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Chapter 1300 - Allowance and Issue »

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 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.

Submitted by Lisa Ulrich 1 year ago

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  1. The idea was posted
    1 year ago

Comments (4)

  1. I'm afraid I disagree with this idea. Experience is that when examiners use prose to explain their reasons for allowance, the prose is usually imprecise, and often full of grammatical errors. Such statements could be used in subsequent PTAB or court litigation to argue that the claim was allowed improperly, or to construe claim terms or introduce new limitations that the Examiner may not have intended, and that the applicant certainly did not authorize. The applicant can of course respond with comments on such a statement, but that just leaves the issue unsettled.

    I believe the MPEP instructions to Examiners should be modified to insist that Examiners recite *only* the actual claim language on which they relied in distinguishing the prior art before them, since that is in fact the *only* basis on which the Examiner should allow claims. And because legally no claim limitation is any more or less important than any other, the Examiner's statement should also add the phrase which is already commonly used, that the recited claim language is to be read "in conjunction with all the other limitations of the claim."

    Additionally, if the Examiner does provide a statement of reasons, then one should be provided for *each* independent claim, not just Claim 1 (unless the claim language recited in the reason for claim 1 is literally present in, and was relied upon in allowing, *all* the independent claims.)

    1 year ago
    2 Agreed
    0 Disagreed
  2. I think examiners should only rarely submit reasons for allowance. For example, if a non-patent literature reference with a difficult-to-determine publication date is considered and the reference is determined to have been published shortly after the critical date, then I think that should be noted in reasons for allowance.

    1 year ago
    0 Agreed
    0 Disagreed
  3. I likewise substantially disagree with the original poster ("OP"), for some of the same reasons and some different reasons.

    First, let's distinguish what grounds of prior-art based rejection was/were overcome to result in any given allowance (ignoring for this discussion the possibility that the last few rounds of prosecution might have been dedicated solely to overcoming one or more rejections based on indefiniteness, enablement, written description, or, heaven forbid, statutory subject matter? (notice how I've listed that one last... ;-)).

    Was the prior-art rejection based on lack of novelty or on obviousness? Perhaps the OP intended to limit the question to novelty, but it's not abundantly clear to me, particularly given that claims can (and often must) be distinguished over the prior art in both the novelty and the obviousness arenas.

    In any event, let's start with novelty. In that situation, if the last Office Action rejected a now-allowed claim for lack of novelty, then yes, there might be 1, 2, or even more claim "elements" or "limitations" (anyone want to try to present a cogent explanation of the difference between the two, citing clearly reasoned caselaw?) or other aspects of the claimed subject matter that the examiner now recognizes as distinguishing that claimed subject matter from the cited prior art. And in that particular situation, there might be some benefit to having the examiner quote the particular claim language that is believed to express that distinction, so that the applicant can more easily argue on the record any disagreement (if desired).

    But now consider the situation where the only thing standing between the applicant and allowance is an obviousness rejection of a single independent claim, and finally, after all the easy RCE counts have been harvested, that rejection is overcome. Given that a legally proper obviousness analysis mandates that the claimed subject matter as a WHOLE be compared to the entirety of the teachings of the prior art, what logical meaning is there to quoting (or even paraphrasing, heaven forbid) particular claimed subject matter as distinguishing the claimed subject matter? In other words, given that an obviousness analysis is required to be performed holistically, what relevance is there to atomizing it?

    Now consider a perhaps more challenging question. What if, through the typical multiple rounds of prosecution (see above snark re: harvesting of RCE counts), a given claim is rejected based on novelty and on obviousness (perhaps, but not necessarily, at the same time). What if some of those grounds were dropped along the way, perhaps in response solely to argument and/or fact rather than any amendment of the claim. Which of those art rejections must be addressed in the Examiner's Reasons? Does the typical examiner ever look back over all the art-based rejections in the prosecution history and clarify how EACH cited reference, modification, and/or combination was distinguished?

    As for MPEP 1302.14, just so I can recognize one and say "Hi" if I ever see it walking down the street, what in the world is a "major" difference? What law, statutory or judge-made, requires such a difference?

    Finally, let's consider the case that is perhaps most on point, Salazar v. Proctor & Gamble Company, 414 F.3d 1342 (Fed. Cir. 2005), which, unlike Zenith, was decided after(!) the Supreme Court's 2002 Festo decision. As Salazar explained:

    This court has recognized that an Examiner's Statement of Reasons for Allowance "will not necessarily limit a claim." ACCO Brands, Inc. v. Micro Sec. Devices, Inc., 346 F.3d 1075, 1079 (Fed.Cir. 2003). Consequently, an applicant's silence regarding statements made by the examiner during prosecution, without more, cannot amount to a "clear and unmistakable disavowal" of claim scope. See 3M Innovative Props., 350 F.3d at 1373-74 ("`Prosecution history ... cannot be used to limit the scope of a claim unless the applicant took a position before the PTO.' Schwing GmbH v. Putzmeister Aktiengesellschaft, 305 F.3d 1318, 1324-25 (Fed.Cir. 2002) (emphasis added [to the word "applicant"]). An applicant's silence in response to an examiner's characterization of a claim does not reflect the applicant's clear and unmistakable acquiescence to that characterization if the claim is eventually allowed on grounds unrelated to the examiner's unrebutted characterization."). After all, the applicant has disavowed nothing.

    So although unasked, Salazar suggests that perhaps the question ought to be, what is the point of MPEP 1302.14? Even better, what is the point of an Examiner's Statement of Reasons for Allowance?

    PS: special note to OP: probably just a careless or newbie slip (hey, we're all human, and walk before we run), but given their rather bizarre heredity, claims don't include "paragraphs", whether "same or interrelated". Even interpreting the word "paragraphs" rather liberally in this context, a claim at most includes only one "paragraph" (singular). More practically, most experienced practitioners simply don't use words such as "sentence" or "paragraph" to describe the content of a claim, which often more closely resembles a (sometimes vertically-parsed) string of words that contains (ignoring abbreviations), and is terminated by, only a single period. See MPEP 608.01(m): "Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations."

    All that said, an interesting and thought-provoking post. Cheers.

    1 year ago
    1 Agreed
    0 Disagreed
  4. I agree with the idea. I think that an examiner should articulate their reason for allowance. Just as an examiner is required to express an rational underpinning to support a legal conclusion of obviousness (KSR), it seems to me that it is in the public interest for the examiner to provide a rational underpinning for the legal conclusion of allowing a claim.

    In my own experience, I find it helpful to understand what the examiner believes to be the boundaries of the invention, especially if I plan on filing a continuation, where chances are, I will be working with the same examiner. I think it is also in the public interest as it creates another point of accountability during the examination process.

    If as Mike Hayes pointed out, in Salazar v Proctor & Gamble, an examiner's reason for allowance without a rebuttal from the applicant cannot be used as applicant's disavowal, it seems to me there would be more benefit than harm from an examiner articulating a reason for allowance.

    1 year ago
    0 Agreed
    0 Disagreed