now, I appreciate there are some differences between invalidity in the context of PTO prosecution and the context of district court litigation. There are also some differences in the standard of claim construction. So I can see preferring an "In Re" case over an "X v. Y" case. But I don't see how you can essentially ignore the seminal case on obviousness because the case originated in the courts rather than the PTO.

Finally, you should be aware that the book doesn't cover Bilski, since the Bilski opinion issued after the book's May 2011 publication date.

All in all, a good addition to a practitioner's library. Just be aware that you'll need to look elsewhere for obviousness arguments.