Petitions and Appeals in the USPTO

Petitions and Appeals in the USPTO William F. Smith Of Counsel Woodcock Washburn LLP 999 Third Avenue, Suite 3600 Seattle, WA 98104-4023 Phone: 206.903.2624 Fax: 206.624.7317 Email: wsmith@woodcock.com www.woodcock.com

Pe##ons in ex parte examina#on and reexamina#on as well as inter partes reexamina#on are provided for by 37 CFR 1.181-183.

37 CFR 1.181(a) (a) Pe##on may be taken to the Director: (1) From any ac#on or requirement of any examiner in the ex parte prosecu#on of an applica#on, or in ex parte or inter partes prosecu#on of a reexamina#on proceeding which is not subject to appeal to the Board of Patent Appeals and Interferences or to the court; (2) In cases in which a statute or the rules specify that the maqer is to be determined directly by or reviewed by the Director; and (3) To invoke the supervisory authority of the Director in appropriate circumstances.

37 CFR 1.182 Ques#ons not specifically provided for All situa#ons not specifically provided for in the regula#ons of this part will be decided in accordance with the merits of each situa#on by or under the authority of the Director, subject to such other requirements as may be imposed, and such decision will be communicated to the interested par#es in wri#ng. Any pe##on seeking a decision under this sec#on must be accompanied by the pe##on fee set forth in 1.17(f).

37 CFR 1.183 Suspension of rules In an extraordinary situa#on, when jus#ce requires, any requirement of the regula#ons in this part which is not a requirement of the statutes may be suspended or waived by the Director or the Director s designee, sua sponte, or on pe##on of the interested party, subject to such other requirements as may be imposed. Any pe##on under this sec#on must be accompanied by the pe##on fee set forth in 1.17(f).

Pe##on Requirements The pe##on must be in wri#ng, 37 CFR 1.2. The pe##on must contain a statement of facts involved, the point(s) to be reviewed and the ac#on requested, 37 CFR 1.181(b). The pe##on must be accompanied by a fee, if required, in order to avoid the pe##on being summarily dismissed, 37 CFR 1.181(d).

Pe##on Requirements The pe##on must be #mely filed, as required in 37 CFR 1.181(f), or as required in a specific statute or regula#on. The pe##on must comply with any specific requirements as provided by statute, regula#on or USPTO policy.

The Legacy 2

Why the drop in the previous administration? Quality crackdown Myriad opaque layers of quality review RCE churn Cases are not being allowed but neither are they being abandoned 9

Changes in the PTO Quality review processes have been retargeted to In Process Reviews (IPRs) rather than allowances Changes in examiner count system to disincentivize RCEs for both examiners and applicants Reduced count for examiner RCE docketed as Special New case so applicant cannot expect quick turnaround 10

Have things changed in the PTO? 11

Not really! 12

RCE or Appeal? 13

RCE or Appeal? 14

RCE or Appeal? 15

RCE or Appeal? RCE New fee--$1,200 for first RCE Continuing prosecution costs More Festo issues No PTA for now Appeal NOA--$800.00; forward to Board-- $2,000.00 No continuing prosecution costs Festo issues only for new arguments PTA for B and C delays 16

Considerations in Deciding Whether You Should RCE/ Appeal Have petitionable items been resolved? Have you worked with the examiner? Business needs of client Timeliness of BPAI decision Possible outcome of appeal Claim scope Evidentiary record 17

Resolve petitionable matters Know what matters are subject to review by way of petition instead of appeal, e.g., Restriction requirement or election of species Entry of amendments and evidence after final rejection and/or NOA Undesignated new ground of rejection in Examiner s Answer Arguing a petitionable matter in the briefs or at hearing is futile and can cause loss of credibility 18

Work with the Examiner Interview, interview, interview Personal interview is preferred Always have SPE involved when case is assigned to a junior examiner Don t have junior examiner advocating your case to the SPE 19

But can you realistically work with the examiner? Recent statement of rejection: The reference does not expressly teach a single embodiment with Applicant's [claim feature]. This deficiency is cured by common sense of the artisan. 20

Business Needs of Clients Patent needed sooner rather than later? Will narrow claims suffice for time being? Is patent term a significant issue? 21

Why appeal? Appeal early and often as good things can happen. PTA is now available for cases in which a NOA is filed but do not reach the PTAB for decision. 22

Join the crowd As of April 30, 2013, 26,230 appeals were pending before the Board, up from 1,900 in December 2005. 23

A Significant Number Of Cases Are Reopened After A Pre- Appeal Brief Conference Request 24

When To Ask For Pre-Appeal Brief Conference Clear errors in the examiner's rejections The examiner's omissions of one or more essential elements needed for a prima facie case of unpatentability Other clear errors of fact on the part of the examiner 25

A Significant Number Of Cases Are Reopened After An Appeal Brief Is Filed 26

Board Outcomes The Board affirmed 49.3%, affirmedin-part 14.4% and reversed 32.5% in FY 2012. As of April 30, 2013, the Board has affirmed 53.8%, affirmed-in-part 14.1% and reversed 28.9% this fiscal year. 27

Board Outcomes Reversal Congratulations! Affirmed-in-part Direct result of separately arguing claims; results in PTA Affirmed May be the first time you understand why the claims are unpatentable and can now advise client on the way forward 28

Pre-Appeal Considerations Claim scope Nip/tuck needed=rce Evidentiary record Enhancement of evidentiary record=rce 29

Beware of the Advisory Action Carefully read any comments the examiner made in the continuation section of an advisory action. Examiners often times substantively modify the basis of a pending rejection in making such comments. 30

An Appeal Is All About Claim Scope Analysis begins with a key legal question what is the invention claimed?...claim interpretation will normally control the remainder of the decisional process. Panduit Corp. v. Dennison Manufacturing Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987) 31

Review claim set Try to have at least one claim that is clearly patentable pending before final rejection May stake out negotiating point with examiner Sets the stage for gaining PTA through an appeal 32

Amendment after NOA But Before Appeal Brief 37 CFR 41.33(a)--After NOA is filed and prior to filing of Appeal Brief, amendments are admitted pursuant to the provisions of 37 CFR 1.116. This allows you and the examiner to continue negotiating claim language after the NOA is filed. 33

Amendment after Appeal Brief 37 CFR 41.33(b)--Amendments filed on or after the date of filing the Appeal Brief will only be admitted: To cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, To rewrite dependent claims into independent form 34

Claim Construction in the USPTO [A]s an initial matter, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant s specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) 35

Claim Construction in the USPTO Just because you are right does not mean the examiner is wrong. [T]he fact that appellants can point to definitions or usages that conform to their interpretation does not make the PTO's definition unreasonable when the PTO can point to other sources that support its interpretation. Morris, 127 F.3d at 1056 36

Words count Claim 1. Bear with me. Claim 2. Bare with me.

Punctuation counts Claim 1 Eats shoots and leaves. Claim 2 Eats, shoots and leaves. 38

Claim 1 Eats shoots and leaves. Claim 2 Eats, shoots and leaves. 39

Know the record Claim 1. An abrasive composition comprising soap. 40

Evidentiary Record Review the evidentiary record and determine whether the evidence of record is sufficient to support your position. You should have an understanding from the examiner why submitted evidence is not persuasive by way of office action and/or interview 41

Evidence after NOA and Prior to Appeal Brief 37 CFR 41.33(d)(1)--Evidence filed after the NOA and prior to the filing of the Appeal Brief may be admitted if (1) the examiner determines that the evidence would overcome at least one rejection under appeal and does not necessitate any new ground of rejection and (2) presentation of a showing of good cause why the evidence is necessary and was not presented earlier. 42

Chances of Having Evidence Entered After Appeal Brief Slim and none and Slim just left town. 43

Appeal Brief Format New Rule: Real Party in interest Related proceedings Summary of claimed subject Argument Claims appendix Eliminated: Status of claims (recommend) Status of amendment filed after final rejection Statement of grounds of rejection to be reviewed (recommend) Claims appendix Evidence appendix is optional but recommended Related proceedings appendix 44

Appeal Brief Strategy All responses to office actions should be written with an appeal brief in mind If examiner is not persuaded, do I have a Plan B? Merits of pre-appeal conference requests and appeal briefs should already be of record before NOA is filed Worked with examiner but no agreement 45

Appeal Brief Strategy Standard of review Initial burden on examiner to establish unpatentability How has the examiner erred? Legal error Factual error Preponderance of evidence favors appellant 46

Patentability Standard [T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant. After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. If examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (citations omitted) 47

But what is the PTAB standard of review? At issue is whether the Appellant has shown that the Examiner erred in making the aforementioned rejections. or, Does the evidence of record support the Examiner s conclusion. 48

Presumption Of Examiner Correctness? Ex parte Frye, Appeal No. 2009-006013, February 26, 2010 (precedential) Panel included the Director, Deputy Director, CAPJ, a VCAPJ and three APJs. Specifically, the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue. 49

Sources of Examiner error--prima facie case of unpatentability Examiner must construe each claim under review using standards appropriate for claims under review before the USPTO Has examiner construed the claims? If so, is it reasonable? 50

Sources of Examiner error--prima facie case of unpatentability Examiner must apply the correct legal standards for the section of the statute the rejection is based upon. Without knowing the proper legal standard, the examiner will not know what facts are relevant. 51

Sources of Examiner error--prima facie case of unpatentability Examiner must make relevant facts of record in determining the patentability of the claim under review. Guided by proper claim construction and legal standard(s) 52

Sources of Examiner error--prima facie case of unpatentability Examiner must set forth a fact-based statement of rejection setting forth the reasons why the facts relied upon, using the correct legal standard, render the properly construed claim under review unpatentable. Statement of rejection must be comprehensive and complete 53

Examiner Error Neither the Office Action nor the PTO erred, the examiner erred. 54

Appeal Brief Must Contain All Arguments [A]ny arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal. 37 CFR 41.37(c)(iv) 55

New Arguments? The Appeal Brief can contain new arguments based upon existing record, commonly: Based upon claim construction In response to Advisory Action To flesh out previously made positions 56

Appeal Brief Argument Do not cite MPEP as primary authority 35 U.S.C. Legal precedent Use cases listed in MPEP if relevant

Appeal Brief-Argument It is helpful to establish examiner error by structuring arguments as follows: 1. Rejection of claims 1-10 under 35 U.S.C. 103(a) as allegedly obvious over Smith in view of Jones a. Separate argument for claim 1 i. Legal standard ii. Claim construction iii. Argument 58

Use sub-headings to highlight specific arguments Reference X does not describe element A of claim 1 The applied references do not teach the subject matter of claim 1 as a whole The examiner has used impermissible hindsight to combine the references 59

Setting the Stage for Examiner Legal Error Sample Legal Standard--Anticipation Anticipation is an exacting standard. Under 35 U.S.C. 102, every limitation of a claim must identically appear in a single prior art reference for it to anticipate the claim. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Implicit in a review of an examiner s anticipation analysis is that the claim must first have been correctly construed to define the scope and meaning of each contested limitation. See, e.g., In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994) ("To properly compare [an allegedly anticipatory prior art reference] with the claims at issue, we must construe the term 'computer' to ascertain its scope and meaning."). 60

Example Scenario: Examiner asserts that reference A anticipates claim 1, asserting that limitation X is described in A Argument:. Explain how you construe limitation X, using standard of Morris Explain why reference A does not describe limitation X as construed Finally, explain why examiner s assertion is incorrect, legally and/or factually Use Federal Circuit decisions, not the MPEP 61

Setting the Stage for Examiner Legal Error Second Sample Legal Standard--Anticipation "Anticipation" in patent usage means that the claimed invention was previously known and described in a printed publication, explicitly or inherently. Anticipation is established by documentary evidence, and requires that every claim element and limitation is set forth in a single prior art reference, in the same form and order as in the claim. See In re Omeprazole Patent Litigation, 483 F.3d 1367, 1373 (Fed. Cir. 2007); Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1267 (Fed. Cir. 1991). An anticipating reference must enable that which it is asserted to anticipate. Omeprazole, 483 F.3d at 1378 ( To anticipate, the identical subject matter must not only be previously known, but the knowledge must be sufficiently enabling to place the information in the possession of the public. ); Elan Pharmaceuticals, Inc. v. Mayo Found. for Medical Educ. & Research, 346 F.3d 1051, 1054 (Fed. Cir. 2003) (same). 62

Setting the Stage for Examiner Legal Error Third Sample Legal Standard--Anticipation A prior art reference must disclose every limitation of the claimed invention, either expressly or inherently, to anticipate. In re Schrieber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Inherent anticipation cannot be based on possibilities or probabilities. Akami Technologies, Inc. v. Cable & Wireless Internet Services, Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) ("A claim limitation is inherent in the prior art if it is necessarily present in the prior art, not merely probably or possibly present."); In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) ("Inherent anticipation requires that the missing descriptive material is 'necessarily present,' not merely probably or possibly present in the prior art."). 63

Setting the Stage for Examiner Legal Error First Sample Legal Standard--Obviousness As set forth in KSR Int l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007). [A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. 64

Setting the Stage for Examiner Legal Error Second Sample Legal Standard--Obviousness [R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). 65

Examiner factual error Often tied to claim construction Claim element is thermosetting Examiner identifies a polyethylene element in reference as meeting this claim element Is polyethylene thermosetting? What does the specification say? What does the reference say? 66

Examiner factual error Is polyethylene thermosetting? Must have game plan for response as evidence/ argument/amendment create Festo issues 67

Appeal Brief-Argument Work for PTA PTA accrues upon an appellate review by the Board of Patent Appeals and Interferences or by a federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability. 35 U.S.C. 154(b)(C)(2)(iii) 68

New PTA Rules B delay (three year pendency) will now include time from filing of NOA to the time Board assumes jurisdiction Jurisdiction passes to Board upon filing of Reply Brief or at the expiration of that time C delay (pendency of successful appeal) begins when Board assumes jurisdiction 69

PTA--Every Claim Counts Argue Claims Separately Claims argued together, stand or fall together When argued as a group (subject to same rejection), the Board will select claim most vulnerable to rejection... Affirmance of rejection of this one claim is affirmance of all regardless of the patentability of any individual nonargued claim 70

PTA--Every Claim Counts Argue Claims Separately Converse not true If the rejection of the first independent claim is reversed, the Board will review each remaining independent claim to see if reasons for reversing apply. 71

Conclusion Appeal early and often! 72