A Powerful Tool: Challenging Assertion during Patent Prosecution

by Womble Carlyle Sandridge & Rice, LLP
Contact

Patent claims can be rejected, during patent prosecution, for a very large variety of reasons.  A proper rejection is factually based.  Examiners for the United States Patent and Trademark Office, and patent practitioners acting on behalf of Applicants, are expected to follow the statutes.  It would be great if patent prosecution proceeded in an orderly fashion, with logic and reason carefully and properly applied by all to the various factual findings relevant to a patent application.  This is the ideal.  But, sometimes, an Examiner makes an assertion in an Office action that seems disconnected from the facts at hand, or at least unsupported by them and may even appear wildly disconnected from common knowledge(i.e., “out of the blue” or “out in left field”, to use some popular expressions).  How should patent practitioners handle such a situation?  Better, what is the most effective way to proceed?

Generally, we argue.  We write a well-thought-out discussion in a response to the Office action, carefully explaining what the relevant factual findings are, and why the Examiner assertion is contrary to the factual findings.  We present an alternative to the Examiner assertion, and explain how the relevant factual findings lead to or support this.  Sometimes, the next Office action takes this discussion into account and allows claims or finds a new ground of rejection, either of which at least progresses the application in examination.  Other times, and this is frustrating to most patent practitioners and Applicants, the discussion is simply swept aside by the Examiner, and the Office action replies in a mere one or two sentences that the arguments of Applicant were fully considered but found unconvincing.  And, the rejection is continued or even repeated verbatim, without the Examiner ever answering to the issues and facts presented in the response to the Office action as relevant to the Examiner assertion.  Options at that point include to amend the claims, find new arguments, or appeal.  But, there is a sometimes overlooked formal mechanism available to patent practitioners, which we find very effective in cases with, shall we just say, challenging examination.

MPEP (the Manual of Patent Examining Procedure) 2144.03 “Reliance on Common Knowledge in the Art or ‘Well-Known’ Prior Art” section C is 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”.  This section provides a format, which the patent practitioner can use as a blueprint or template for an effective challenge to an Examiner who appears not properly responsive to issues, arguments and facts as presented by the patent practitioner during examination.  MPEP 2144.03 (C.) states, in part:
To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art… A general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate. If applicant adequately traverses the examiner’s assertion of official notice, the examiner must provide documentary evidence in the next Office action if the rejection is to be maintained. See 37 CFR1.104(c)(2).

There is more in that section of the MPEP, about how it is not appropriate for an Examiner to rely on common knowledge without evidentiary support, as principal evidence upon which to base a rejection, and on how it should be rare that official notice is relied on when an application is under final rejection.  Official notice should only be applied to facts that are well known and “capable of instant and unquestionable demonstration as to defy dispute” (In re Knapp Monarch Co., 296 F.2d230, 132 USPQ 6 (CCPA 1961).

Here’s how to apply a formal challenge, per the above.  First, state, or better still, quote, the Examiner’s assertion, framing it as such, and state that this assertion is in error.  State that the Examiner assertion is not properly officially noticed nor properly based upon common knowledge.  Explain why this is so, citing a figure or passage in one of the cited references from the Office action, along with a logical explanation of how the cited figure or passage contradicts the Examiner assertion.  Or, cite a figure or passage in the specification of Applicant, along with a logical explanation of how this contradicts the Examiner assertion.  The choice of factual material should be appropriate to the argument, and will depend on whether the Examiner assertion applies to a cited reference, the claim language, or both.  Conclude with a request that the Examiner support the Examiner assertion with a factual finding, i.e., documentary evidence.  It may help to explain in a discussion why the factual findings presented in the previous Office action are inadequate to support the Examiner assertion, and indicate specifically what type of documentary evidence is requested, so that the Examiner cannot rely on repeating the previous rejection without more.  It may also help to cite MPEP 2144.03 (C.) directly, as a reminder to the Examiner that we are all playing by the same rules.

When the next Office action arrives, follow up on this.  If the new Office action has the requested documentary evidence, proceed with analysis and response.  If the new Office action does not provide documentary evidence, and the Examiner instead declares Official notice, the patent practitioner may have grounds for appeal.  Regardless of whether appeal is pursued, the patent practitioner should then traverse the Official notice, as instructed in the MPEP.  This places the traversal into the record, i.e., in the patent prosecution history.

By applying the challenge as a formal technique, the patent practitioner improves the chances that the next Office action will be responsive to the issues raised by the patent practitioner.  This, hopefully, makes the experience of patent prosecution less frustrating for all concerned, and improves the quality of the examination.  This is all part of the art of patenting.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Womble Carlyle Sandridge & Rice, LLP | Attorney Advertising

Written by:

Womble Carlyle Sandridge & Rice, LLP
Contact
more
less

Womble Carlyle Sandridge & Rice, LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.