IBM Recommends More Clarity in Notice of Allowance
Currently, Examiners provide a reason for allowance in most patent applications, but usually the reason is not as specific and explanatory as required by the MPEP. The reason is typically a statement such as, “The prior art fails to teach or suggest …” followed by a quotation of much of the claim. The quotation includes the claim element(s) that are the real reason for allowance but often includes other claim elements ...more »
Currently, Examiners provide a reason for allowance in most patent applications, but usually the reason is not as specific and explanatory as required by the MPEP. The reason is typically a statement such as, “The prior art fails to teach or suggest …” followed by a quotation of much of the claim. The quotation includes the claim element(s) that are the real reason for allowance but often includes other claim elements that happen to be in the same or interrelated paragraphs as the novel claim element. This can cause these other claim elements to inadvertently be subject to File Wrapper Estoppel if the Applicant previously argued these other claim elements in the File History. Conversely, if the Examiner’s reason for allowance did not cite these other claim elements previously argued by the Applicant in the File History, then these other claim elements would less likely be subject to File Wrapper Estoppel. See Zenith Laboratories v. Brystol Meyers Squibb, 19 F3d.1418, 30 USPQ2d 1285, 1290-91 (Fed Cir. 1994). MPEP 1302.14 recognizes this problem and states that if Applicant has made multiple arguments to distinguish the claims over the prior art, “a statement [by the Examiner] is necessary to identify which of these [arguments] were persuasive.” Therefore, we request that Examiners regularly comply with MPEP 1302.14 such that when an Applicant has argued more than one difference of an independent claim over the prior art in the File History, that in the reason for allowance, the Examiner specify which difference or differences were the real reason for allowance and not cite extraneous claim elements. MPEP 1302.14 also states, “Care must be taken to ensure that statements of reasons for allowance (or indication of allowable subject matter) are accurate, precise, and do not place unwarranted interpretations, whether broad or narrow, upon the claims. … Each statement should include at least (1) the major difference in the claims not found in the prior art of record, and (2) the reasons why that difference is considered to define patentably over the prior art.” MPEP 1302.14 also provides “Examples of Statements of Suitable Content” for the reason for allowance. These examples are cast in prose, not a quotation of the claim, and explain specifically how the independent claims distinguish over the prior art. For example, “The primary reason for allowance of the claims is the inclusion of .03 to .05 percent nickel in all of the claims.” Therefore, we also request that the Examiners regularly comply with MPEP 1302.14 and provide a reason for allowance that explains how a claim patentably distinguishes over the prior art, not merely quote from the claim.
« less full details »
Social Web