Fractures, Fault Lines, and the MPEP

By Jason Rantanen

As part of my standard preparation for teaching a given doctrine in my patent law class, I like to review the relevant section of the Manual of Patent Examination and Procedure (MPEP).  The MPEP typically offers a relatively well-organized description of the doctrine, with critical cases referenced.  But my review leaves me frustrated almost every time.

The reason for my frustration is that the MPEP, while doing a terrific job with legal issues on which there is clear precedent, frequently elides over the doctrinal fractures and fault lines that are at the heart of contemporary patent law disputes.  Or worse, it simply does not acknowledge their existence at all.  The result is a resource that, in presenting patent law as clear and determinate on its face, masks the existence of  sharp tensions and breakpoints in patent law.

For example, today I’ll be covering § 102 “public use” and “on sale.”   A glance through the MPEP’s sections on public use under the First-to-File regieme reveals a landscape that seems dry and barren, with the only major feature being the question of whether pre- or post-AIA § 102 applies.  From reading MPEP § 2152, one gets the sense that post-AIA, the only issue once the question of regime is resolved is whether the activity was “accessible to the public.”  Secret sales or offers for sale, for example, do not place the invention “on sale”:

“AIA 35 U.S.C. 102(a)(1) does not cover secret sales does not cover secret sales or offers for sale. For example, an activity (such as a sale, offer for sale, or other commercial activity) is secret (non-public) if it is among individuals having an obligation of confidentiality to the inventor.”

MPEP § 2152.02(d).  Experimental use has been entirely dropped from the MPEP’s discussions of post-AIA public uses and sales.  It’s as if it never existed.

Yet, these are far from resolved issues.  There are plausible arguments that Congress legislatively changed the meaning of “public use” through the AIA; there are at least equally plausible arguments that Congress did not.  The PTO’s position on secret commercial activity is on even weaker footing.  Inevitably, the Federal Circuit, and likely the Supreme Court, will weigh in on this issue of statutory construction.  But the MPEP’s characterization of this issue as settled hides a very real tension in patent law, one that will really matter to inventors and patent attorneys.  It’s not difficult to imagine a hypothetical situation in which someone relies on the MPEP’s language about secret commercial activity not constituting sales for purposes of § 102(a)(1), only to be placed in a very bad position should the Federal Circuit or Supreme Court conclude otherwise.

These issues are only the most obvious fault lines hidden under the MPEP’s seemingly solid description of patent law doctrine.  But there are others, and creative, knowledgeable attorneys likely know many of them already.  One that has always fascinated me is the question of what constitutes a “use” for purposes of § 102 “public use.”  The casebook I use for patent law, Craig Nard’s The Law of Patents, does a good job of setting up this issue through Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007).  The issue is whether just showing, or perhaps even demonstrating, an embodiment of the invention constitutes a public use.  Motionless Keyboard suggests that sometimes not, at least if the invention is not used for its intended purpose.  But in other cases, the Federal Circuit brushes aside the “intended purpose” language of Motionless Keyboard.  See, e.g. Pronova Biopharma Norge AS v. Teva Pharmaceuticals USA, Inc., 549 Fed. Appx. 934, 939-943 (Fed. Cir. 2013) (nonprecedential).  This question of what constitutes a use is a substantial fracture point where the law is indeterminate, but one gets no hint of this potential tension from the MPEP.  See § 2133, 2152.  Other fracture points and fault lines are apparent if one digs into the recent cases: the question of what constitutes an offer for sale versus an assignment or license is another fracture point within the § 102 space on which disputes ultimately get resolved,  See, e.g. Elan Corp. v. Andrx Pharmaceuticals, Inc., 366 F.3d 1336 (Fed. Cir. 2004), but which one gets no hint of from the MPEP.  Likewise, while there is an extensive discussion in the MPEP of whether an invention is “ready for patenting,” see § 2133.03(c),  there is no discussion about a fundamental important question: what is the invention for purposes of a product claim? Is it just an embodiment of the invention or is it the technical know-how (i.e.: what we usually think of as “the invention” when talking about patents)?

My point is not that the MPEP should definitely include extensive discussions of fault lines and fracture points within the caselaw.  Indeed, the MPEP isn’t much worse than most treatises, which similarly elide or ignore all but the most well-recognized tension points in the law.  And “on sale” and “public use” issues, which typically involve information within the inventors’ own possession rather than information that is easily found by the examiner, are perhaps not the most efficient places for the MPEP to offer substantial guidance.  Whether or not the MPEP would benefit from greater detail is a normative question that I’d be curious to hear folks’ thoughts on.  I do note, though, that on some issues, such as experimental use prior to the AIA, the MPEP goes into substantial detail already, so it’s treatment is more inconsistent than uniformly thin.

My point is simply that the MPEP’s presentation of patent law doctrine inherently implies a patent law that is far more determinate and clear than it really is.  There are hard questions in patent law, but reading the MPEP gives the impression that they are just complicated questions with definite answers.  The caselaw suggests otherwise.

86 thoughts on “Fractures, Fault Lines, and the MPEP

  1. Sometimes the MPEP is just wrong (or at least the Examiners refuse to follow it).

    I recently have filed two petitions to make special. One was based on the health of the inventor (applicant) and one was based on both age and health of the applicant (the majority shareholders of the assignee).

    The petition to make special based on the health of the inventor was for a man who was just diagnosed with cancer for the third time. Evidence was provided in the form of medical records. After over six months, the petition was denied because the examiner wanted a signed doctor’s certificate or other medical certificate on official stationery specifically stating that the “health of the applicant is such that he or she might not be available to assist in the prosecution of the application if it were to run its normal course.” The statute makes no such requirement. The MPEP does not require this. The MPEP states that a petition by an applicant must be accompanied by any evidence showing that the state of health of the applicant is such that he or she might not be available to assist in the prosecution of the application if it were to run its normal course. I pointed this out to a petitions officer and was told that it didn’t matter what the MPEP said. To get a granted petition, I must provide the appropriate signed certificate on official letterhead. As the inventor is being treated by the veteran’s hospital, this has proven to be challenging (and probably impossible).

    The second petition was based on the age of one of the owners of the assignee (the applicant) and the age and health of another one of the owners of the assignee (the applicant). These owners are the real parties at interest. One of the inventors has no part in the invention/process and the other is only tangentially assisting the owners/assignees. The petition was denied (after over six months) because it will only be granted for the inventors, not the assignees (even if the assignee is the applicant). When I spoke to the petitions office, they said that “applicant” really means “inventor” in the rule and the MPEP section.

    The clear language of the MPEP is simply being ignored. Or there are secret rules that are being followed, but are not in the MPEP.

    1. there are secret rules that are being followed, but are not in the MPEP.

      With NO doubt, the answer is Yes.

      The Office publicly admitted this on the record during the SAWS debacle.

      SAWS was only one of several (count unknown, reach unknown) similar clandestine programs within the Office.

      Way way way too many people have fallen for the “sacrifice” of SAWS and have not pursued any additional (and much needed) sunshine into the Office.

      Maybe an academic can write about this….

    2. Why do you look at the speck of petition sawdust in your brother’s eye and pay no attention to the inventorship plank in your own eye?

  2. The law of secret commercial use is set by D.L. Auld Company v. Chroma Graphics Corp., 714 F.2d 1144 (Fed. Cir. 1983). The Federal Circuit was at liberty to adopt or reject Metallizing Engineering Co. v. Kenyon Bearing and Auto Parts in 1983 and Judge Markey chose to adopt its rationale. The USPTO chose to ignore D.L.Auld in its rule hearings on the implementation of the AIA, perhaps because it was not mentioned in the often cited Congressional soliloquy. The USPTO position does real harm to patent applicants and the general public by pushing the resolution of the ambiguity of whether the AIA impacts D.L. Auld much further into the future. Had the USPTO taken the opposite position Rule 56 would have forced the disclosure of commercial secret use & a rejection on such use would have caused a PTAB & perhaps Federal Circuit decision on the issue. It will take much longer for it to come up in the infringement litigation context creating a much longer period of ambiguity.

    1. Except for the fact that you are wrong (in part because of that very “oft mentioned” Soliloquy).

      There is NO ambiguity other than the one being attempted to be fabricated by people who may have wanted Congress to have done something other than what Congress did.

    2. Larry, let’s make some distinctions regarding Auld and Metalizing.

      1. Third party secret commercial use is not prior art.
      2. The inventor’s secret commercial use (outside the grace period) a bar in that the inventor has forfeited his right to a patent — relying on Pennock v. Dialogue.
      3. The legislative history makes no distinction between 1 and 2, thus terribly confusing what the new 102(a) means.

      But lets us consider that “prior art” was always considered from the founding to be that which was publicly known and use. The Pennock Bar of On Sale was a personal forfeiture that the exclusive period of the patent not be indefinitely extended. The two concepts are distinct.

      Hand from Metallizing:

      “Pennock v. Dialogue, supra, 2 Pet. 1, 7 L.Ed. 327; i.e., that it is a condition upon an inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or legal monopoly. It is true that for the limited period of two years he was allowed to do so, possibly in order to give him time to prepare an application; and even that has been recently cut down by half. But if he goes beyond that period of probation, he forfeits his right regardless of how little the public may have learned about the invention; just as he can forfeit it by too long concealment, even without exploiting the invention at all. Woodbridge v. United States, 263 U.S. 50, 44 S.Ct. 45, 68 L.Ed. 159; Macbeth-Evans Glass Co. v. General Electric Co., supra, 6 Cir., 246 F. 695. Such a forfeiture has nothing to do with abandonment, which presupposes a deliberate, though not necessarily an express, surrender of any right to a patent. Although the evidence of both may at times overlap, each comes from a quite different legal source: one, from the fact that by renouncing the right the inventor irrevocably surrenders it; the other, from the fiat of Congress that it is part of the consideration for a patent that the public shall as soon as possible begin to enjoy the disclosure.”

      1. Ned, I completely agree with you. Both Metallizing & D.L. Auld are articulating a forfeiture doctrine, not defining prior art. Judge Markey is quite clear on the point: “The “forfeiture” theory expressed in Metallizing parallels the statutory scheme of 35 U.S.C. § 102(b), the intent of which is to preclude attempts by the inventor or his assignee to profit from commercial use of an invention for more than a year before an application for patent is filed.” Sadly, Judge Hand is not so clear, but it is judge Markey who is articulating the governing law of the Federal Circuit. Judge Markey is also quite clear that secret commercial use has no impact on a third party, making it clear the use is not classic “prior art” saying “Where a method is kept secret, and remains secret after a sale of the product of the method, that sale will not, of course, bar another inventor from the grant of a patent on that method.” This is backed up by W.L. Gore v. Garlock, 721 F 2d 1540 (Fed Cir 1983) where that was an issue before the court.

        In my view, beyond the problem of using a Soliloquy to interpret in contravention of the principles annunciated in “On Reading Law” co-authored by Justice Scalia, is the problem that the Soliloquy speaks to a definition of “prior art”. It does not address a judicial doctrine of forfeiture. Such doctrines, such as inequitable conduct and obvious double patenting, are a real part of the patent law, but they find no express statutory text support.

        And I absolutely agree with your reading of Pennock, despite some in at least the academic community who have tried to read it differently. I believe the case is quite clear in indicating that while the hose at issue was freely sold, the public was unable to back engineer its construction. Thus the reference to secrecy was well justified.

        1. Wrong yet again Lawrence.

          The express purpose of re-doing 102 was to remove that forfeiture (personal).

          It is fundamentally reflected in the law, the Soliloquy, and even the TITLE of the section was changed to reflect dropping that part.

          Again, the only “ambiguity” is that which is (failingly) being attempted to be added because Congress did something other than the “desired narrative.”

          This is just not that difficult folks.

          1. Anon, you do realize that the reason for the implied forfeiture of a right to a patent enunciated by Pennock v. Dialogue was to prevent the period of exclusive use from being indefinitely extended so that the public may enjoy the benefit of the invention at some earlier, but limited date in the future. A finding that Congress specifically intended to overrule Pennock would potentially, and most probably probably, lead to the unconstitutionality of the AIA. I realize that there are arguments that Congress could constitutionally protect inventions in long, but secret, commercial use so that the public might eventually benefit from its public disclosure. But the logic of Pennock is strong in the other direction.

            On your reading of the legislative history, I don’t recall any discussion Pennock v. Dialogue and its rationale. I would think that Congress would be appalled if someone actually argued to overrule that case.

            1. There are many things that may sink the good ship AIA Titanic on constitutionality grounds.

              The logic of Pennock is most definitely NOT one of them.

              As I have explained previously, it is simple error to conflate the time of protection under trade secret with the time of protection under patent. Just because prior judicial members made that mistake does not mean that such was somehow not a mistake.

              It was.
              Congress has addressed that in the current law.

              New to you is still new, and the patent bargain still inures.

              The “theat” of loss with the pure race under the AIA is deemed sufficient “protection” for the policy position that you want to defend. Such is simply NOT a constitutional issue. At all.

                1. No one said anything about finding Pennock unconstitutional.

                  You are desperately trying to obscure a very clear item.

                  I do hope that no one falls for your dust-kicking.

                  Whatever Pennock was to, the Court was exceedingly clear as to the deference to the statutory law of what Congress had decided to write.

                  Congress has now decided differently.

                  There simply is no constitutional issue to be had here.

          2. The AIA amended the statutory definition of “prior art”. I fail to see why it was all that clear that it was also addressing a judicial doctrine of forfeiture. Indeed any such interpretation would be contrary to the principles of statutory interpretation set for in “Reading Law” by Scalia and Garner.

            Just what in the Title “Conditions for patentability; novelty” tells one that a judicial doctrine is being abrogated? Is the argument that the new 102 sets forth all the conditions for “patentability”? If so, does that mean the AIA also abrogated inequitable conduct and obviousness double patenting?

              1. The legislative overruling of a judicial doctrine is a not very clearly expressed by the elimination of the phrase “loss of right to patent”. It certainly does not meet the standard expressed in “Reading Law”.

                The more logical meaning to be attributed to the elimination of this phrase is that it was redundant with “Conditions for Patentability”. If one does something, such as making a public disclosure of an invention more than a year before filing an application, which makes the invention unable to meet one of the conditions for patentability, then one has lost the right to a patent.

                1. You strain your credibility well beyond the fracture point with your “more logical” here because there is nothing logical about the wholesale removal (there is NO “redundancy”); couple that with the Soliloquy, and the direct words, and the more logical meaning is clearly that you want something other than what Congress actually did.

                  The law is expressly different than what you want and you are just going to have to accept it.

  3. In addition to agreeing that the MPEP is not the place to raise arguments against patent statute interpretations blessed by the PTO Director and not yet decided by the Fed . Cir., which would merely confuse examiners, some other parts of the MPEP have apparently not been re-written in some time. They contain old CCPA case cites w/o citing more recent Fed. Cir. decisions on point. This can lead, for example, to PTO PTAB appeal decisions citing different cases on point than the PTO MPEP. The PTAB is not bound by the MPEP.

    1. Does the PTO make any effort to keep up with Fed. Cir. Rule 36 affirmances of PTAB decisions and Rule 36 affirmances of district court decisions?

      They should.

        1. Paul, but, as you know, the Federal Circuit panels seems to have a habit of not citing inconsistent, but prior cases. That is why we have multiple lines of authority develop. While this might be acceptable when one panel disagrees with another, it is not acceptable when a panel is effectively overruling controlling authority.

          1. While this might be acceptable when one panel disagrees with another

            Why would even (especially) that be acceptable?

            You do realize that “effectively overruling controlling authority” is the immediate effect and in effect forcing only en banc decisions to have that ‘controlling authority’ effect.

            Under what basis do you propose such a radical view?

            1. Anon, “radical?” Because it works in Europe. My understanding is that one board decision is not binding on the next so that they are free to disagree with each other. At a certain point in time, an enlarged board considers the various views and makes a decision. That could work with the Federal Circuit; and it seems to be actually something they are doing in practice even if they do not acknowledge that they are doing this.

              1. One word (again), Ned:

                Sovereignty.

                I don’t give a rip what “works in Europe” as that is NOT my sovereign’s law (or rule of law).

                I need a better answer – one grounded in US jurisprudence, please.

  4. Most of the case law “interpretations” provided in chapter 2100 of the MPEP are laughably incorrect. In the PTO’s favor coincidentally. Or not.

    1. AAA JJ, agreed.

      I have cautioned people working for me that not only is the MPEP not the law, but relying on it rather than reading the cases themselves is a fools errand at best because of this.

  5. As other commenters have mentioned, the MPEP is not intended to be a treatise, or at least not a neutral one. The MPEP is designed as a guide for examiners, and many portions of it have a distinctly pro-examiner slant. In many sections, there are numerous case law examples to provide support for a particular position that an examiner would take in rejecting the claims, but comparatively few counter-examples.

    I would have serious reservations about using the MPEP in any substantive way to teach law students. I suppose that the positions that the PTO adopts in the MPEP can be illustrative, but I sincerely hope that you are not encouraging your students to rely on the MPEP as any sort of treatise on patent law.

    Also, on a bit of a tangent, I have had several cases in which an examiner simply cites a case in a rejection and simply parrots the language of the MPEP. I often respond by explaining why that particular case is irrelevant due to the facts. Typically, this absolutely befuddles the examiner. I think the lack of proper legal training is the main culprit, and a more thorough understanding of the case law would benefit examiners to a great extent.

    1. Thanks for your comment. That’s precisely my point: that the MPEP presents the patent law as if it is clearer and more determinate than it really is. If the result is that examiners are befuddled when references from the MPEP are challenged, that’s an even greater concern.

      To be clear: I do not teach the MPEP as the law. But I do look at it, along with several other sources, the cases and my own notes, when preparing to cover a particular doctrine.

      1. Admittedly, the PTO doesn’t do a great job of teaching examiners to interpret and apply case law. It’s considered an intermediate topic from a performance appraisal standpoint, but in all honesty, it requires significantly advanced skill to really understand what the holding of an opinion is and apply it correctly to a somewhat different fact pattern. Most examiners don’t receive the training required to do this correctly on a consistent basis.

        On the other hand, examiners can, for the most part, read the MPEP and extract those single sentence condensed versions of case law, and apply that to a case. The unfortunate thing is that those single sentence versions are often gross overgeneralizations of the actual holding, and, well, we all know what happens when you get a shiny new hammer.

        1. There’s a simple solution to this: no rejections relying on case law. Certainly no rejections based on “single sentence versions [that] are often gross overgeneralizations of the actual holding.”

      2. The post is perfectly clear, but I’d also missed this distinction when I first read the post and thought that you taught or assigned the MPEP somehow. A couple of drive-by anonymous commenter thoughts on this:

        This is an interesting topic, and I wonder if it would be consistent with the MPEP’s purpose for the book to (a) acknowledge fault lines and ambiguities and then say how the PTO resolves them either as a matter of policy or best interpretation of the law, or (b) gloss over all but the most important ambiguities, on the theory that the MPEP is meant to be a reference book about both “the law” and PTO practice, and that presenting patent law as a big mess would be confusing and annoying to most readers and would just invite more litigation. To students, professors, and litigators, (a) would be great. To people who just want to prosecute their clients’ patents and ensure that they follow the rules along the way, maybe they’d prefer (b). I don’t know either way.

        Also, I wonder if much of the eliding and glossing over is either unintentional, or based on a considered view that there either is no ambiguity or that the ambiguity doesn’t matter in most cases. The patent law has a lot of standards that are fuzzy at the edges but work fine in most cases. It’s easy to take most of these standards and ask “ah, but what does X really mean,” where X can be “ready for patenting,” “publicly available,” “motivation to combine,” “insubstantial differences,” “reading a claim in light of the specification without reading limitations in,” “substantially the same,” “unexpected results,” etc. Once the MPEP starts deconstructing every ambiguous standard in patent law, you’re no longer able to fit the whole thing into something resembling a phone book.

    2. The comment here is well taken. One reason why I like to teach aspects of the MPEP is to help prepare students for the registration exam. We also spend considerable time on administrative law issues.

      1. Dennis.

        Are there any principles of administrative law which you would say are applicable here?
        i.e. to the A) formulation of policy to be executed by a department of the executive branch (taking of a stance of some sort required to enact its mandate) in view of existing fractures and faults (stemming from statute and/or case law) in the law
        B) creation of guidance and materials to be used by personnel in discharging the duties of that department.

    3. The Foreword to the MPEP describes its purpose:

      “This Manual is published to provide U.S. Patent and Trademark Office (USPTO) patent examiners, applicants, attorneys, agents, and representatives of applicants with a reference work on the practices and procedures relative to the prosecution of patent applications before the USPTO. It contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application. The Manual does not have the force of law or the force of the rules in Title 37 of the Code of Federal Regulations.”

      It is the Manual of Patent Examining Procedure after all…

    4. My experience has been that if I’m arguing case law before an examiner, I’ve probably already lost that round (unless I’m trying to distinguish over a case that the examiner has cited in support of a rejection, where sometimes I’ve had success). Making those arguments on the basis of those other cases is just setting the stage for the appeal and beyond.

  6. This post misunderstands the role of the MPEP. It is not a case law book; it is not a treatise, such as Chisum. The MPEP is instead the agency’s view of how to apply the law. The basis for Rantanen’s complaint–that the MPEP doesn’t acknowledge splits in the law–is actually a basis for praising the PTO. We want the agency to interpret the law and apply it in a uniform manner. If any given applicant disagrees with the PTO’s interpretation and application, then that applicant has the ability to challenge the PTO’s interpretation (but not always). This is how administrative law does and should work. Too many patent attorneys do not understand this.

    1. “The basis for Rantanen’s complaint–that the MPEP doesn’t acknowledge splits in the law–is actually a basis for praising the PTO. ”

      No, it is not.

      Examiner’s not understanding, acknowledging or even being aware of conflicting case law means they do not appreciate distinguishing aspects of the present application, causing them to dig in and force the case to appeal. All of which is counter to the goal of “compact prosecution.”

      1. Looks like you misunderstand the MPEP’s role. It’s to present PTO’s view of how to apply the law. That’s the role of an agency. If there’s a split in the law, then it’s not the examiner’s job to fix the split. It’s the Board’s role to weigh in.

      2. Examiner’s not understanding, acknowledging or even being aware of conflicting case law means they do not appreciate distinguishing aspects of the present application, causing them to dig in and force the case to appeal. All of which is counter to the goal of “compact prosecution.”

        Most examiners aren’t attorneys, they’re not competent to decide whether or not they should be swayed by you when there’s a split in the law. In fact, most of them aren’t competent to make legal arguments anyway, and certainly not against seasoned attorneys, which is why the MPEP provides black-and-white rulemaking. It’s not only proper, but necessary, because leaving a split-of-law issue in the hands of a lay person is really no different than flipping a coin. Some people should not receive patents while others do not because a legal argument is made to a non-lawyer.

  7. I’m more concerned with the failure of the MPEP to clearly state points of prosecution protocol and to clearly provide remedies for breaches.

    For example, If an examiner cites a new ground of rejection, that wasn’t required by a claim amendment or the submission of information, that Office Action may not be made final.

    However, the MPEP does not make it clear that if the first office action cites reference 1 paragraph 42 and the second office Action relies instead on paragraph 87, THAT IS A NEW GROUND OF REJECTION, even though the case law makes that clear.

    The MPEP also makes clear that a clear issue should be established between the Examiner and Applicant BEFORE an final Office Action is in order.

    First Office Action almost never establish a clear issue. Accordingly, Second Office Actions should almost never be final. Nevertheless, they almost always are.

    1. I’ve seen this issue from both sides, both as a prosecuting attorney and as an examiner. It’s a frustrating issue from both sides, too.

      As an attorney, you are nearly powerless to overcome an examiner’s improperly made final. I was pretty much told so by a SPE during an interview. The costs and time involved to get the finality withdrawn make it almost always better just to file the RCE and grumble.

      As an examiner, if I clearly messed up, I’ll do another non-final. But if I got it most right, and applicant makes a lot of amendments to overcome my legitimate rejection, but wants a new non-final because of a small error or omission, I’m in a pickle. And I blame the count system for the pickle. I get 2-3 hours for doing a final rejection, and 0 for doing a 2nd non-final. If I go the final route, I’ll probably get an RCE, which is another 5 hours of credit, plus reset counts for the RCE non-final.

      Just my thoughts. Maybe if the MPEP were more clear or more clearly followed, there would be some real work on revising the count system to encourage proper work, not just certain kinds of work or gamesmanship.

      1. If I go the final route, I’ll probably get an RCE, which is another 5 hours of credit, plus reset counts for the RCE non-final.

        Which is why there are so many improper finals – this part of the system is gamed by more than a few examiners. This wouldn’t be the case if the petitions process worked smoothly and consistently, but it doesn’t. I use it, when the finality was clearly improper and I have amendments I want to get entered, and I’ve been successful. But, you have to bug the heck out of people to get the petition acted on.

      2. Use the ombudsman program to your advantage. I have had examiners forced to withdraw at least half a dozen improper finals this year alone. At least three of those were after the ombudsman looked into the matter.

    2. The MPEP’s position (1207.03) on the change-paragraph=new-rejection looks rather grey. What’s the case law that makes it a rule per se?

      1. What’s the case law that makes it a rule per se?

        There is none – it is a grey area. There is case law to the effect that relying on a different embodiment or different structure in the same reference is a new ground of rejection. Otherwise you’re stuck with “the basic thrust of the rejection has changed argument,” which likely won’t get you very far in the PTO.

      2. As I understand, it’s the CFR that set the rigid standard for preventing finals after new rejections are used, not any particular case law. Unless the Examiner can explain how the rejection isn’t “new”, any deviation after an applicant replies with no amendments/IDS filings should prompt a follow on non-final.

        1. Bluto, I could find nothing in the rules that governed new grounds save on appeal. Rule 1.113 governs final office actions. It says nothing about new grounds.

          § 1.113 Final rejection or action.
          (a) On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final, whereupon applicant’s, or for ex parte reexaminations filed under § 1.510, patent owner’s reply is limited to appeal in the case of rejection of any claim (§ 41.31 of this title), or to amendment as specified in § 1.114 or § 1.116. Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim (§ 1.181). Reply to a final rejection or action must comply with § 1.114 or paragraph (c) of this section. For final actions in an inter partes reexamination filed under § 1.913, see § 1.953.
          (b)
          In making such final rejection, the examiner shall repeat or state all grounds of rejection then considered applicable to the claims in the application, clearly stating the reasons in support thereof.
          (c)
          Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection or action must comply with any requirements or objections as to form.

          1. Does § 1.113 Final rejection or action fully govern final office actions?

            Among the MPEPs we find anomalous recommendations like the following (MPEP 2173.02 [III.D]).

            Open Lines of Communication with the Applicant – When Indefiniteness Is the Only Issue, Attempt Resolution through an Interview before Resorting to a Rejection

            What if an examiner combines bogus § 101 rejections with bogus § 112 because the patent application has been flagged in some sort of secret quality assurance program (like SAWS)?

            How can an examiner possibly enter a legitimate §§101, 102, or 103 rejection on a claim that has been rejected as being indefinite under §112?

            Examination rules should require that §112 indefiniteness rejection on a claim be successfully traversed before an examiner can make §§101,102, or 103 rejection on the selfsame claim.

            If the examiner does not withdraw his §112 rejection on a claim, the applicant should be able to appeal to the PTAB, which must respond to the applicant’s argument. If the PTAB agrees with the applicant (and it should in many cases because far too many examiners are too deficient in English grammar, semantics, or punctuation to judge indefiniteness properly), the PTAB should reverse, remand, and assign an English specialist to assist the examiner.

            Only at that point can §§101, 102, and 103 rejections make any sense.

            1. Joachim –

              Your argument makes a lot of sense. However, it assumes that the 112 rejection is legitimate and the Examiner really does not understand what is claimed. Since the Examiner’s continue on with the Examination, we know that this is clearly not the case.

      3. I did not mean to imply that there is a rule per se regarding paragraph numbers. I was railing against the attitude of the Examiners, which is that if the same reference is cited, even though the citation is to a different portion/aspect/teaching, the ground is not new.

        One court ruling that takes my side is summarized here:

        link to patentlawcenter.pli.edu

        “While it is not necessary for the Board to recite and agree with the examiner’s rejection in haec verba (i.e., using the exact language) to avoid a finding that there is a new ground of rejection, the mere reliance on the same statutory basis and the same prior art references is insufficient if the Board relies on new facts and rationales not previously raised by the examiner. – See more at: link to patentlawcenter.pli.edu.”

        The MPEP should include reference to such rulings so reference can be made to them and there would be a better chance to convince non-lawyer examiners and supervisory examiners of the error of their positions.

        1. Your case seems consistent with MPEP 1207.03. The examiner can point to a different section if it simply elaborates on what the previous section taught. It’s a grey issue that is at least partially art dependent, but the MPEP is fine.

          1. Simply elaborates? If the Examiner is citing a new section it is because the Examiner recognizes that the previous citations were insufficient to make her case. If the case is made by the new citation, or even if it is not, the Applicant deserves the opportunity to respond to it, by amendment or argument and the FINALITY IS PREMATURE.

            1. Careful with this. If you press this too far, you get examiners who just cite “Reference X, paragraphs 1-150 (the whole document).” Then they can be sure the material they need is in there somewhere to go final.

              1. That is counter to 37 CFR :

                37 C.F.R. 1.104 Nature of examination.

                *****

                (c) Rejection of claims.

                (2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.

                If the Office was unable to locate discussion of elements b, c and d with any more specificity that –somewhere in the range of paragraphs 1 – 150, it can only be that elements b, c an d are not disclosed.

    3. However, the MPEP does not make it clear that if the first office action cites reference 1 paragraph 42 and the second office Action relies instead on paragraph 87, THAT IS A NEW GROUND OF REJECTION, even though the case law makes that clear.

      This isn’t necessarily correct. If the citation of paragraph 87 in your example is consistent with the previous way that the reference was being applied (e.g., the examiner is pointing to paragraph 87 for further evidence in support of his or her position), then that isn’t a new ground of rejection.

      Part of the reason that there’s very little case law on this topic is that decisions regarding finality are not appealable to the PTAB. You could conceivably sue the Office in district court once you’ve used up your administrative option of petitioning to have finality withdrawn, but the expense of doing so, compared to filing an RCE, is such that few, if any, applicants would ever want to take that route.

    4. However, the MPEP does not make it clear that if the first office action cites reference 1 paragraph 42 and the second office Action relies instead on paragraph 87, THAT IS A NEW GROUND OF REJECTION, even though the case law makes that clear.

      The MPEP doesn’t make it clear because it’s not necessarily a new ground of rejection. A new ground of rejection flows out of due process and the standard for due process is whether there is a fair opportunity to respond. Notably if para 42 and para 87 are describing the same structure, that’s not going to be a new ground of rejection. Its only when the difference between 42 and 87 would lead someone to call it a different theory of rejection that its a new ground.

      Ex: The claim recites X with specific quality Y in context Z. para 42 teaches X in context Z. Para 87 states outright that “X has specific quality Y”. Even though only citing to para 42 leaves out an entire feature of the claim, it’s not a new ground to cite para 87 as well in the final because applicant is on notice that it is the X in this reference that fulfills the claim. There’s a difference between the examiner having an insufficient ground that has to be fixed versus whether the fixing causes it to be a new ground of rejection.

      1. See 6.2.3.

        The attitude of the Examining core is: If its the same reference , then its not a new ground of rejection.

        The fact that this is not the case should be made clearer in the MPEP.

      2. If the Examiner is citing a new paragraph it is because the Examiner recognizes that the previous citations were insufficient to make her case. If the case is made by the new citation, or even if it is not, the Applicant deserves the opportunity to respond to it, by amendment or argument and the FINALITY IS PREMATURE. This is true of any new citation, even citing paragraph 87 in regard to dependent claim 6 where it was previously cited only for claim 2.

  8. The MPEP is policy, not law. One shouldn’t expect a legal treatise putting forth opposing legal views. Its purpose is to state the USPTO’s own statutory construction, consistent with law as it sees it, so that all of its examiners will act in a consistent, well defined manner, especially where there are contemporary legal fault lines. On those divisive issues, it takes a position in order that some examiners won’t act one way and other examiners act a different way in relation to statutory interpretation. The MPEP’s publication, gives the public notice as to how the USPTO’s examiners are expected to act. If anyone disagrees with USPTO interpretation, appeal of a case to the courts is the appropriate remedy.

    1. Mark, the problem with this view (that the MPEP is “policy”) is that new agents must accept the MPEP view of the law in order to pass the patent bar exam.

      1. And new patent agents’ initial focus should be on the PTO’s interpretation and application of the law, as their job will likely be prosecuting applications.

      2. So? If they don’t learn the law itself, including areas in which the PTO’s view is not the final word, then they’re exposing themselves to malpractice. Only a fool would take the MPEP at face value on all issues. Cripes, you think the multistate part of the real bar exam tests actual law?

  9. What about the related issue of whether the grace period covers whatever ends up being decided to constitute prior art/activity?

    The legislative history is clear that they meant “disclosure” in the grace period to be coextensive with whatever activity could be used against an applicant.

    It would seem pretty contrived to say “public doesn’t mean just public” for purposes of what is prior art/activity, but then turn around say “oh, but ‘disclosure’ does mean just disclosure” for purposes of what the grace period covers.

  10. You link to Lemley and his voicing of “unwise policy” simply holds no candle to the actual words of Congress (in the written law and the Soliloquy).

    Academics and their policy wants….

    Sheesh.

  11. Jason, the MPEP is a problem for patent law in that patent agents must follow it to pass the bar exam. To the extent that the MPEP misstates, ignores, or confuses, it is not doing patent law a service.

    To the extent that the MPEP takes a position, it has become an advocate. I was stunned for example the find that almost nobody in the patent bar knew anything about Wertheim. Then I found out that the patent office has been actively trying to undermine Wertheim for a very long time – through legislation and by ignoring it in the MPEP. Patent practitioners and their clients who did not know about the doctrine because it apparently was not mentioned in the MPEP have been harmed.

      1. DCL, search around this blog for the prior discussion of Wertheim, the PTO’s opposition to it, the partial overrule with the prior art effect of published applications, and the total overrule with the new 102(d). If anyone wonders why 102(d) is there, it was there specifically to overrule Wertheim.

        In re Wertheim, 646 F.2d 527, 209 U.S.P.Q. 554 (C.C.P.A. 1981)(Rich, J.)

        The problem with the legislation is that a claim for priority is not required. Thus a reference could be prior art as of the date of an earlier patent application whose benefit or whose priority is not claimed at all.

    1. Ned, I don’t think the “patent bar” was ever intended to be a bar exam in the sense that the state bar exams are. It isn’t a determination of whether you know enough about the law to advise your clients, it is simply a determination of whether you know enough about the patent office to advise your clients. “Know your enemy” and all that.

      Getting a patent is an adversarial process, but in this case, your adversary is telling you exactly what he is going to do in every situation, and is even doing you the favor of testing you on his playbook to make sure you know what he will be doing. The patent examiners are then required to play by the playbook, so you won’t face any surprises at the office from an examiner who knows “more” law than the people who wrote the book. And if the examiners don’t play by the book, you appeal and petition to enforce play by the book.

      If you don’t like the book, or at least the Office’s interpretation of the book as clarified by appeal and petition, then you go to court to change either the book or the interpretation. Yes, you have to know more than your opponent’s playbook to challenge the legality of their playbook. MPEP does patent law a service by telling you upfront exactly how the patent office will respond to every situation. If that is legally the wrong response, the answers are going to lie outside the book.

      1. Mike, certainly the patent bar is not about patent law in general, but about the law of patentability and patent office procedures.

        But to be a good patent attorney, one must also know the patent law regarding infringement, assignments and such.

        Get’s one to thinking about expanding the patent bar from an agent’s exam to a national patent attorney exam that tests generally for patent law and procedures in Federal Court. Passing such a bar would entitle the member to practice in every Federal District Court in the land.

        But even though this might be a good idea, the state bars would put up a fuss.

  12. I do hope that you are teaching that the MPEP itself states that its “version” is NOT controlling law and that “someone relies on the MPEP’s language about secret commercial activity not constituting sales for purposes of § 102(a)(1), only to be placed in a very bad position should the Federal Circuit or Supreme Court conclude otherwise.” should not happen as long as people recognize what the MPEP says as to it NOT being controlling law…

    (We’ve often had comments showing that the “version” – even the version attempting be “settled” – is not correct as to the undergirding law)

    1. Absolutely. The MPEP is not “the law.” But it is a description of the law that is looked to by many attorneys. What’s ultimately important is what the law is, as stated by the statutes, the Federal Circuit and the Supreme Court. At the same time, because it is a widely-referenced description of the law, the MPEP frames discussions about disputes in the law and serves as a lens through which we perceive that law.

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