Examiner’s Oral Promise Does Not Bind PTO

ScreenShot051In re Milton (Patent Petition 2007, App. No. 09/938,465)

During a telephone conversation, the Patent Examiner stated that a replacement office action would be forthcoming. Relying on that statement, the applicant did not respond to the already pending office action. Unfortunately, the Examiner did not issue the new office action and the case went abandoned.

37 C.F.R. 1.2 makes clear that an applicant should not rely on any oral promise from a patent Examiner. Applying this rule, the director of petitions rejected Milton’s petition for revival.

The oral promise could have immediately been memorialized in an interview summary — something that was not done in this case until after the abandonment.

At the time of Petitioner’s reliance, the understanding was a mere oral promise. This section of the C.F.R. expressly prohibits Petitioner’s reliance on the oral understanding, and withdrawal of the holding of the abandonment based on an action which is in contravention to a regulation would be improper.

Petition denied.


  • Thanks to Hal Wegner for providing information on this case.
  • The real party here is HP.

Extending Liebel-Flarsheim: “distinctly different” embodiment of claim elements must be enabled

ScreenShot049Automotive Technologies International v. BMW, et al. (Fed. Cir. 2007).

ATI’s patent claims are directed to an automotive side impact crash sensor used to trigger an airbag and include the following means-plus-function limitation:

“means responsive to the motion of said mass upon acceleration of said housing in excess of a predetermined threshold value, for initiating an occupant protection apparatus”

Following ATI’s suggestion, the district court construed the means limitation to include both mechanical and electronic sensor structures. Then, based on this interpretation, the district court ruled the patent invalid for lack of enablement. (summary judgment).  

On appeal, the CAFC affirmed the ruling — finding that the specification did not enable the full scope of the claimed invention.

The specification describes the mechanical sensor in detail with multiple figures. The electronic sensor, however, is only shown in a sparse “conceptual” Figure 11 (see image at right) and described in broad terms as potentially operating “through variety of technologies using, for example, optics, resistance change, capacitance change or magnetic reluctance change.”

Enabling One Embodiment Is Insufficient: Following on the heels of Liebel-Flarsheim v. Medrad, this case reaffirms the principle that the full scope of a claim must be enabled. Enablement of a single embodiment is not sufficient. Thus, the patent’s enablement of one mode of practicing the invention (the mechanical sensor) was not sufficient to satisfy the enablement requirement.

Looking back, Liebel-Flarsheim discussed “full scope” enablement as being “at least reasonable enablement of the scope of the [claim] range.” Here, the CAFC further defines that principle by noting that electronic sensors must be particularly enabled because they are “distinctly different” from the enabled mechanical sensor.

Novel Aspects Must Be Enabled: ATI also argued that Figure 11 and its accompanying text were enabling — especially when coupled with the knowledge of one having ordinary skill in the art. This argument was rejected based on the CAFC’s combined measure of law and fact. As a matter of law, enablement of the novel aspects of an invention must be enabled by the specification even if implementation would have been within the PHOSITA’s skill level. As a matter of fact, the CAFC concluded that sensor mechanism must be a novel aspect based on statements in the specification that side impact sensing is a “new field” and that the only available side-impact switch was a crush sensor.


  • Its unclear how the enablement doctrine will work in conjunction with the doctrine of equivalents.
  • The summary judgment was reviewed de novo for clear and convincing evidence of non-enablement sufficient to overcome the patent’s presumption of validity.
  • Disclaimer: My former firm, McDonnell Boehnen Hulbert & Berghoff LLP, handled this appeal on behalf of the plaintiff. Although I have not worked on the case, MBHB took-over the case while I was of counsel last year.

CAFC: Patent Attorney Has No Right to Defend Himself Against Charges of Inequitable Conduct

Nisus Corp. v. Perma-Chink Sys. v. Michael Teschner (Fed. Cir. 2007).

Nisus Corp’s patent relates to a method of putting Boron in a tree to kill termites and prevent forest fires. After a bench trial, the patent was found unenforceable due to inequitable conduct.  Apparently, Nisus had failed to disclose material documents from a prior lawsuit involving closely related patents.  The court specifically mentioned Nisus’s former patent attorney, Michael Teschner, as one cause of the inequitable conduct.

Teschner sued to intervene in the case and clear his name, but the district court denied him the opportunity. On appeal, the CAFC likewise found Teschner without standing.

Appeal by Nonparty: Usually, a nonparty has no standing to appeal. However, an attorney that is formally reprimanded may appeal to the CAFC.  However, other (informal) “judicial criticisms of lawyers’ actions are not reviewable.”  The court’s comments regarding Teschner here do not rise to a formal reprimand, and thus offer no standing for appeal.

To allow appeals by attorneys, or others concerned about their professional or public reputations, merely because a court criticized them or characterized their conduct in an unfavorable way would invite an appeal by any nonparty who feels aggrieved by some critical statement made by the court in an opinion or from the bench. Treating such critical comments by a court as final decisions in collateral proceedings would not only stretch the concept of collateral proceedings into unrecognizable form, but would potentially result in a multiplicity of appeals from attorneys, witnesses, and others whose conduct may have been relevant to the court’s disposition of the case but who were not parties to the underlying dispute. Nor would it be appropriate to limit such appeals to attorneys, while forbidding others from appealing from critical court comments, as such a limitation would smack of special treatment for members of the bar and would be difficult to justify as a matter of principle.

Thus, a finding of inequitable conduct does not create any standing for an aggrieved prosecuting attorney to appeal.

Postscript: Mr. Teschner declined my offer for an interview, noting that the matter is still pending at the PTO. His lone statement is that he is “glad that the Federal Circuit found merit in [his] argument.”

A Dangerous Prosecution Trap

ForkBy Paul F. Morgan

I recently retired from a position in which I was also providing legal advice to patent application prosecution attorneys and others.  I had noted the following relatively frequent source of legal confusion in current law for some patent examiners, with the result that some patent prosecutors were being dangerously misled by incomplete examiner rejections. Hence, this warning note.   

A prior U.S. PTO published patent application can qualify as prior art under multiple portions of 35 U.S.C. §102 – resulting in varying effective dates, and requiring different attorney or agent responses. Often, the multiple effective dates are not reflected in examiner rejections.  However, getting a patent application allowed incorrectly can be fatal to the patent’s validity or even lead to inequitable conduct accusations.  Legal misunderstandings of the patent examiner during ex parte prosecution do not create a valid legal excuse for prosecuting attorney legal errors.

A published US patent application has a §102(e) prior art date as of that application’s filing date, and also a §102(a) or §102(b) prior art date as of its publication date. The office action rejection should discuss both dates if the publication date was prior to the rejected application.  But, even if the examiner’s rejection was legally incomplete, the applicant’s attorney must still overcome both, correctly.

If the published application was commonly owned at the time of its invention, a §102(e)/103 rejection can be overcome by asserting common ownership under §103(c).    The protections of §103(c) do not apply to 102(a) or 102(b) prior publications.  Rather, that section only applies to 102(e),(f) and/or (g)!  Furthermore, §103(c) only applies to obviousness issues, not anticipation. Nor does §103(c) eliminate what should have been an alternative rejection for double patenting.  

Obviously, a §102(b)/103 reference from an application publication date more than a year before the subject application date cannot be eliminated, only argued over.   While a §102(a)/103 rejection might be overcome by presenting evidence of an earlier invention date, that avenue is considerably more difficult and dangerous.  In particular, patents obtained via 37 CFR 1.131 declarations of alleged prior invention have a poor litigation record. Where appropriate, 102(a) prior art may be overcome by perfecting a valid priority claim to an earlier application. 

One final related danger that arises from the fact that most U.S. applications are now  published within 18 months of their first filing date.  Even self-publications qualify as 102(b) prior art.  That means that patent applications on improvement inventions from the same client, especially with different or partially different inventors, need to be filed ASAP to avoid prior-filed basic applications from becoming prior art under §102(a) or (b) against the improvement applications [which cannot be avoided by §103(c).]

The above, of course, is oversimplified, and other commentators may wish to “chip-in.” with practical advice.


  • Paul Morgan recently retired, as the Assistant General Patent Counsel
    for a major U.S. Corporation, after 44 total years of patent practice.

USPTO Issues Preliminary Obviousness Examination Instructions

In the wake of KSR v. Teleflec, Deputy Commissioner Peggy Focarino has submitted a memorandum to the technology center directors with preliminary examination guidance.  The memo includes marching orders requiring that examiners continue to provide "reasons" for combining prior art in an obviousness rejection.

[I]n formulating a rejection under 35 U.S.C. 103(a) based upon a combination of prior art elements, it remains necessary to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed.

In submitting the memo, Deputy Commissioner Focarino noted that the Supreme Court’s opinion requires explicit discussion:

To facilitate review, [the apparent reasons for combining prior art] should be made explicit.

In addition, the memo reminds us of the basics of Graham v. John Deere:

  1. determining the scope and contents of the prior art;
  2. ascertaining the differences between the prior art and the claims in issue;
  3. resolving the level of ordinary skill in the pertinent art; and
  4. evaluating evidence of secondary consideration.

Filing of Sequence Listings on EFS-Web Version 1.1

SingerBy Chris Singer, PhD

With the release of EFS-Web 1.1 on < ?xml:namespace prefix ="" st1 />October 14, 2006, the USPTO has streamlined the filing of sequence listings for practitioners and patentees. The prior version of EFS-Web was limited because it allowed submission of files in .pdf format only and was not enabled to handle sequence listings, which are typically written as text files (.txt). The latest version of EFS-Web overcomes this limitation and allows practitioners to submit electronically files such as sequence listings, computer program listings, and mega tables. This eliminates the need to submit these types of files on supplemental electronic media (e.g., CD-R, 3.5″ disk, etc.), which avoided fees relating to application size (currently $250 for large entities and $125 for small entities per 50 pages after the first 100).< ?XML:NAMESPACE PREFIX = O />

According to sources at the USPTO Electronic Business Center, the requirements of Title 37 of the Code of Federal Regulations (37 C.F.R. §§ 1.52(e), 1.821-1.825) have been relaxed for sequence listings that are filed using EFS-Web 1.1. Specifically, filers need only submit a single .txt file containing the sequence listing and an amendment that incorporates the sequence listing into the specification. Practitioners no longer need to include the compliance statement under 37 C.F.R. § 1.821(f) or the paper copy of the sequence listing (or the duplicate copies of the sequence listing on CD-R in lieu of a paper copy) when filing sequence listings using EFS-Web. However, the USPTO recommends that filers include a statement that the content of the sequence listing does not extend beyond the original disclosure (i.e., does not contain new matter), either as a separate document, or as a part of the “Applicant arguments/remarks made in an Amendment” section of a response.

For the time being, the USPTO will also accept sequence listings filed through EFS-Web 1.1 in a .pdf format; however the practice is strongly discouraged, since the USPTO must convert such .pdf files to .txt files to accommodate the sequence listing in its database. As a result, filing sequence listings in .pdf format creates the possibility that conversion could introduce errors in the sequence that could compromise its capacity to be accurately processed and searched, and could even affect sufficiency of disclosure under 35 U.S.C. § 112.

NOTE: This USPTO News Update was written by Christopher Singer.  Chris has a PhD in bio-inorganic chemistry from Northwestern University and is a patent attorney at MBHB.

GO GO GO JOSEPH, Reject That Business Method

JosephProfessor Joshua Sarnoff of American University just directed me to a gem of a response by occasional Patently-O reader Dean Alderucci.  The Examiner rejected Walker Digital’s the pending claim 2 with the most ancient of references:

In Genesis, Chapter 41, we are told that Pharoah appointed Joseph to be his representative and instructed him to enter into contracts to purchase grain.  These contracts included an offer with an activity (supply grain) and a benefit (get paid for the grain). Payment was made upon delivery of the grain.  The story of Joseph is about 4,500 years old. . . . the principal/agent relationship is of immemorial antiquity.  It no doubt predates civilization itself. . . . Many of Applicant’s [other] claims could also be rejected using the same reference.

Dean.bmpIn response, Alderucci notes that the Examiner “has completely misinterpreted the most popular and analyzed book in all of human history. . . . [Nevertheless], the claims as pending have been carefully amended to steer clear of embracing of any of ancient practices of Joseph, the Pharoah, or the [ancient] Egyptians.” 

File Attachment: Bible Response.pdf (218 KB)

The application (10/212,636) is sitting on a response after final. Amended claim 2 reads as follows:

2. A method comprising:

  determining a recipient;
  determining an offer which includes an activity and a benefit;
  transmitting to a representative instructions to provide the offer to the recipient;
  determining whether the recipient has performed the activity; and
  providing the benefit to the recipient if the recipient has performed the activity, in which the recipient is a player at an electro-mechanical gaming device.

Evidence Based Prosecution: Non-Patent Prior Art Leads to Rejections

ScreenShot041Quality patents depend upon our ability to find and examine prior art regardless of its form. Most prior art cited by the USPTO arrives in the form of patent-related references — most notably, issued U.S. patents, published patent applications, and foreign patent documents. We know, for instance, from Columbia Professor Bhaven Sampat that about 90% of cited non-patent prior-art references are provided by the applicant, and that only 10% are examiner references. Link.

In some technologies where patenting has a long and extensive tradition, the lack of non-patent prior art is not a serious problem.  In other areas such as software and biotechnology, non-patent references harbor most of the important prior art. 

Results: My new study of 100,000 recently issued patents reveals that patent that cited non-patent literature are significantly more likely to receive rejections from the PTO.  Specifically, patents citing at least one non-patent reference have a 39% greater chance of receiving a final rejection when compared with patents that issued without citing any non-patent references. Regarding non-final rejections, citing non-patent prior art increased the likelihood of receiving a rejection by 9%.


Accelerated Examination: PTO Training Session

HerbThe PTO has established an extensive set of new rules for accelerated examination and the associated petition to make special (PTMS).  The new rules require much more from the applicant, but also lead to “a final decision by the examiner within 12 months from the application filing date.”

On Thursday, November 2nd at 1:00 Chicago Time, the PTO will hold a one-hour live web-cast to provide information on the process and its “benefits.”

  • Sign up for the webcast: here.
  • More info on the new PTMS regime: here [patently-o] and here [USPTO].
  • Russ Krajec will not be filing for accelerated examination: here.

USPTO Survey

The PTO is been conducting a quality survey of examination.  Here are some sample questions:

6. Consider all rejections you have received over the past 3 months. How often do you think the rejections made under the following statutes were reasonable in terms of being technically, legally, and logically sound with respect to:

35 U.S.C. 101 Rejections (Rarely – . . . – Always)
35 U.S.C. 102 Rejections (Rarely – . . . – Always)
35 U.S.C. 103 Rejections (Rarely – . . . – Always)
35 U.S.C.112 Rejections, P1 (Rarely – . . . – Always)
35 U.S.C. 112 Rejections, P2 (Rarely – . . . – Always)

7. In the past 3 months, how would you rate overall examination quality.

Very Poor    

10. What should the USPTO focus on to improve examination quality? Please be specific.

We will look forward to some interesting results. Since 103 is hot, lets do our own survey.

Create Free Polls

Evidence Based Prosecution IV: Business Method PAIR Entries

Pair Data: Patent Prosecution

The entries of Public PAIR are riddled with errors and discrepancies. However, it is still true that more PAIR entries in a file usually indicates that there were more filings by the applicant and more resistance from the PTO.

The Data: The above graph compares data from a random sample of 7,000+ issued patents with patent numbers ranging from 6,000,000 to 6,999,999 (General Population) with issued patents from the same range that were examined within Art Unit 3600 (a sample of 954 patents). I counted the number of PAIR entries for each patent and used that data to calculate histogram information. Data-points represent range-buckets — e.g,. 0–4 PAIR entries, 5–9 PAIR entries, …

The Results: The prosecution histories of Business Method patents include significantly more entries.  [33.4 entries for average BM patents as opposed to 27.0 for average GP patents].

As I have discussed before, business method patents are slow to make it through the patent office.  One reason for the delay is a large queue in applications awaiting initial examination.  However, this data preliminarily confirms that another reason for delay in Business Method is that the PTO is putting up a relatively higher level of resistance. Anecdotally, this resistance is seen in the “second pair of eyes” review and harder fights on Section 101 issues. The PTO might counter that many business method patents are poorly drafted, thus making the process more difficult.


  • For the purposes of this study, Business Method Art Unit 3600 includes Art unit 3621–3629 and 3639.  [Pre-business method uses of 3600 were excluded].

Evidence Based Prosecution:

CAFC Reverses Medrad Reissue Case

Patentlyo025Medrad v. Tyco (Fed. Cir. 2006).

In October 2005, I discussed the district court case involving Medrad.  In that case, the district court held that a Section 251 Reissue can only be used to correct an error in the specification, drawings or claims and cannot be used to correct a procedural error that is not reflected in the patent grant itself. During prosecution, the patentee had filed a second reissue to correct a mistake made during the prosecution of the first reissue. (The patentee failed to file a supplemental reissue declaration in compliance with PTO Rule 1.175). The lower court found that correction of that mistake did not fall within the guidelines of Section 251.

On appeal the CAFC sided with the patentee by giving a broad meaning to the statutory phrase “[invalid] by reason of the patentee claiming more or less than he had a right to claim in the patent.” In particular, the unanimous appellate panel found that the phrase does not literally mean “claim more or less” but rather that the phrase “encompass[es] any error that causes a patentee to claim more or less than he had a right to claim.”  Thus, a reissue can apparently be filed based on any error that would result in invalid claims.


  • 35 USC 251 reads as follows:

Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.

Evidence Based Prosecution II: Independent and Dependent Claims


Part II of my new series on evidence based prosecution focuses simply on a descriptive feature of the patent application.  How many independent claims should you file? Although we don’t answer that question here, we can answer the question of how many are usually filed.  Using data collected from patent applications published thus-far in 2006, I constructed the chart above comparing the average number of independent claims in a patent application to the total number of claims in the patent. 


Patents are Still “Very Important”

In Inpro v. T-Mobile, an applicant’s use of the phrase “very important feature” in the specification allowed the court to legitimately import the “important” limitation into the claims.  That result prompted a resourceful, but anonymous Patently-O reader to do some quick analysis to figure out: who still uses phrases like “very important?” The answer: Lots of people.


The following table shows the percentage of patents using the terms “important” or “very important” by month over the past twenty years.  As you can see, “important” features are alive and discussed in a significant number of applications.


Application Month

“important” %

“very important” %

Jan 1985



Jan 1990



Jan 1995



Jan 2000



Jan 2001



Jan 2002



Jan 2003



Jan 2003*



Jan 2004*



*Data taken from published patent applications, which may or may not also have issued as patents.


Of course, there are times when it is useful to talk about a “very important” feature of the invention — such as if you are attempting to avoid known prior art.  However, I would be cautious even on that point.


A few caveats to this data — some of these hits might be in the background saying “this problem is very important.”  Some of them might also be saying it is “not very important.”

File Your Patents Electronically

On Friday, March 17, 2006 the PTO launched its new electronic patent filing system.  The new system operates using PDF files and is expected to be the avenue-of-choice from now on. Benefits of filing electronically include:

  • Instant filing receipt to ensure your filing date;
  • Applications immediately viewable in Private PAIR;
  • Submission is validated for completeness;
  • No scanning errors;
  • Less wasted paper;
  • No express mail fees.


Comments On the PTO’s Proposed Change in Continuation Practice

In January 2006, the PTO proposed dramatic changes to patent continuation practice that would essentially allow only one continuation, continuation-in-part, or RCE per application. [Link

It turns out that patent attorneys are steamed about this proposal.  At a recent town-hall meeting in Berkeley, the audience was reportedly “ready to throw eggs at the [PTO] speaker” who was attempting to explain why the change is necessary.

An anonymous Patently-O reader has submitted the attached paper with his thoughts on the subject. [DOWNLOAD PAPER].  This paper presents a well reasoned, diplomatic argument for why the changes to continuation practice should not be implemented. 

A number of commentators were not so diplomatic.  Mark Harrington of Harrington & Smith came right to the point:

As a patent practitioner with over 20 years of experience, I want to ask: Who was the [BEEP] that proposed this rule change? If you wanted to make patent practitioners angry, you have succeeded. If you attempt to make this proposed rule change final, we will go to Congress to have it changed.

Although comments on the rule changes are not due until early May, 2006, a number of comments have already been submitted to the PTO. 

A. Corporations

B. Law Firms

C. Individuals

Canadian Patent Act Amendment Opens A Narrow Window Of Time To Revive Applications And Patents That Lapsed For Incorrect Payment Of Fees

Several years ago, in Dutch Industries Ltd. v. Canada [link], the Canadian Federal Court of Appeals ruled that an irrevocable loss of patent rights could result if, at any time, a government patent fee payment was erroneously made at the small entity rate.  This decision resulted in the immediate lapse of numerous Canadian patents and patent applications


In response to this onerous decision, the Canadian Patent Act was recently revised to create a time-limited window to make catch-up fee payments in those Canadian patents and patent applications that irrevocably lapsed as a result of the Dutch Industries Ltd. decision. New section 78.6 of the Canadian Patent Act will come into force on February 1, 2006.  The new section recognizes the legitimacy of previously made corrective “top up” fee payments.  More importantly, the new section provides a one-time only twelve month window during which any incorrectly made small entity payment case be corrected by paying the difference between the relevant large and small entity fee at the relevant time.  A corrective payment must be accompanied by information about (i) the day on which the underpayment was made; (ii) the service or proceeding in which the fee was paid; and (iii) the patent or application in which the fee was paid.


Practice Suggestion


A small entity in Canada is a corporation with 50 employees or less.  This number is quite low.  So it is quite possible that the change from small to large entity status in Canada might go unnoticed.  Also the difference between large and small entity fees is generally quite small.  Many Canadian Associates, therefore, recommend always paying the large entity fee regardless of the applicant’s status in order to avoid the possibility that a patent or application might irrevocably lapse as a result of paying the incorrect fee.

NOTE: This post comes from the files of Blair Hughes.  Blair is a partner at MBHB LLP and has extensive experience in protecting patent rights, in both the U.S. and abroad.


  • From Sander Gelsing: As a result of Bill C-29, and to assist one in determining whether a corrective payment needs to be made, the Canadian patent office recently made Fee Payment Histories available through our patent database (see: http://www.gelsing.ca/blog/?p=128 ).

What are the parts of a patent application?

Under 37 CFR 1.77 the specification should include the following sections, in order:

  1. Title of the invention.
  2. Cross-reference to related applications.
  3. Statement regarding federally sponsored research or development. 
  4. The names of the parties to a joint research agreement.
  5. Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference.
  6. Background of the invention.
  7. Brief summary of the invention.
  8. Brief description of the several views of the drawing.
  9. Detailed description of the invention.
  10. A claim or claims.
  11. Abstract of the disclosure.
  12. “Sequence Listing,” if on paper (see §§ 1.821 through 1.825).

These sections may be identified in the application by section headings in uppercase but without underlining or bold type. 

As you develop your style of patent drafting, it is useful to occasionally look back to the rules of practice to ensure that you are still following them.


Do you have comments on the recent trend to eliminate various sections — such as the summary of the invention.

How to Electronically File Patent Assignments

A good way to transmit assignments is over the internet – no faxing necessary.  This is especially useful where the assignment is for a single patent or application. Assignments of multiple patents or application would have to be sent individually so faxing might be better for assignments of multiple items.
For electronic assignment recordation:
  1. Scan the Assignment.
  2. Go to the Assignment Web site and complete the Assignment Recordation Form – http://epas.uspto.gov/.
  3. Have the attorney or agent sending the assignment sign the electronic form by typing in their name.
  4. Hit the send button.
You will receive an immediate email receipt confirmation.
You will receive a fax assignment recordation notice within about 24 hours.
NOTE: This post comes from the files of Blair Hughes.  Blair is a partner at MBHB LLP and has extensive experience in protecting patent rights, in both the U.S. and abroad.