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:
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.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.