I recently found two blogs related to reexamination and/or reissue topics.
Patents Post Grant is a new blog from the law firm Oblon, Spivak which covers reexamination and reissue. It offers lots of practice tips as well as coverage of BPAI, district court, and federal circuit cases involving reexam and reissue.
The Reexamination Center blog seems to post mostly about reexams that were recently granted by the PTO, and requests at district court to stay litigation pending reexam. But in addition to the blog, the website also includes a lot of information about the reexam process (FAQ, mistakes to avoid, etc.).
I've bookmarked both these sites for the next time I deal with a post-grant issue.
Sunday, January 17, 2010
Wednesday, January 13, 2010
Examiner can't infer non-statutory embodiments (Ex parte Azuma)
Ex Parte Azuma
Decided September 14, 2009
(Appeal 2009-003902, Appl. No. 10/726,443, Tech. Center 2600)
I missed this decision when it came out, but I'm glad I became aware of it (through this post at 271 Patent Blog.) I can use it when pesky Examiners reject my computer-readable medium claims under §101 as allegedly covering a signal — when my spec never talks about a "signal" !
In Ex Parte Azuma, one of the claims recited "a computer usable medium having computer usable program code embodied therewith.” The specification referred to "such computer usable media as a distributed magnetic disk, an optical disk, semiconductor memory, or other recording media, or distributed over a network." The spec further stated that "the hardware configuration may include several storage media: main memory 103, hard disk 105, floppy/disk drive 109 and various other hardware configurations such as, a CD-ROM or DVD-ROM drive."
The Examiner rejected this claim under §101, reasoning that because the spec did not specifically limit the medium to a storage medium, the medium then includes a signal under the broadest reasonable interpretation. In particular, the Examiner pointed to the "various other hardware configurations" phrase in the spec.
The Board acknowledged that computer instructions embodied in a signal are not statutory under In re Nuijten, but did not agree with the Examiner's interpretation of "computer usable medium." According to the Board, this term did not stretch to cover a signal in this instance because the "other configurations" were "hardware configurations," which implied a tangible embodiment.
This case will be useful to those of us dealing with "software" claims, because it addresses the practice of an Examiner reading non-statutory signal embodiments into a claim. That said, don't assume all is well for computer-readable medium claims, since a number of BPAI decisions rejected such claims under §101. The most widely reported is probably Ex parte Cornea-Hasegan, which used Bilski to affirm a rejection of a computer readable medium claim, holding that "the analysis of a 'manufacture' claim and a 'process' claim is the same under §101."
By the way, if you want to know more about how the BPAI has been applying Bilski, check out this article reviewing BPAI decisions that discuss Bilski (up to Sept. 2009).
Decided September 14, 2009
(Appeal 2009-003902, Appl. No. 10/726,443, Tech. Center 2600)
I missed this decision when it came out, but I'm glad I became aware of it (through this post at 271 Patent Blog.) I can use it when pesky Examiners reject my computer-readable medium claims under §101 as allegedly covering a signal — when my spec never talks about a "signal" !
In Ex Parte Azuma, one of the claims recited "a computer usable medium having computer usable program code embodied therewith.” The specification referred to "such computer usable media as a distributed magnetic disk, an optical disk, semiconductor memory, or other recording media, or distributed over a network." The spec further stated that "the hardware configuration may include several storage media: main memory 103, hard disk 105, floppy/disk drive 109 and various other hardware configurations such as, a CD-ROM or DVD-ROM drive."
The Examiner rejected this claim under §101, reasoning that because the spec did not specifically limit the medium to a storage medium, the medium then includes a signal under the broadest reasonable interpretation. In particular, the Examiner pointed to the "various other hardware configurations" phrase in the spec.
The Board acknowledged that computer instructions embodied in a signal are not statutory under In re Nuijten, but did not agree with the Examiner's interpretation of "computer usable medium." According to the Board, this term did not stretch to cover a signal in this instance because the "other configurations" were "hardware configurations," which implied a tangible embodiment.
This case will be useful to those of us dealing with "software" claims, because it addresses the practice of an Examiner reading non-statutory signal embodiments into a claim. That said, don't assume all is well for computer-readable medium claims, since a number of BPAI decisions rejected such claims under §101. The most widely reported is probably Ex parte Cornea-Hasegan, which used Bilski to affirm a rejection of a computer readable medium claim, holding that "the analysis of a 'manufacture' claim and a 'process' claim is the same under §101."
By the way, if you want to know more about how the BPAI has been applying Bilski, check out this article reviewing BPAI decisions that discuss Bilski (up to Sept. 2009).
Monday, January 11, 2010
Does an RCE always buy two more rounds of prosecution?
Do you expect an RCE to buy you two more rounds of prosecution? That's surely what happens in the vast majority of cases. However, a strict reading of MPEP 706.07(b) seems to say that under limited circumstances, an RCE only buys you one round.
Takeaway: The Examiner is allowed to take you final on the first OA after the RCE if he doesn't find your arguments persuasive AND as long as one of two other conditions is met: a) you didn't make any claim amendments with the RCE; or b) you made claim amendments, but didn't present them in an After-Final response.
Digging deeper:
Before parsing these two conditions, note the same section of the MPEP lists an important exception:
I think there are reasons to prefer going straight to the RCE rather than taking the AF-AA-RCE route. One is that the AF must be filed within two months to avoid EOT fees. Even if you do hit the two-month date, you're going to owe at least the 1-month EOT unless you file the RCE on the very same day the PTO mails the AA.
So if you want to go straight to RCE, how can you reduce your vulnerability to final-on-first-OA-after-RCE? We need to parse the pair of conditions that allow final-on-first-OA-after-RCE:
So let's assume that your claim amendments do meet the "same invention" prong. Even so, the Examiner can't take you final immediately after the RCE unless the second "could have been finally rejected" prong is also met.
Clearly, your claims "could have been finally rejected" if the Examiner finds all the elements in the references already of record. Put another way, if the Examiner has to introduce a new reference, he can't issue a final rejection, and you're safe.
Intuitively, you can see that the more your amendment changes claim scope, the less likely it is the Examiner can find everything in the references of record. In this respect, an amendment that adds a whole new feature is more likely to produce a new reference than one that merely clarifies something (e.g., "wherein the method is implemented in a computer" or "wherein the first and the second widgets are different"). Even when adding a new feature, you might want convince yourself that none of those secondary references discloses the added feature.
Perhaps a middle ground approach is the following. If you're making substantive amendments that narrow significantly, go straight to RCE because you're counting on the Examiner having to introduce a new reference. But if you're making smaller clarifying amendments, first try to get them in After-Final.
For what it's worth, it's rare that I see this final-on-first-OA-after-RCE situation.
Takeaway: The Examiner is allowed to take you final on the first OA after the RCE if he doesn't find your arguments persuasive AND as long as one of two other conditions is met: a) you didn't make any claim amendments with the RCE; or b) you made claim amendments, but didn't present them in an After-Final response.
Digging deeper:
706.07(b) Final Rejection, When Proper on First ActionSimply put, the first OA after an RCE can be final when a) the claims could have been finally rejected if entered prior to the RCE; and b) the claims are drawn to the same invention as before.
The claims of an application for which a request for continued examination (RCE) has been filed may be finally rejected in the action immediately subsequent to the filing of the RCE (with a submission and fee under 37 CFR 1.114) where all the claims in the application after the entry of the submission under 37 CFR 1.114 (A) are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114, and (B) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to the filing of the RCE under 37 CFR 1.114.
Before parsing these two conditions, note the same section of the MPEP lists an important exception:
However, it would not be proper to make final a first Office action in a continuing or substitute application or an RCE where that application contains material which was presented in the earlier application after final rejection or closing of prosecution but was denied entry because (A) new issues were raised that required further`consideration and/or search, or (B) the issue of new matter was raised.The way I read this, you're safe from final-on-first-OA-after-RCE as long as you follow this procedure:
- File an After-Final response with claim amendments.
- Wait for the Advisory Action denying entry of the amendments.
- File an RCE to get those amendments entered.
I think there are reasons to prefer going straight to the RCE rather than taking the AF-AA-RCE route. One is that the AF must be filed within two months to avoid EOT fees. Even if you do hit the two-month date, you're going to owe at least the 1-month EOT unless you file the RCE on the very same day the PTO mails the AA.
So if you want to go straight to RCE, how can you reduce your vulnerability to final-on-first-OA-after-RCE? We need to parse the pair of conditions that allow final-on-first-OA-after-RCE:
- All claims are drawn to the same invention as before.
- All claims could have been finally rejected if entered prior to the RCE.
So let's assume that your claim amendments do meet the "same invention" prong. Even so, the Examiner can't take you final immediately after the RCE unless the second "could have been finally rejected" prong is also met.
Clearly, your claims "could have been finally rejected" if the Examiner finds all the elements in the references already of record. Put another way, if the Examiner has to introduce a new reference, he can't issue a final rejection, and you're safe.
Intuitively, you can see that the more your amendment changes claim scope, the less likely it is the Examiner can find everything in the references of record. In this respect, an amendment that adds a whole new feature is more likely to produce a new reference than one that merely clarifies something (e.g., "wherein the method is implemented in a computer" or "wherein the first and the second widgets are different"). Even when adding a new feature, you might want convince yourself that none of those secondary references discloses the added feature.
Perhaps a middle ground approach is the following. If you're making substantive amendments that narrow significantly, go straight to RCE because you're counting on the Examiner having to introduce a new reference. But if you're making smaller clarifying amendments, first try to get them in After-Final.
For what it's worth, it's rare that I see this final-on-first-OA-after-RCE situation.
Sunday, January 10, 2010
What do SPEs do?
If you want to learn more about the role of SPEs (supervisory patent examiners) at the PTO, read the comment thread here at the recent Patently-O post about "rethinking the role of SPEs".
It appears that a number of Examiners contributed to the comment thread. Sprinkled among the usual "what's wrong with the PTO" discussion between Examiners and practitioners are some interesting tidbits about the inner workings of the Examiner corps.
It appears that a number of Examiners contributed to the comment thread. Sprinkled among the usual "what's wrong with the PTO" discussion between Examiners and practitioners are some interesting tidbits about the inner workings of the Examiner corps.
Tuesday, January 5, 2010
Follow-up on "each" in a claim
Previously I discussed In re Skvorecz (here), where the Federal Circuit interpreted "each wire leg having X" to mean "every wire leg having X". I found this outcome surprising, as did many of my colleagues. So I decided to dig deeper into this topic.
Takeaway: Though not cited in In re Skvorecz, the leading case on the meaning of EACH is ResQNet.com, Inc. v. Lansa, Inc., 346 F.3d 1374 (Fed. Cir. 2003). According to ResqNet, EACH OF A PLURALITY OF Xes means SOME OF THE Xes, where EACH X means ALL Xes. To be safe, reinforce these meanings by using words like "some," "all," and "every" when describing the feature in the spec.
Digging Deeper: Why was I surprised at the Skvorecz conclusion that "each" means "every"? In a word: "comprising." That is, doesn't black letter patent law say that when "comprising" is used, additional elements are irrelevant? In the Skvorecz case, isn't it irrelevant whether or not additional legs have X, as long as the claimed "plurality of legs" have X?
Actually, it's more nuanced than that. A device including unclaimed elements still infringes when "comprising" is used as the transition. Crystal Semiconductor Corp. v. TriTech Microelectronics Int'l, Inc., 246 F.3d 1336, 1347 (Fed.Cir. 2001). A device including additional instances of a claimed element does not escape infringement when the article "a" is used, absent a clear intent to limit the article. See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000).
ResQNet, Inc. v. Lansa, Inc. addresses additional instances of a claimed element introduced by the article "each." ResQNet interpreted two similar claims that used "each," with opposite results.
The ResQNet Court found EACH = EVERY in this claim:
Yet the ResQNet Court found EACH <> EVERY in this other claim:
Note that the Court bolstered its interpretations by referring to the specification. For the EACH = EVERY claim, the Court found that:
Contrast this with the spec for the EACH <> EVERY claim. The Court found that:
Would a different result be reached with a different description in the spec? Because I don't buy the Court's single-minded focus on the word PLURALITY in the phrase "each of a plurality of fields." After all, the word EACH is present too, and the Court didn't satisfactorily explain to me why PLURALITY negates EACH.
Takeaway: Though not cited in In re Skvorecz, the leading case on the meaning of EACH is ResQNet.com, Inc. v. Lansa, Inc., 346 F.3d 1374 (Fed. Cir. 2003). According to ResqNet, EACH OF A PLURALITY OF Xes means SOME OF THE Xes, where EACH X means ALL Xes. To be safe, reinforce these meanings by using words like "some," "all," and "every" when describing the feature in the spec.
Digging Deeper: Why was I surprised at the Skvorecz conclusion that "each" means "every"? In a word: "comprising." That is, doesn't black letter patent law say that when "comprising" is used, additional elements are irrelevant? In the Skvorecz case, isn't it irrelevant whether or not additional legs have X, as long as the claimed "plurality of legs" have X?
Actually, it's more nuanced than that. A device including unclaimed elements still infringes when "comprising" is used as the transition. Crystal Semiconductor Corp. v. TriTech Microelectronics Int'l, Inc., 246 F.3d 1336, 1347 (Fed.Cir. 2001). A device including additional instances of a claimed element does not escape infringement when the article "a" is used, absent a clear intent to limit the article. See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000).
ResQNet, Inc. v. Lansa, Inc. addresses additional instances of a claimed element introduced by the article "each." ResQNet interpreted two similar claims that used "each," with opposite results.
The ResQNet Court found EACH = EVERY in this claim:
means for receiving information to be displayed as a first image on a screen;The Court said the claim language itself dictated EACH = EVERY: "This [claim] language shows that the claimed algorithm evaluates attributes of each (and every) field in the information to be displayed, i.e., the first image."
means for processing said information to generate a screen identification (“ID”) from said first image, said ID being generated as a function of the number, location, and length of each field in said first image ...
Yet the ResQNet Court found EACH <> EVERY in this other claim:
means for identifying, based upon a position, length and type of each of a plurality of fields, a particular screen to be displayed to said user;See the difference? It's EACH OF A PLURALITY OF FIELDS versus EACH FIELD. The Court focused exclusively on "plurality":
Claim 1 of the ’608 patent recites “each of a plurality of fields,” which does not carry the same meaning as “every field.” Rather, the recitation of “plurality” suggests the use of “at least two.” ... While “at least two” may mean “every” under some circumstances, the two terms are not synonymous. In sum, “each of a plurality of fields” means “each of at least two fields.”At first I didn't see the difference between the two claims, because I was *inferring* a plurality when I read "each field in said first image." But in fact, this claim never says plurality of fields, and is in fact agnostic as to how many fields there are. Once I realized that, the Court's construction made more sense.
Note that the Court bolstered its interpretations by referring to the specification. For the EACH = EVERY claim, the Court found that:
The specification confirms the “all fields” requirement in the ’961 claim: "In describing the determination of the screen ID, the specification provides that “the particular screen [is identified] by its layout, fields, etc." and " ... From the display buffer, the program derives the following information: ... b) type of each field ... With the words “each field” and “fields,” this passage suggests that characteristics of all, not just some, fields are inputs into the algorithm. Nowhere does the specification suggest otherwise.Do these passages really confirm that EACH = EVERY? To me, these passages shed no light at all, one way or another.
Contrast this with the spec for the EACH <> EVERY claim. The Court found that:
The ‘608 specification confirms this meaning of the claim language. In the only portion specifically addressing whether the algorithm employs all or some fields, the specification notes that “the personal computer analyzes the screen with respect to the location of particular fields.” This passage suggests that the PC selects certain fields – potentially a subset of all fields – for analysis.I do agree that "particular fields" suggests not every field, so that the '608 spec supports EACH <> EVERY.
Would a different result be reached with a different description in the spec? Because I don't buy the Court's single-minded focus on the word PLURALITY in the phrase "each of a plurality of fields." After all, the word EACH is present too, and the Court didn't satisfactorily explain to me why PLURALITY negates EACH.
Sunday, January 3, 2010
Adding claims to different invention during prosecution
If you've been practicing for more than a short time, you're familiar with restriction practice: the Examiner takes the position that your claims are directed to more than one invention; the Examiner issues a restriction requirement; and you're forced to elect a subset of the claims to continue prosecution.
You may not be familiar with the less-common "election by original presentation," in which the Examiner elects the claims. Now, it's not as bad as it sounds – this can happen only in limited situations, and the Examiner can't just elect any subset he wants.
Here's the deal: the Examiner is allowed to use election by original presentation (described in MPEP § 821.03) when you add claims that are directed to a different invention than the one you originally started with. The idea is that the Examiner already searched the original invention, so you can't pursue the new invention in this application, even if you want to. So the Examiner elects the claims directed to the original invention and withdraws the other claims. The MPEP instructs the examiner to use this form paragraph:
What is a "newly submitted claim?" Is it limited to new claims added during prosecution, or does it cover an amended original claim? I don't know the answer to this, but it makes sense to me that the Examiner could also use election-by-presentation when you make amendments to an existing claim. After all, we've all seen amendments that replace 90% of the words in the existing claim, right? How is that any different, substantively, than a new claim?
Not being allowed to pursue newly claimed subject matter as a result of election-by-prosecution by the Examiner is annoying enough – but there may be worse side effects. To begin with, you can get slapped with a non-responsive amendment if your response cancels the claims directed to the original invention and thus includes only claims directed a different invention. Here's the Examiner form paragraph, from MPEP § 821.03:
If the Examiner balks at your claims directed to a different invention, make sure that the Examiner actually issues an Office Action with a restriction-plus-election-by-presentation. What you don't want is a generic Office Communication simply informing you the response is non-responsive because the only claims in the case are directed to a different invention. (See the file wrapper for 11/300,970 on PAIR for an example of this.)
What's the difference? An important one: only an actual restriction requirement allows you to file the restricted-out claims in a divisional rather than a continuation, which in turn avoids protects you from a double patenting rejection.
I don't know how common Examiner election-by-presentation practice is. It's happened to me only a handful of times. But it is something to think about when adding lots of new features to your claims.
You may not be familiar with the less-common "election by original presentation," in which the Examiner elects the claims. Now, it's not as bad as it sounds – this can happen only in limited situations, and the Examiner can't just elect any subset he wants.
Here's the deal: the Examiner is allowed to use election by original presentation (described in MPEP § 821.03) when you add claims that are directed to a different invention than the one you originally started with. The idea is that the Examiner already searched the original invention, so you can't pursue the new invention in this application, even if you want to. So the Examiner elects the claims directed to the original invention and withdraws the other claims. The MPEP instructs the examiner to use this form paragraph:
Newly submitted claim [1] directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: [2]If you disagree with the Examiner that the new claims are directed to a different invention, you have the same recourse as for the standard restriction requirement: you request reconsideration and provide arguments why the restriction is improer, and then you petition if that fails.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim [3] withdrawn from consideration as being directed to a non-elected invention.
What is a "newly submitted claim?" Is it limited to new claims added during prosecution, or does it cover an amended original claim? I don't know the answer to this, but it makes sense to me that the Examiner could also use election-by-presentation when you make amendments to an existing claim. After all, we've all seen amendments that replace 90% of the words in the existing claim, right? How is that any different, substantively, than a new claim?
Not being allowed to pursue newly claimed subject matter as a result of election-by-prosecution by the Examiner is annoying enough – but there may be worse side effects. To begin with, you can get slapped with a non-responsive amendment if your response cancels the claims directed to the original invention and thus includes only claims directed a different invention. Here's the Examiner form paragraph, from MPEP § 821.03:
The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive. The remaining claims are not readable on the elected invention because [2].Worse yet, if you file an RCE in order to get those new/amended claims entered (the ones directed a different invention), and then the Examiner withdraws them from examination...you've wasted an RCE fee. You'll need to file those claims in another application, and you don't get your RCE fee back.
Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS, whichever is longer, from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD UNDER 37 CFR 1.136(a) ARE AVAILABLE.
If the Examiner balks at your claims directed to a different invention, make sure that the Examiner actually issues an Office Action with a restriction-plus-election-by-presentation. What you don't want is a generic Office Communication simply informing you the response is non-responsive because the only claims in the case are directed to a different invention. (See the file wrapper for 11/300,970 on PAIR for an example of this.)
What's the difference? An important one: only an actual restriction requirement allows you to file the restricted-out claims in a divisional rather than a continuation, which in turn avoids protects you from a double patenting rejection.
I don't know how common Examiner election-by-presentation practice is. It's happened to me only a handful of times. But it is something to think about when adding lots of new features to your claims.
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