A Powerful Tool: Challenging Assertion during Patent Prosecution

by Womble Bond Dickinson

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.

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