Industrial IP

During patent prosecution, practitioners address the various rejections under different statutory sections one at a time. This makes sense since the different rejections stand on their own, and different arguments/rules apply. While sometimes there are overlapping issues, generally most examiners judiciously apply the grounds when they feel the facts warrant such application. However, from a strategic point of view, one can often learn a lot by considering the rejections together.  In particular, some examiners (e.g., those that tend to be more intent on rejecting applications no matter the facts) do not simply go through the claims and various statutory provisions and apply them independently. Rather, as an example, some examiners, upon realizing that their best prior art rejection is still missing certain explicit claim elements, go back and suddenly find that certain claim elements are unclear (112), unsupported (112), etc. In other words, it is generally not a coincidence when ...

What’s in a name? Juliet’s famous question about Romeo’s Montague name brings about one of the most well-known Shakespeare quotes - that a rose by any other name is still a rose. At the USPTO, examiners have a tendency to be very flexible in mapping claim elements to prior art references under the guise of the Broadest Reasonable Interpretation. For example, it would not phase most patent prosecutors if an examiner alleged that a claim to a “flower” was anticipated by a prior art reference disclosing a “thorn” under the theory that a flower, under the BRI, can refer to the whole stem and flower, and thus include thorns. Strained and even nonsensical interpretations are common, and maintained even up to appeal, as we see in a recent example regarding engine pistons (15/512,560) to Volvo Truck. Here, the invention relates to a reciprocating machine, such as a combustion engine, having groove patterns provided in cylinder walls for collecting oil. Claim 1 is below:  1. A reciproca...

Checking my email after work one day, I was greeted with some unfortunate news: the application I was prosecuting had received yet another Office action.   Frustrated, I couldn’t resist skimming the substance of the rejection.   After all, like any patent practitioner, I thought my arguments were pretty irrefutable.   The news only got worse… or so it appeared.   The Office action was something called an “ Ex Parte Quayle action.”   Having never received one of these actions, I started mentally preparing myself to pull out the MPEP and research some arcane rejection. To my surprise, I didn’t find myself knee-deep in case law the following day.   Ex Parte Quayle actions, while somewhat inconvenient, are far from insurmountable.   In short, an Ex Parte Quayle action or “Quayle action” is issued when an application has objections remaining as to formal matters, but is otherwise allowable.   Accordingly, the mailing of these actions close...