Responding to USPTO Requests for Information

By Dennis Crouch

In the comment section of a prior post, I highlighted a an Office Action asking an applicant (Intellectual Ventures) to provide further background information on their invention, including “a detailed summary of the improvements” associated with the invention and “any technical information known to Applicant concerning the related art.”

As the present disclosure was submitted without a section describing the background of the invention and, more specifically, the state of the art at the time the present invention was conceived, Examiner also requests, under 37 C.F.R. §§ 1.105 (vi) and (viii), that Applicant submit with the response to this Office Action a detailed summary of the improvements included in the claimed invention as well as any technical information known to Applicant concerning the related art.

See Prosecution History File of US App. Serial No. 11/880,432.

Rule 105 (37 C.F.R. § 1.105) provides patent examiners with authority to request certain types of information from applicants or anyone with a duty under Rule 56 (37 C.F.R. § 1.56). The rule reads as follows:

In the course of examining or treating a matter … in a patent, or in a reexamination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:

  1. Commercial databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.
  2. Search: Whether a search of the prior art was made, and if so, what was searched.
  3. Related information: A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.
  4. Information used to draft application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application.
  5. Information used in invention process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.
  6. Improvements: Where the claimed invention is an improvement, identification of what is being improved.
  7. In Use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.
  8. Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items.

37 C.F.R. § 1.105. The rule states that the applicant fully complies by making an accurate statement that “the information required to be submitted is unknown to or is not readily available” to anyone with a Rule 56 duty.

In Star Fruits S.N.C. v. United States, 393 F.3d 1277 (Fed. Cir. 2005), the Federal Circuit agreed that the USPTO has broad authority to request information that goes beyond information defined by Rule 56 as material to patentability.

We think it clear that “such information as may be reasonably necessary to properly examine or treat the matter,” 37 C.F.R. 1.105(a)(1), contemplates information relevant to examination either procedurally or substantively. It includes a zone of information beyond that defined by section 1.56 as material to patentability, and beyond that which is directly useful to support a rejection or conclusively decide the issue of patentability.

In Star Fruits, the Federal Circuit identified the line dividing proper and improper requests as whether the request for information is “arbitrary or capricious.”

So long as the request from the examiner for information is not arbitrary or capricious, the applicant cannot impede the examiner’s performance of his duty by refusing to comply with an information requirement which proceeds from the examiner’s view of the scope of the law to be applied to the application at hand. To allow such interference would have the effect of forcing the Office to make patentability determinations on insufficient facts and information. Such conduct inefficiently shifts the burden of obtaining information that the applicant is in the best position to most cheaply provide onto the shoulders of the Office and risks the systemic inefficiencies that attend the issue of invalid patents. Examination under such circumstances is neither fair and equitable to the public nor efficient.

In Star Fruits, the examiner had requested “any information available regarding the sale or other public distribution of the claimed plant variety anywhere in the world.” The Federal Circuit found that demand for information neither arbitrary nor capricious and therefore enforceable.

In Ex Parte Schneidereit, 2009 WL 798905 (Bd. Pat. App. & Inter. 2009), the BPAI suggested that the examiner use Rule 105 to request a clarification of what structure corresponds with a means-plus-function element. See also Ex Parte Personalized Media Communications, LLC, 2008 WL 5373184 (Bd. Pat. App. & Inter. 2009) (suggesting that the examiner request information as to how added claims satisfy the written description requirement).

The question then for patent examiners is how to respond to the request from above?


  • Does it matter in any way that the ‘432 application lists 15 inventors? About 1 out of every 1000 recently issued patents lists 15 or more inventors.

103 thoughts on “Responding to USPTO Requests for Information

  1. 101

    If it is any clue – (and to disabuse you of the rampant rhetoric of evil lawsuits), the ACTUAL rate of patent litigation, as a function of the number of issued patents, is well under 1%.

    Well under.

    So yes, “having” a patent can be a goal unto itself.

  2. 100

    I’ll make a deal with you: stop taking Official notice and I’ll stop asking you to prove it.

    The number of times I’ve seen an examiner properly take Official notice is zero. What I usually get, if I’m lucky, is, “Reference A discloses all of the elements of claim 1 except a widget. Examiner takes Official notice that widgets are known. Therefore, it would have been obvious to provide Reference A with a widget.”


    Of course, there’s even worse understanding of Official notice as demonstrated by the classic examiner shortcut of, “Examiner takes Official notice that it would have been obvious to…”

    Ugh. Ugh. Ugh. Ugh. And Ugh.

    Please stop taking Official notice. There is absolutely no need for it in any Office action. Provide substantial evidence for every fact that you need to establish a prima facie case. By your own admission, it doesn’t take any longer than typing a Google search.

    If the claim requires “store data in a memory when the data is to be processed by a CPU” then cite a reference that discloses it. Why is that so hard?

  3. 99

    No problem. I freely admit some examiners are a part of the problem. Even a certain culture in the office (when I was hired, now not so much), was adversarial and valued rejections over anything else. There is plenty of incompetence, and also sometimes, plenty of immoral behavior too. But an argument that is just “You too” is not very productive. The practices that I outlined above are very detrimental, particularly to the clients themselves. So is an examiner milking RCEs, or all the other things practitioners are so aware of.
    I suggest that changes ought to be made in both sides of the prosecution. And I honestly cannot understand some of the comments in this post with respect to giving information. Do you want a patent because the invention deserves it, or because the examiner could not reject it (for whatever reason)? Nobody asks you to do searches or to go discover information (that is our job). But it is reasonable to ask about what you (and your clients) do know. If you know nothing, you say so, and you have met your requirement.

  4. 98

    Hmm. Are we talking about the same thing? I am talking official notice here. If I take official notice of a fact, and then prove it, you do not have new grounds of rejection. The fact remains the same. If you question that, that is just fine. But I don’t get the point. I guess you’d have me show proof that computers are known to use electricity. Nobody questions your right to do it. I question the motivation.

  5. 97

    Bable Boy,

    No need to prevaricate.

    If you have facts – give them. If you don’t, you can’t.

    If more than facts are asked, one either has not formulated that opinion (in which case it is not a lie to say that it is not available), or that opinion may be a protected legal right – and is likewise not available. Your painting my suggestion as “just lie” is an egregious misrepresentation. The third option is that you just give the opinion.

    The sky is not falling here.

    You are aware of course that mere facts cannot be cloaked with attorney-client privilege, correct?

  6. 96

    Well, my phone number and the size of my jock strap are easily available to me. And so is my opinion as to whether the client’s claims are obvious, although that opinion is not as impressive as my jock strap size.

    If asked to provide this information and I refuse, the application goes abandoned under Star Fruit. Period. No questions asked.

    That’s the ugly bit you and blather just can’t see. blather seems to think that all you have to do is lie and say information is not easily available. Great way to lose your ticket.

    I could petition on the grounds that the request was not proper, and I might even prevail at the PTO, USDC, or CAFC. But what Star Fruit is saying is that in spite of the petition and in spite of prevailing, if I did not provide the requested information, the application would still be abandoned — even if the request for information was later determined to be capricious.

    This is not like discovery where when the prck lawyer asks for information in depositions that is totally off the wall you can shut down the deposition and get an opinion from the judge without giving up the information.

    “You know who I am’s” comment below nails it.

  7. 95

    Yet, One, it was cited in Arriad, and is being dicussed even today at the Supreme Court in the Applera case.

    I have noted that Rader contends that claims have replaced the need for Evan v. Eaton. But nevertheless, they never reworded the statute do drop the WDR regarding the specification when they adopted claims.

  8. 94

    So like Ned Heller to quote a case that happened fourteen years before patents even had claims and try to overread that case to the present conditions.


    Really please, stop posting.

  9. 93

    Thank you Ned. Meanwhile, on the Odom thread, we have thrashed the issue to a conclusion, I believe.

  10. 92

    “Read Star Fruit and it will be clear to you that under 105 the examiner can ask for anything she wants, including opinions”

    Of course we can ask for anything we want. It doesn’t mean that you have to provide every single thing.

    “If she asks for your phone number or the size of your jock strap and you fail to provide it”

    I was just going to ask that they hold the base of my c k whilst I c kslap them.

    “You have to provide whatever information was demanded to avoid abandonment and then file your petition. You cannot just refuse to give up the information and file a petition, which is what Star Fruit did. ”

    Somehow I doubt that, unless the information is easily available to you.

  11. 91

    Don’t know if they are “high powered”, but 7227606 lists 37 of them.

  12. 90

    I am pretty sure that neither Rule 1.56 nor 1.105 can be used to acquire attorney client privileged information and/or attorney work product, i.e., I have a request for an examiner to identify material in the prior art that I believe is pertinent to the invention. However, my legal opinion as to what is patentable and what is not patentable is privileged information and 37 CFR precludes me from disclosing the same. I think that the examiners need to be made aware of this situation. It is one thing to bring facts to the attention of the examiner. It is quite another to be asked for legal theories as to why a patentable innvention is distinguishable over material information, unless, of course, we deem it appropriate to set forth such an argument.
    This is going to get really dicey if the USPTO tries to attenuate the attorney-client privilege. Why not, however, I have seen the Fourth, Fifth and Sixth Amendments to the U.S. consitution destroyed by the Feds. It is quite amusing, the less money they have the more likely the Feds are to ignore basic civil libierties. I guess Civil Rights are only for those governments that can afford them.

  13. 89

    ping, I’ll keep that in mind.

    Will you in turn stop personal attacks on people who say something you disagree with?

    This way both of us will stop or at least reduce the annoyance we cause others.

  14. 88

    Bable Boy,

    You are not correct.

    You need to read Star Fruit yourself and see that an acceptable answer – short of the required information – is that that required information is not readily avialable. In Star Fruit, it is evident that the party thumbed their noses at the Office purposefully, rather than take this additional avenue of response.

    I will add that is does appear in Star Fruit that “opinions” can be asked – but it is not clear whether such would fall under the “reasonable” prong of a required answer. What is reasonable (then and now) is a reply of readily avaialble facts – and just the facts. Truthfully, the examiner cannot ask you to do his job for him – such simply would not be reasonable.

  15. 87

    Read Star Fruit and it will be clear to you that under 105 the examiner can ask for anything she wants, including opinions.

    If she asks for your phone number or the size of your jock strap and you fail to provide it, the application will go abandoned and you have no recourse to the abandonment.

    You have to provide whatever information was demanded to avoid abandonment and then file your petition. You cannot just refuse to give up the information and file a petition, which is what Star Fruit did.

    Even if the petition is allowed on the basis that the request for information was capricious, you will have already had to give up the information in order to avoid abandonment.

    You are discussing Pollyanna ideas of how nice examiners behave. I am talking about what is possible under the Rules as interpreted by the CAFC.

    Read Star Fruit and get back.

  16. 86

    (and do not have the budget to figure that out)

    Ahhhh – now we are on to something…

  17. 85

    Now that you mention it, I suppose many of my claims could be considered flat. I think I typically prefer very clear specifications that are not flat, but I prefer claims that make physical sense, whether they are flat or bumpy. In light of a clear spec, a flat claim can make sense. I don’t see a need for two-part claims (but of course, the spec should support them if you plan to file in Europe) and avoid them purposefully at times if it interferes with a sensible claim.
    Overall, I have come to the conclusion that letting the patentable subject matter emerge from the prosecution is not as good an approach as making a clear case of it. It certainly limits the production of estoppel, which cannot be controlled with a flat spec and flat claims which will have to be narrowed in unpredictable ways. Of course, if you are not sure what is patentable (and do not have the budget to figure that out), a flat spec might make sense.

  18. 84

    “Because proving an official notice correct is not new grounds of rejection.”


    “But doesn’t that attorney know exactly how long it will take me to find that?”

    So why don’t you find it without being asked? Isn’t that your job?

  19. 83

    Max, the problem is not in US law, or in its recognition of the Paris Convention. The problem, if anything, occurs in the USPTO. I am not sure they actually search for same invention type double-patenting at the allowance stage regardless that the other application or patent is prior art.

    This whole thread is an example of why I think they do not. Why in the world would the PTO even need to ask about the corporate structure unless they, or at least, one examiner, were looking for double-patenting. But double patent exists independently of corporate structure — it is an artifact of subject matter being claimed with is highly related to the subject matter dislcosed. The fact that they don’t seem to understand this is what gives one pause.

  20. 82

    Seems like a reasonable strategy, although in some (maybe rare) cases, reasonable minds can disagree about what constitutes “enforceable, reasonable, and honestly valid” vs. “absurdly broad and likely invalid”. Somewhere between those two extremes might be where your infringers hang out, and you want to give them as little space as possible.

    And I certainly agree that it shouldn’t have to be adversarial. Let’s get rid of Rule 56 (or at least the folly that it’s been morphed into) and PHE, and maybe we can all just get along again.

  21. 81

    I understand, and I wasn’t trying to suggest to you something of which you were not already aware. I didn’t mean for it to come off that way. What I meant is that while those are no doubt extremely annoying as a complete waste of time (and client money), at least there is a quick fix. When one gets an obstinate Exr who acts like he or she is being asked to give up a first born, there are few ways of dealing with it, none of them particularly good. And it happens all the time. You eventually have to appeal, and if you win, do you get the client’s money back? Not all of us are trying to gouge fees out of our clients.

    But I get your point. I do not know why some folks on this side don’t just cut to the chase (well, for some I do, but that is their issue). If, like some jurisdictions, there were no such thing as PHE and both sides REALLY wanted to get something done, perhaps the idea of a negotiation would come back. There’s either something there or not, and while reasonable minds can disagree, they can also agree in a lot of cases.

    As a side note, the first line of my comment was pathetically immature, for which I apologize. I should never post on a Monday morning before the caffeine kicks in. Lesson learned (I hope).

  22. 80

    I do cite it. It takes however long it takes me to either open a textbook and scan it or type a google search. That is not my point. I know the ball is in my court. The problem for the applicant is that it is a middle of the court ball, at low speed, with no spin. It’s a non-starter. Is the attorney within his or her right to question that, is it legal? Sure. I don’t contest that. But doesn’t that attorney know exactly how long it will take me to find that? What is the point there? Another round of prosecution? Because proving an official notice correct is not new grounds of rejection.

  23. 79

    Hey, it’s a different mindset than most, and many will mock me for it, I know. Whatever. I happen to think my clients are better served by getting enforceable, reasonable, and honestly valid claims in a (relatively) timely manner. At least I find it more compelling as opposed to fighting over absurdly broad and likely invalid claims that will take at least two additional Office Actions to deal with. Also, less needless argument during prosecution means less of a record during litigation, which is probably more ideal for the patent litigators.

    I know enough people on both sides of the fence to appreciate that Examiners can seem absurdly obtuse to attorneys, and that attorneys can seem blindly arrogant to Examiners. It does not have to be this way. Maybe this mindset is better phrased as, “Patent prosecution shouldn’t have to be adversarial like litigation”, but I don’t expect to change anyone’s opinion here.

  24. 78

    Yes. Well said. Although one wonders if examiner12 has been on the job for about 1 month in that no one with longer experience would ask whether everyone was aware of the concept of fraud on the Patent Office. My state-the-obvious corollary would be, “You do know that ‘A person shall be entitled to a patent unless’…”, right?

    Want to shut down the “it is not known to store data in a memory…” argument? Cite some art. It’s pretty simple. Until you do, the ball’s still in your court.

  25. 77

    “Patent prosecution shouldn’t be adversarial like litigation”.

    Nothing like starting off a Monday with a good laugh. Thanks for that!

  26. 76

    I had a real bad dream last night. The Goons were chasing me. I was this close.. I noticed so many things so many times, but never quite made it over the line. But I did when I woke up. I heard this BOOM. It was real loud.
    When I woke up I thought about it. Looked some stuff up. And I was able to decipher my dream. She only needed 5 toffees. I wonder why I thought 7. Because 5, and maybe 4 and 1 still aren’t 7. Maybe 7 Lawsuits?
    So I think of the Battle of Savannah. 5 CANONS over the hill. I made that part up NEDDO. I wasn’t there to see just how many CANONS matter in the battle of Save Anna.

  27. 75

    No Ping, just someone tired of the constant drone of your opinion.

    You ask me to calm down, and I tell you what will make me calm – limit the number of your posts and especially the number of times you post on a given topic. Count the times you say the same thing and STOP yourself when you hit the limit. That limit should be a number less than five.

  28. 74


    1) per your clarification.

    2) but, as you indicated, 1 is needed to rebut.

    Admissions count regardless of the jurisdiction they are made. Asserting a technical effect vs. the prior art is the very kind of thing the flat spec is trying to avoid.

    If one says it in Europe, one has said it in the US. There is no reason to have two specs, just one: One adapted for Europe.

  29. 73

    Babbling boy,

    Where in the rule is there any requirement for Applicant to give the Examiner an opinion regarding anything?

    The rule is for situations where the Examiner needs more info on whether the invention is anticipated or obvious. For example, the Examiner sees an advertisment for a similar product from the same company in a 102(b) date source. The Examiner might ask if the product is the same as that claimed or not. A simple fact question, no opinion necessary.

    Or the Applicant might use a special name for something, the flurgistan, and the Examiner wants to determine if Applicant defines a flurgistan as the same as a hinge or not. No opinion, either a flurigstan is equal to a hinge, a species of hinge, or a generic device which permits objects to rotate in space relative to one another.

    Maybe Applicant identified a new primer for DNA amplification in a known sequence. The Examiner might want to know whether the Applicant used a prior art computer program on the prior art sequence, and if so, what position did the primer claimed come up on the hit list (#1 perhaps being slightly more obvious than #3,023,143 on the list).

    These are all fact questions which may help infer anticipation or obviousness, but don’t require anything other than a straight answer (or even an I don’t know, if Applicant really doesn’t know).

  30. 72

    I have to say, Anonymous, that I’m grateful. Your pointy stick prompted me to go back and re-read the Odom thread. There it was that Ned Heller wrote:

    “They should not issue the patent to the American filer who is second in priority, but that is probably what they will do in practice. The problem is of course, caused by Hilmer II.”

    Ned sees a priority problem. Where is he going wrong? Can you see? If so, will you explain it to him (and me)?

  31. 71

    Ne, I like your summary. But your 1) is not accurate (an “effect”, rather than an “advantage” is required and the “effect” can be simply the provision of an alternative to what is old) and your 2) is true also in Europe, and I do not see how a Euro-style specification necessarily has to contain any admissions that will damage your position in the USA.

  32. 69

    Mr. MaxDrei,

    I’m curious, madam. How do you know I’m a “Mr”?

    Chances. Given the industry it simply is more likely than not that you are a Mr. (as I am). Further, since you did not actually correct me and affirmitively state that you are not a Mr., we shall presume that I am correctin teh first instance.

    Now then.

    A “pointy stick” is sharp, witty, and of course, on point. To paraphrase the famous Vice Presidential debate between Lloyd Bentsen and Dan Quayle, I know a pointy stick, and you, sir, are no pointy stick.

    link to

    Quite in fact, you are rather a dullard. If you had taken the time to read my post, you would see that I am not totally adverse to comments off-topic. I am not adverse even to vitriol. I love a good debate and my point above was that in your bringing up the topic of Hilmer again that you just do not provide a good debate. You refused to engage in any type of debate on the topic previously – your total lack of anything remotely substantive to Inquiring Minds, Cy Nical, Patrick Henry, Pedantic Pete and yes, even Ned Heller, at link to indicates rather that your stick is anything but pointy.

    Your position had been refuted then and you could not say anything sharp, witty or on point on that previous thread. And now you simply bore us again here. Pointy stick? You flatter yourself so undeservedly. You sir, have a wet noodle, not a pointy stick.

    It’s downright comical that you further want to take pride in being such an irritant. OK, you win. You are the King Bore. Congratulations.

  33. 68

    “It took 15 high powered inventors to arrive at this…”

    There are about 59 claims in the application. The listed inventorship is anybody who contributed to the conception of any claim, it doesn’t mean that all 15 listed inventors contributed to every claim. You should know that. I expect Examiner Mooney not to understand it, but everybody else should.

  34. 65

    Max, understood.

    1) In Europe, everything is presumed obvious unless it has technical advantage — described on filing.

    2) In US, examiner has burden of showing obviousness over prior art. Flat admits nothing.

    Problem, what we say in Europe binds in the US. See, Therasense for an example of the problem.

    Flat specs are all invalid in Europe. Euro-adapted specs have admissions that are effective against US patents.

    Horns of a dilemma?

    Lesson, best not to file in Europe if the US patent is at all important.

  35. 64

    Ned, I thought of a nice example, in balloons for expanding stainless steel stents. To begin with, they were of PE. Later came PET balloons. Finally, came PA balloons ie NYLON. Drafting “flat” and totally enabling, you present your invention, and the PTO argues that PA is an obvious and well-understood alternative material, well worth trying and very likely to succeed.

    Draft instead European style. Enable but, in addition, explain in the spec you file on the effective filing date of the claim, in what respects the PA balloon outperforms those of PE and PET.

    In Europe, you are then better placed to beat off any obviousness attack that might arise.

    But perhaps I have misunderstood “flat”. Drafting flat in the USA, do you even mention PE and PET?

  36. 63

    It’s hard to take the advice “Make no mistake” from a correspondent who makes a spelling mistake every time he (or she) writes “practicioner” and “adveserial”. Just how familiar is she, with these legal concepts?

    The job of the USPTO is to grant patents ie to do what the aplicant is asking it to do. Where’s the adversarial relationship in that?

    I see that everything an applicant utters, and every admission made on the PTO file wrapper, can be prejudicial to the future legal position of that applicant. So, be careful, be very careful, what you ask for, and how you ask for it. But adversarial? Surely not.

    Declaration of Interest: I’m a professional prosecutor (and NOT a pro se inventor, who might suppose that the treatment dished out to him/her by the PTO comes from an unreasonable, pig-headed, stubborn, Examiner unable to recognise a brilliant invention even when it is staring them in the face).

  37. 62

    Claim 1: A surgical system, comprising:a feedback system having one or more sensors operably responsive to physical boundary limitations of an operating field; wherein the one or more sensors provide information regarding the physical boundary limitations of the operating field; and a surgical instrument that is configured to respond to the information by either activation or inactivation.

    This is disgusting and every inventor named on the application should feel ashamed.

  38. 61

    Ned here is a link to Rule 27 of the EPC

    link to

    Have a read of that. But it is the caselaw on obviousness that really wipes you out if you do not follow the mandatory requirements of Rule 27.

    For the EPO, every patentable invention is defined in a claim as a combination of technical features that delivers a technical effect. If you don’t volunteer the closest art, the EPO is free to start its obviousness analysis wherever it pleases. By telling where you started from, and what problem you solved, you constrain the terms of reference of the EPO search, and confine the docs the EPO can use, to frame its obviousness attacks.

    Drafting flat, you will find out eventually that you can’t fend off the prima facie obviousness objections because you don’t have in your app as filed any support (Article 84) for your contention that your claimed subject matter is anything other than obvious.

    Up to you how you draft, mind you. Your blank sheet of paper. Write what you like on it but keep in mind that, in First to File country, what you disclosed on your filing date (technical features and their technical effects) will be decisive to what rights you get.

  39. 60

    Has anyone looked at Claim 1 and compared it to the filed specification? Claim 1: A surgical system, comprising:a feedback system having one or more sensors operably responsive to physical boundary limitations of an operating field; wherein the one or more sensors provide information regarding the physical boundary limitations of the operating field; and a surgical instrument that is configured to respond to the information by either activation or inactivation.

    It took 15 high powered inventors to arrive at this derivation from the old Milton-Bradley “Operation” game? At least “Operation” should have been named as the starting prior art in the missing background section of the application since it includes the first two claim elements and at least one of them must have played the game.

  40. 59

    Thanks Ned but I can’t take any credit for elevating. I’m only reporting (which I gather is what you like). Outside the USA, the Hilmer Doctrine has been a bone of contention for decades.

    As to “defiance”, as far as I am concerned, “defiance” is what is manifested by those people in these threads that defend the one-eyed US position on Hilmer and Paris.

    But this is old hat. Let’s not you and I fall out over Hilmer, when there is so much other stuff we can more fruitfully debate.

  41. 58

    I do not disagree, that the problem is litigation.

    Imagine being asked to decide on validity or infringement of a patent claim with a plain meaning that is, quite simply, utterly beyond your comprehension (despite the best efforts of the advocates, to reduce the mathematics, the science and the engineering down to your level). What to do? Fxxx knows.

    Is there an escape from Mission Impossible?

    Sure there is. Let equity decide.

  42. 57

    I disagree with that. Prosecution is adversarial if you are in the business of getting bad patents. Here’s the thing. Examiners love giving patents. Love it. No more responding to arguments, no more searching the same thing over and over. That is why the office mostly reviews allowances, in my opinion. It is too tempting for some to just let it go and allow. When I give a rejection, I write a detailed reasoning of why I’ve allowed. Not “‘836 does not teach –limitation–“. If I cannot argue in detail for allowance in view of what I have found, then you don’t get an allowance. Not only I write what is not in the art. I actually write why what is in the art would not have been modified in such and such way. Your job if you receive a rejection that you think is not right is to provide the examiner with that kind of argument. I think most of the arguments I get are aimed at getting a new non-final. If you get it, you might feel very satisfied, but it will not get your client much closer to a patent.

  43. 56

    The real problem is litigation. Anything you say, anywhere, on the record can and will be used against you — in ways you never expected. Your words will be twisted and contorted, taken out of context. It is ugly indeed.

    So, we Americans are gunshy and justifiably so. We are spare with our admissions, very spare.

  44. 55

    annoymous, the US and Europe are clearly not in lock step on patent law basics. The problem I perceive is that he elevates this difference into some kind of US defiance of international law. This is unfortunate.

    That said, I am still interested in hearing from Max on how they do things in Europe. It is more than useful on many levels.

  45. 54

    Max, what statute in Europe requires a discussion of the problems of the art and the inventor’s solution? I know you say it is required, but which Article?

    In the US, the issue remains open, as we understand it is the claims as they are issued, together with any discussion during prosecution, that distinguishes the claimed subject matter over the prior art, separates the wheat from the chaff, and identifies the invention with particularity. They are additionally patentable if they are not anticipated or obvious.

    So, why the requirement to do the examiner’s job on filing?

  46. 53

    I’m curious, madam. How do you know I’m a “Mr”?

    What makes you think my comments on Hilmer on the other thread were anything other than “unwarrented” (sic)? They were just as off-thread there as here, weren’t they? Yet the responses they drew there were so virulent that, according to you, they left me “without a response”. So some readers felt driven to write a substantive reply. We all want intelligent dialogue here, don’t we? That is the Point of this site, isn’t it?

    And I’m encouraged by your reaction to them here too. The more you protest, the more pleased I am. ping (remember him?) used to glory in his “Pointy stick”. I’ve got one too.

    So, thank you too for your aggrieved response. The pointy stick still works. Have a nice week-end.

  47. 52

    Every time I suggest that it is indeed the C+C standard (unique to the USA) which is responsible for the friction between Examiners and prosecutors (unique to the USPTO), I get told that I have no idea.

    But when Malcolm Mooney writes the comment above, I feel vindicated.

  48. 51

    This whole Rule 105 issue is a slippery slope that leads to situations where the government comes in and opens not just your file cabinet but your mind on the basis of what some runny-nosed examiner wants to see.

    But when this “runny nosed examiner” issues the patent, it’s presumed valid and “clear and convincing” evidence is required to find otherwise.


  49. 50

    A distinction one would hope would be made, but is not, is between being forced to divulge information and being forced to express an opinion.

    The statute requires that the inventor describe the invention in full, clear, concise and exact terms to enable others to make and use the invention. That does not include legal opinions about why the invention is patentable. Or about what the PA discloses. Or about which element of the invention is novel and which isn’t.

    It is, to my mind, an outrage that the CAFC would condone the PTO’s forcing applicants to provide an opinion of, say, obviousness without reference to some specific finding of obviousness. There are also issues of the attorney-client privilege. If I advise my client that in my opinion the application is obvious in view of some PA but he wants to proceed in order to get the PTO’s opinion, am I then required by Rule 105 to reveal my opinion if asked by the examiner? If I provide the reference in an IDS can the examiner demand to know under 105 whether I consider the invention obvious? Yes, he can, and I have to answer.

    According to Star Fruit, the CAFC can go so far as to force the applicant and his lawyer to provide his opinion of how some CAFC decision affects the application, which is absolutely outrageous.

    This whole Rule 105 issue is a slippery slope that leads to situations where the government comes in and opens not just your file cabinet but your mind on the basis of what some runny-nosed examiner wants to see.

    “So long as the request from the examiner for information is not arbitrary or capricious, the applicant cannot impede the examiner’s performance of his duty by refusing to comply with an information requirement which proceeds from the examiner’s view of the scope of the law to be applied to the application at hand . . .If the examiner deems the information sought pertinent to the legal inquiry the examiner must conduct, the fact that the examiner’s theory is incorrect is no ground on which the applicant may refuse to comply with a request for information. ” Clevenger – Star Fruit.

    IOW, it’s the examiner’s view, and only the examiner’s view, that determines which of your opinions you are required to divulge to the government, on the public record. This is fascism.

    Rule 105 is itself capricious and arbitrary. I don’t even think the IRS has this much power to intrude on the thoughts, opinions, and information of private citizens.

  50. 49

    Ah, the elusive non-adversarial and reasonable practitioner.

    It’s more elusive than you think, as skyywise is evidently an examiner and not a practicioner.

    No practicitioner worth their salt neglects to keep in mind during prosecution two things:

    One: Prosecution is adveserial. Conduct should be polite, but make no mistake – the process is adveserial.

    Two: A patent is not obtained in a vacuum. Post obtainment enforcement must be kept in mind. Speed of resolution, therefore, takes a far back seat to “proper” resolution.

    I grant that defining “proper” is no easy task and likely contains a span of answers.

  51. 48

    “Truly, it’s prxcks like you that fxck things up for everybody else.”

    And it’s truly prxcks like you that bend over for nonsense like what is going on in 11/880,432 that fxck it up for everybody else.

  52. 47

    I onetime had an examiner 105 me for all prior art and all reasons as to why the claims were not obvious. He listed the consequences of me not responding to admission that the invention was obvious. He placed the request after the examiner signature page in the office action, probably hoping I would not see it because who looks there for details of the office action.

    After getting confirmation from my client, I completed my reply to the Office Action as usual and then responded to his 105 request with “other than supplied herein, the information required to be submitted is unknown to or is not readily available” to anyone with a Rule 56 duty.

  53. 46

    Good morning all,

    Responding to comments elsewhere, I do find it tiresome to read over and over again comments stating a position that has been refuted and the losing side unable to overcome the arguments presented previously.

    I enjoy the debates on the threads and don’t mind (some) of the vitriol, as some of it does apply.

    Here is another example of a post that resurfaces a position that is unwarrented. The idea that the Hilmer doctrine penalises has nothing to do with this thread and the appropriate place for any such comments would be on the thread that left Mr. MaxDrei without a response. Dragging up the same position here is irritating at the least, and other than derailing this thread, I do not see what Mr. MaxDrei hopes to accomplish.

    If we cannot stay on point, at least can we stay away from rehashing losing positions?

    Thank you.

  54. 45

    Somebody upthread observed that it is the CAFC which forces attorneys to draft “flat”.

    Given that drafting flat will likely be highly prejudicial, if not fatal, to the prospects for obtaining claims of useful scope everywhere else in the world, how does one reconcile best USA drafting practice with best ROW drafting practice.

    Hardly a month passes, without some conference organiser or another offering to lecture on the question. So, it must be a non-trivial issue. It is for me, because I’m fxxxed if I know the answer.

    As far as I can see, Applicants should be pursuing a 2-track approach. For the USA file in the USPTO as soon as possible, with no Background section. For the rest of the world, rely on Paris and PCT, but with a specification that does reveal what technical effects (relative to the relevant background art) flow from the combination of technical features that defines the invention claimed.

    Is there any other way, with ordinary professional competence to serve the client who wants a full measure of patent protection for its inventive contribution to the state of the art, that is simultaneously effective in more than one country, one of which is the USA?

    Can you tell me any other Paris Convention member that penalises (Hilmer) any applicant that fails to file first in its own domestic Patent Office, and further penalises those applicants who, intent on revealing their contribution to the state of the art, their justification for the grant of 20 years of monopoly rights, include in their specification a meaningful Background section?

  55. 44

    Ah, the elusive non-adversarial and reasonable practitioner. If your from New York or D.C. then you’re an even rarer breed.

    Don’t often seen them, but always enjoy dealing with them when I do and enjoy the quick resolution of the case that normally results.

  56. 43

    I APOLOGIZE MR. LOFFLER. Now I know why your package was removed from the mail. It was matter of not making you angry. Or not having them even ask. just like the XXX. I truly have to stop looking at this like it is a Mirror. I must be Dyslexic in my thinking. So many lies. So many terrible people. So much stress.

  57. 42

    I woke up and my Dream was an answer. I was outside. I was at 22 Porrazzo. A big helicopter was trying to land. And when it did it landed on some very high Bushes. I was watching how it landed. No one was hurt. And while I was holding a bag of chewy toffees,a woman stuck her head out. I had just finished watching a movie, and was surprised that the company that was the Film Company called RENO. The Story was about my Case. But a lot was missing. It was a good movie, but it wasn’t finished. And low and behold it is Janet Reno flying the Helicopter.I said hey Janet.. And she said give me 7 of those toffees. So I did. And I said hey your movie was good, but it wasn’t finished… Why didn’t you wait? She said I know it wasn’t finished. And off they flew.

  58. 41

    Lots of finger pointing going around. Let me add to that.

    How much blame should we put on the “broadest reasonable standard” that the examiners are supposed to use?

  59. 40

    Hi Ned!

    No, just that the obsessive (and excessive) order of north american suburbs could be found appealing by some europeans who previously lived in the pressure-cooker chaos that can be some european cities.

    Didn’t mean to suggest that America was founded by people seeking this–only that certain 20th century immigrant waves may have found it potentially appealing.

    BTW, I was raised in the ‘burbs, although I was in a small burb outcropping, and lived most of my childhood life on the adjacent farms in in the adjacent forests (all now sadly gone).

    At least 80% of the families there were 1st-generation european immigrants–germans, austrians, finns, hungarians, scots, english, irish, italian, greek, etc..

    How about those background sections!

  60. 37

    IBP, I don’t know if America was founded by Europeans seeking a comfortable abode is a suburb, or even that it has been expanded by such in recent years.

    However, what I take your post to mean is that the American suburbs have no large-scale presence in Europe, but that you like them an think that Europe could learn from another American innovation. Is this close to the mark?

  61. 36

    And by the way, an examiner doesn’t get to work at this for any length of time and not see right through it. There is nothing more telling to me that an attorney arguing that no, it is not known to store data in a memory when the data is to be processed by a CPU. If that is your argument, is quite clear you have no argument at all and are taking the client for a ride.

  62. 35

    You people understand that getting a patent under false pretenses is fraud, right? Like getting an allowance because the Examiner has not found something that you know is old, even when the examiner got the real invention, and paying the issue fee anyway. How does that help the client? Or do you really think somebody getting sued for millions is not going to find that in the prior art with a team of people and a few months? (versus the two days on average the examiner gets, if lucky). How good you think it looks in court when the record shows you arguing that something is not known in the art when it might show as AAPA in one of your clients applications (happens a lot). Why do I get arguments that don’t make any sense, and the attorney tells me so in interview? Why the brand new set of claims after non-final, all to a reorganized same subject matter? Why do I find a year after-the fact that you’ve received prior art in a foreign country, or that someone is challenging your patent overseas? Why the creative argument about the meaning of a word in a cited paragraph when the immediate paragraph provides a definition? I think I know why. But these things happen, all the time. It’s really not fair not just to the examiner, but to the public in general. Remember that the next time you complain about quality, delays and what not. Try to realize that you guys are not evil geniuses. Nothing here is new, everybody does it. I really don’t get the crying about everything. If Examiners are such goons, it must be really easy attacking their positions. You only need to get one argument right, that is all. And please, somebody read In re Gurley already.

  63. 34

    Greetings one and all, I’m back from Europe and fully conscious.

    Well, I posted on a background section requirement last August, on another thread:

    link to

    I made one in short order by, as I said, cutting-and-pasting text from elsewhere in the spec.

    No big deal.

    I was of course immediately accused by Ping of having committed malpractice! An accusation against which I most successfully defended myself–easily, of course.

    Another poster, “yet another pseudonym”, actually discussed the issue in a manner that I consider to have been fruitful.

    So, just give them a background section, but don’t say anything new in it–literally excerpt text from elsewhere in the spec. Quick, easy, cheap, effective, safe, wise.

    VERY brief European comments:

    France–same as it ever was post-revolution
    Switzerland–comfortably cloistered
    Italy–evidence of public-sector corruption everywhere; chaos
    Germany–predictably rational

    Even though I had an essentially european upbringing and have been there many times, for the first time in my life, I actually believed there is some merit in the existence of north-american-style suburbs. Not that I am in favor of them on the whole, but I can see why european immigrants in the 20th century were prepared to choose the suburb over the city.

    If considered as a response to european-style settlement and urbanism, the north american suburb swings too far in the other direction–but cast in this light I can see it as a predictable step in domiciliary evolution.

  64. 33

    DC, Evans v. Eaton: “”

    When I first learned patent law, I was taught to be brief and concise in the claims. Then I moved to the West Coast and ran into the practice of adding numbers of conventional elements to the claims that had nothing to do with the invention. The reason for this, I was told, was to hide the invention among the weeds and complicate the examiner’s job. Now we have the flat specification and the flat claim. The spec makes no effort to distinguish old from new. Neither does the claim. Instead it recites hosts of elements in random order. What is new “emerges” from the prosecution.

    While eventually the novel subject matter will emerge from this process, it really is unfair to the examiner, and potentially to anyone who wants a fair understanding of the covered subject matter simply by reading the specification and claims and not by reading the prosecution history.

    It also violates the spirit, if not the holding, of Evan v. Eaton.

  65. 31


    I’m sorry for you ping. Kicked out, shunned and ignored, you now reappear but are quickly found out by your obvious familiarity with posts and posters here, and with your old antagnoisms and hurt feelings.

    You do seem at times to want to actually engage in substantive discussions. When you do, we can and do get along.

    So calm down, just a bit, please.

  66. 30

    Sorry for the typos. The comment previews have for some reason become ridiculously small. I don’t have the patience to work through a 6-7 word wide by 7 line high scroll box this late in the evening and week.

  67. 29

    The rules do not require a summary of the invention. 37 CFR 1.73 and 1.77 are permissive (the application “should” include a summary).
    37 CFR 1.70 requires that the specification distinguish the invention “from other inventions and from what is old.” The specification “must” do this. So it seems that describing both old and new without differentiation is not allowed. Not much different from providing a background and summary, eh?
    In most situations, a patent specification that clearly demonstrates that the invention is actually an invention, solves a significant problem, and is claimed as distinctly as possible is the most desirable. A specification that hides the ball just annoys everyone that tries to make sense of it, including the examiner, the judge, the jury, the licensee, the investor, and often the inventors as well. Why do that when your goal is to convince all of them that the specification describes something worthy of a patent? On the off chance that you can get a goofy unintelligible patent that might end up in litigation and get you to the jury because it is so unintelligible the judge cannot deal with it on summary judgment? I think that scenario is so unlikely, compared to legitimate uses, that it is better to write a clear spec, even if it does comply with the rules by clearly distinguishing the invention “from other inventions and from what is old.”
    Also, do patent attorneys assume that examiner’s like dealing with vague specifications? or that they won’t remember how unhelpful you are the next time they see one of your applications?
    Refusing their requests seems like a good strategy for a guy who is only going to prosecute a single patent in his entire career. As to Evan v. Eaton, from 1818, which must have been decided on the basis of the CFR’s in place at time, it might make interesting reading.

  68. 28

    Oh yes.

    You are a hack, a has been – listen to your own rantings: “claim indefinite because the reader of the claim would have no means whatsoever of identifying the old from the new

    That’s not indefinite. If a means plus claim can be covered by the old, then it is anticipated or obvious.

    Nothing more. Your posting otherwise twentyfive times a day will not change it.

    I suggest you get a job at the local Wallmart and stop spending so much time polutting these boards with your ramblings. Maybe once upon a time you were a decent patent attorney, but no more. You are embarrassing.

  69. 27

    The question then for patent [prosecutors] is how to respond to the request from above?

    Most generally: look in your file, ask the inventors what they have in their files (or if they specifically recall other information) and disclose responsive information. However, I recognize that this is not the meat of Dennis’ question.

    “a detailed summary of the improvements included in the claimed invention”

    Your 1.56 team either knows of something that is the closest prior art (that you have), or it does not. I think that a detailed summary could quite plasibly consist of a list of the paragraph numbers in the detailed description that describe the improvements versus what the team already knows of could be sufficient. The material that you don’t list would, by omission, be ‘old’ and potentially treated as admitted prior art. The nasty question is whether you explicitly characterize something as the closest prior art (that you have). Given the variability of Federal Circuit panels and the sometimes hyperbolic inequitable conduct arguments being raised in litigation — who knows. Lay out the issues in writing, get instructions in writing, and have your client take at least some ownership of the risk.

    “any technical information known to Applicant concerning the related art.”

    Treat it as a super 1.56 — add some information that you already have to what has been disclosed to be cooperative, but no more. Why?

    1. 1.105’s “reasonably necessary” — irrelevant or cumulative information is not reasonably necessary.

    2. 1.105(a)(3)’s “appropriate manner” and examples — asking for a universal document dump is not an appropriate manner of requesting information.

    3. 1.105(a)(4)’s “is unknown to” — the request does not obligate the team to search the world, merely what they already have.

    Don’t forget that a 1.105 requirement, and any decision to invoke 1.105(c), is reviewable by a 1.181 petition. Set yourself up to look like the good guy, or at least not the bad guy. Star Fruits probvided nothing in response to the request, so the “reasonably necessary” argument was one of kind and not degree. It would be very hard to justify a forced abandonment where the applicant adds some responsive information, otherwuse objects to the breadth/non-specificity of a request, and invites a more specific request along the lines of 1.105(a)(3)(ii) and (iii).

  70. 26

    how would know what really was being claimed?

    Um, that would be the parts IN the claim.

  71. 25

    I’ve noticed that in addition to a couple other stoopitly named sockpuppets. Maybe strike>hawk ping is trying on a few different identities until he decides on one that suits him. Or maybe he’s just on vacation and an admirer is picking up “the slack.”

  72. 24

    I kept telling her NO that is not right.. She kept saying look it is Jefferson. I said NO the Zip code is all their own just like their Exchange! But she showed me and wouldn’t listen. Then I ran back..See I said. So we sent it that way. The Post Master or the Postal computer must have set it to read the front of Jefferson, not the Intake! but you know what. I have so much history to show what, and how and why…

  73. 23

    Malcolm, I agree with you about what.

    Have you notice the sudden appearance of Hardworking that seems to coincide with the sudden disappearnce of ping? Their styles are similar in that they each do not do answers and each operate primariy through personal potshots at other posters.

  74. 22


    From Dennis post,

    “In Ex Parte Schneidereit, 2009 WL 798905 (Bd. Pat. App. & Inter. 2009), the BPAI suggested that the examiner use Rule 105 to request a clarification of what structure corresponds with a means-plus-function element. ”

  75. 21

    You reply with a background and summary because the request is reasonable. Patent prosecution shouldn’t be adversarial like litigation, where any request is taken as capitulation. Ideally, it’s a negotiation, someone makes a request or takes a stand, the other side pushes back, but doesn’t dismiss the request out of hand.

    If you say that this will hurt in potential future litigation, well, if your litigation hinges on an ambiguous disclosure regarding the scope of the invention, you likely have larger problems with the case substantively.

  76. 20

    The problem becomes accute if the specification describes both old and new without any differentiation, and the claims appear to cover both, by, for example, including elements that are old and elements that are new.

    What is the examiner to search for? Yes, it is true, he has to show all elements in his rejection, but without some differentiation in the specification of old from new, how would know what really was being claimed?

  77. 19

    if applicant don’t wanna provide them, applicant don’t have to. Same with support for amendments.

    If the examiner is nice, I will provide support.

    How’s that? Happy?

    Truly, it’s prxcks like you that fxck things up for everybody else. I’m trying to imagine a so-called “professional” more pathetic than a patent prosecutor like you who fancies himself some sort of “tough guy.” Okay, maybe a patent litigator who cries on the stand because someone reasonably suggested that he tried to change a date on a court filing. But that’s about it, really.

  78. 17

    But, I suppose that I would respond to this examiner’s request with a background and a summary…


    The request is bogus. Why capitulate?

    Keep in mind too that the Examiner’s request was for “technical information,” and this after the applicant submitted an initial IDS of 62 items. Was that not enough technical background from the applicant?

  79. 16

    Another discussion railroaded to Ned’s penchant for misunderstanding Means + claims.

    Give it a rest.

  80. 15

    The practice of writing “flat” patent applications, without background or summary, is gaining a significant following. It seems to arise from litigators in the business of making patents into something that they are not, in situations where the facts at hand are much different than those appearing in the prosecution history. Also, it appears in “fishing” applications, where the applicant is not sure what to claim going in, and so throws in the kitchen sink, hoping that the claims can be manipulated into some valuable form later. A position taken in an application, while helping an Examiner to understand the claims, can limit the litigator’s creativity, and cause issues when the claims migrate to the kitchen sink. Also, a position taken in an application can limit the claim scope in unnecessary ways, when taken with the force of an admission. So, writing patents is not easy. But, I suppose that I would respond to this examiner’s request with a background and a summary…

  81. 14

    Paul, the issue you identify has not squarely been addressed since Evan v. Eaton, i.e., whether the specification has to differentiate old from new. Rader was of the opinion in Arriad that the specification did not, as that was the role of claims.

    But what if the claims themselves cannot be understood without some help from the specification as to what of the subject matter described is new. Perhaps the problem can be stated in the form of a Section 112, p.1/2 rejection (prior to 1952, they were not separated) that essentially says that the claimed subject matter cannot be identified from the written description because the written description does not differentiate what the of the subject matter described is old.

    As an example of this problem, one assumes that all the drawings describe in some form the subject matter that is being claimed. If a drawing
    represents the state of the art, we are required to label it as prior art. But, what if the drawings illustrate both the prior art and the novel subject matter without labelling, and the specification never states what is old?

    Another problem might involve means plus function. Assume the novelty lay in a particular means or step plus function element. Assume further the specification broadly intermixes old and new structures or steps, all of which could perform the recited function. Such a claim is indefinite because the reader of the claim would have no means whatsoever of identifying the old from the new from the claim itself regardless that there is corresponding structure that performs the function.

    I think this is a problem more than one of form.

  82. 13

    Why would mail that I send to 32399. Be forwarded to 32301… Then die on arrival. I was actually invited to see that 32301 is not a delivery. So why would that be… Goon Mail?
    So whoever is ruling(GOON) that zipcode is responsible for MAIL FRAUD

  83. 12

    As to whether applicants are legally entitled to dump a big specification on examiners and refuse to point out what part is relevant to what is being claimed, or differs from known prior art, SAPJ [and former Solicitor] Fred McKelvey liked to cite amusing but pointed “truffle-hunting” case law like the following in some of his Board decisions:
    “Courts are entitled to assistance from counsel, and an invitation to search without guidance is no more useful than a litigant’s request to a district court at the summary judgment stage to paw through the assembled discovery material. ‘Judges are not like pigs, hunting for truffles buried in’ the record.” Albrechtsen v. Board of Regents of the University of Wisconsin (7th Cir. 2002) citing United States v. Dunkel, 927 F.2d 955, 956 (7th Cir.1991). [Likewise, Wilson v. O’Leary, 895 F.2d 378, 384 (7th Cir.1990)]

  84. 11

    I am amused by this one the most:

    6. Improvements: Where the claimed invention is an improvement, identification of what is being improved.

    This would sure put a damper on the all too common practice of not having a new and novel concept introduced until dependent claim 5 or so. This overly broad style of drafting has made the review of PG-Pubs quite difficult for infringement work. (Or really easy with the right disclaimers, though probably not as useful.)

  85. 10

    “Even assuming that you’re right…”

    That’s a safe assumption.

    “the MPEP does describe what is an examiner’s job, and it says that the applicants should be providing this information.”

    And the MPEP says that an application should have a background, and section headings, but if applicant don’t wanna provide them, applicant don’t have to. Same with support for amendments.

    If the examiner is nice, I will provide support.

    How’s that? Happy?

  86. 9

    Even assuming that you’re right, the MPEP does describe what is an examiner’s job, and it says that the applicants should be providing this information. In other words, it’s inaccurate to say it’s solely an examiner’s job to dig through your 300-page spec to try to find the support (which may not even exist) for your full set of completely rewritten claims.

  87. 8

    Applicants are not bound by the MPEP. There is nothing in Rule 111 that requires that.

  88. 7

    About 75% of my applications are in TC’s 3600 and 3700. The remainder are in TC 1700.

    So no, Examiner Mooney, I’m not prosecuting software or business methods.

  89. 6


    Should the last line of the article read “The question then for patent practicioners is how to respond to the request from above (that includes 15 inventors)?” rather than “The question then for patent examiners is how to respond to the request from above (that includes 15 inventors)?” since the request comes from the patent examiner?

  90. 5

    The examiner could just make the written description rejections instead of doing the 105 requirement. Any rebuttal would necessarily have to provide the same information that the response to the 105 requirement would have provided.

    By the way, in drafting your amendment, you should already be drawing solely from material already present in the application. In other words, you should already know exactly where the support for your amendment comes from, because you looked at it when deciding how to amend. By not sharing it with the examiner on the principle that “it’s the examiner’s job”, you’re really doing yourself and the examiner a disservice by being a jerk.

    As for whether it’s really the examiner’s job, though, see MPEP 714.02, “Applicant should also specifically point out the support for any amendments made to the disclosure,” and MPEP 2163.06, “When an amendment is filed in reply to an objection or rejection based on 35 U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not ‘new matter’ is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure.”

  91. 4

    If the pto believes that one or more elements are not supported, then the claim should be rejected on that ground.

  92. 3

    Why is that some of us who prosecute patents for a living (and earn a nice living while doing so) have no problem with these rules but others just can’t stop whining about them?

    Anyone want to take a guess at what technology area is of most interest to a putative prosecutor like WTVL?

  93. 2

    “…(suggesting that the examiner request information as to how added claims satisfy the written description requirement).”

    So the Board is suggesting that the examiners shift the burden of doing their job to the applicants? I thought Dufas was gone from the PTO?

  94. 1

    1.105 requests really need to be cleaned up by the Office, What can be asked, is the standard the same as under 1.56, or is this more like an IDS where I am providing the best information I know and no search is required. Star Fruits cleared up nothing. We need the Fed Cir or the Office to clear it up.

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