Tuesday, October 29, 2013

Applicant petitions when Examiner says claims do not read on elected figure

Takeaway: In response to a Restriction requiring restriction between species/figures, the Applicant elected the species of Fig. 4 and asserted that all claims (1-11) read on the elected species. The Examiner issued another Action indicating that the phrase "linear series of at least three [brushes]" did not read on elected Fig. 4. The Applicant petitioned the Examiner's decision, explaining why claim 1 did read on Fig. 4. The Technology Center Director found that the Examiner's interpretation of "linear" in claim 1 was not unreasonable, and that the Restriction Requirement was therefore proper. (Appl. 11/507,367.)


Application of Alfano
Appl. No. 11/507,367
Tech Center 3700
Petition Decision January 26, 2009 (available through Public PAIR)

 The Applicant filed an application directed to a therapeutic body brush, with one independent claim and ten dependents. (View published application here.)

As a first action, the Examiner issued a species restriction, naming Figs. 3, 4, and 5 as distinct species. The Restriction required the Applicant to elect one of these species and to identify "the claims encompassing the elected species."

The figures (shown below) were described in the Application as follows:
FIG. 3 is a perspective view of the preferred long handle version of the body brush.
FIG. 4 is a perspective view of the preferred short handle version of the body brush.
FIG. 5 is a side view of the flexible handle portion and telescoping handle portion body brush ...

In a Response to Restriction, the Applicant elected Fig. 4 and specified that all the claims (1-11) read on the species of Fig. 4.

The Examiner then issued a Miscellaneous Action indicating that the Response was non-responsive.
Applicant's response is non-responsive since Applicant has elected the species of Fig. 4 and claim 1 fails to read on the elected species of Fig. 4. Specifically, claim 1, lines 4-5 recite "a linear series of at least three brush head mounting structures" (emphasis added) which is not readable on elected Fig. 4. Moreover, the specification never describes such an arrangement for elected Fig. 4.
The Action indicated that the Applicant had one month to file a responsive reply, with extensions of time available for a fee.

The Applicant filed a "Miscellaneous Paper" arguing that the Response to Resriction was fully responsive. The Applicant explained how the embodiment of Fig. 4 fell within the scope of claim 1. First, the Applicant asserted that the claim term "linear series" included both rectilinear series and and curvilinear series. The Applicant then asserted since "[t]he series of mounting structures in FIG 4 is curvilinear," elected claim 1 read on the species of FIG. 4. This paper was filed at the three-month mark, but without an extension of time fees.

The PTO next sent a Notice of Fees due, essentially treating Applicant's last filed paper as responding to the outstanding Miscellaneous Paper, but being two months late.

The Applicant then filed a Petition Under § 1.181 requesting Supervisory Review by the Technology Center Director. The Petition requested, as relief, withdrawal of the Examiner's holding of non-responsiveness. The Petition also requested that the associated extension fees be waived.

In the Petition, the Applicant made several substantive arguments. First, the Response to Restriction was fully responsive. Second, the Examiner's position (as clarified in an Examiner Interview) made it "logically impossible" to select Fig. 4 and corresponding claims reading on that Figure. Third, the Examiner's standard for "fully responsive" was improper.

The Applicant's argument that the Response to Restriction was fully responsive hinged on the meanings of "linear," "curvilinear," and "rectilinear." The Applicant contended that "rectilinear" and "curvilinear" are both subsets of "linear." As evidence, the Applicant presented definitions of all three words that referred to "line." Under this interpretation, claims 1-11 did read on Fig. 4, and the Response to Restriction was thus fully responsive.

The Applicant then explained why the Examiner's position was a "logical impossibility." During an Examiner Interview, the Supervisory Examiner indicated that none of claims 1-11 read on Fig. 4. However, claims 1-11 were the only claims in the application – thus the "logical impossibility" of electing Fig. 4, even though the Restriction Requirement identified Fig. 4 as one of three species.

As a final point, the Applicant argued that the Examiner had applied an improper standard for responsiveness.
The examiner and his supervisor have taken the position that identifying claims believed to read on an elected species is responsive only if those claims happen to match the ones the examiner believes read on that species. In other words, an answer is not an answer at all unless he happens to agree with it.
According to the Applicant, "a response is responsive if every demand for a reply receives an answer."

The Technology Center Director dismissed the petition. The Petition Decision first disposed of the issue of extension-of-time fees, noting that the Examiner's refusal to consider the late reply was proper. Turning to the propriety of the Restriction Requirement itself, the Decision noted that claim 1 "does raise a question as to what 'linear' means with respect to the elected Fig. 4." The Decision found that the Examiner's interpretation of "linear" in claim 1 was not unreasonable.
The term "linear" is typically applied to mean "straight" in everyday language. It is clear that is how the examiner understood the term "linear." In this regard, the Examiner also questioned whether there was any support in the specification in regard to the elected species of Fig. 4 ... Under the circumstances, the examiner's Office action of Dec. 7, 2007 is deemed proper since the understanding of "linear" came to light.
The Decision indicated that the basis of the Petition was essentially that the Examiner's position was unreasonable. As such, the appropriate procedure was a Request for Reconsideration.
This argument is proper in a request for reconsideration before the examiner. If the examiner had erred upon reviewing applicant's arguments, it would be appropriate for the examiner to draft a corrected election requirement or, alternatively, in agreeing with applicant's argument, move forward, in the examination of what has been elected.
The Decision then explained that the Applicant's "Miscellaneous Paper" was essentially a Request for Reconsideration, but one filed after the one-month reply period.
The miscellaneous letter of Mar. 10, 2008, is essentially a request for reconsideration in that it presents arguments to support the applicant's position in the election and is in direct response to the Office action of Dec. 7, 2007. Therefore, the requirement for an extension of time is correct before the examiner can consider the paper. It is not properly filed until the fee has been paid - including additional fees to cover for the continuing running the period for response.
Thus, the Examiner's holding of non-responsiveness was proper, and the requirement for extension of time fees was correct.

The Application went abandoned after the Petition Decision.

My two cents: See, I told you: it's always about claim construction. While the issue decided in this Petition Decision was non-responsiveness of an Applicant's Reply, the underlying issue was claim construction.

The TC Director decided that the Examiner's interpretation was not unreasonable. However, I didn't see any analysis of Broadest Reasonable Interpretation, only a brief mention of "everyday language." And I note that it's very unusual for the TC Director to rule on claim construction. This is a strange intersection of restriction practice (decided via petition) and claim construction (decided via appeal).

If the Applicant really wanted to fight for examination of claims 1-11, I suppose the next step would be to file a Request for Reconsideration of the Petition Decision, this time with the Petitions Office. That's how you "appeal" a petition decision and take it up to the next level.

The attorneys at the Petitions Office may not be familiar with the law of Broadest Reasonable Interpretation. On the other hand, the are attorneys, so should be equipped to handle BRI, especially if the Applicant does a good job of briefing the issue. The PTAB is better equipped to deal with BRI, since they deal with it every day. But procedurally, I can't see a way to get this before the PTAB. The Rules are clear that the PTAB only reviews rejections, and there aren't actually any rejections here. 


  1. Sounds like sloppy work all the way around. When there is plenty of fault to go around on both sides, how do you pick a winner?

    The argument I like, however, is that point about how can the Restriction Requirement list Figure 4 as one of the species if none of the claims read on it?

    This is a situation where you would hope that someone at the USPTO would interject some reasonableness into the process. The Applicant just want their claims examined. Find a way that both sides can agree on a species (and corresponding claims) to have examined and get on with the real business of the USPTO.

    The attorneys at the Petitions Office may not be familiar with the law of Broadest Reasonable Interpretatio
    I doubt it.

  2. You wrote:
    But procedurally, I can't see a way to get this before the PTAB. The Rules are clear that the PTAB only reviews rejections, and there aren't actually any rejections here.

    The MPEP used to say (see, e.g., July 1996): "[T]he applicant may traverse the examiner's holding that [the non-elected claims] are not directed to the elected subject matter. The propriety of this holding, if traversed, is appealable, Thus, if the examiner adheres to his or her position after such traverse, he or she should reject the claims to which the traverse applies on the ground that they are not directed to the elected subject matter. Because applicant believes the claims are readable on the elected invention and the examiner disagrees the metes and bounds of the claim(s) cannot be readily ascertained, rending the claim(s) vague and indefinite within the meaning of 35 U.S.C. 112, second paragraph."

    The MPEP does not say this anymore. Perhaps you can sometimes get an examiner to go along with this.

  3. Here's an idea: get a generic claim allowed and all of your species claims have to be rejoined. Much better than wasting time petitioning that some claim reads on the elected species.

    1. No kidding. Trying to explain that to some of the ta rds practicing is like pulling teeth. There simply isn't enough education about what species elections are and what the proper procedure is surrounding them on both sides.

  4. If the Applicant is going to read "linear" on both "rectilinear" and "curvilinear", then it's hard to see how the word "linear" provides any limitation at all anyway. So in reply to the RR, could the Applicant just have deleted the word "linear" from claim 1 and *then* said that all claims read on Fig. 4? Is that a legal response to such an RR?

    1. Yes he could have, and yes, that may have worked. And yes, it is legit. Though perhaps in his mind a super secrit interpretation narrowly avoids the prior art but without that word bam, the prior art gets him.

  5. Yeah it looks like the examiner probably messed up the restriction in that he included species that weren't claimed in with species that were claimed. Supposed to make different kinds of species elections for those different categories of subject matter and like should be grouped with like. Sounds like the representative wasn't capable of picking that up and instead thought that there was a logical impossibility at play, whereas the truth of the matter was that all that happened was just a simple mundane error in drafting the restriction.

    Ho hum.

    This attorney sounds a lot like the tard "anon" at PO. I guess if he really is an attorney this may well be him lol. Logical impossibilities! Everywhere!

  6. The attorney engaged in this silliness because he ignored, for over 3 months, the office action finding his response to restriction insufficient, and he didn't want to pay the extension of time fees. It was a bluff - the case went abandoned after all this.

    I'm not buying that the argument that curvilinear and rectilinear are subsets of "linear." At best, that argument suggests an indefiniteness problem for claim 1. The attorney's argument cites dictionary definitions for "linear," but conveniently ignores all the definitions, especially those purporting to be mathematical definitions, that include the word "straight." "Linear" often is used to mean exactly the same as "rectilinear," in which case it doesn't include "curvilinear."

    It is interesting that this is fundamentally a claim construction issue arising well before the merits have been reached.

  7. >this is fundamentally a claim construction issue arising well
    >before the merits have been reached.

    Yeah, that was the most interesting part for me too. Don't think I've ever heard of that before.

    >not buying that ... curvilinear and rectilinear are subsets of "linear."

    Me neither.

    >argument suggests an indefiniteness problem for claim 1.

    Nah, I don't see it that way at all. Two *mutually exclusive* definitions leads to indefiniteness, but not two subspecies. As a contrived example, if you can't tell from context whether "nail" means fingernail or fastener, that's indefinite. But "vehicle" isn't indefinite because you can't tell whether the term encompasses truck or car or motorcyle, In fact, the term definitely encompasses all those subspecies.

    >attorney didn't want to pay the extension of time fees. It was a bluff

    Suggesting the application was worth one round of argument, but not the additional cost of a 3 month EOT? Maybe. It's fun to speculate about what really drives the decisions made in particular cases.