View unanswered posts | View active topics It is currently 2017-11-23 10:07:18



Reply to topic  [ 7 posts ] 
 Providing "support" for amendments 
Author Message

Joined: 2011-12-26 16:53:41
Posts: 117
Curious to hear from other practitioners about whether you "provide support" for claim amendments made during prosecution, ie., specifically point to a section of the spec to show compliance with written description.

Although the MPEP says Applicants "should" do this, I don't. Occasionally I get a written description rejection as a result of a claim amendment. If that happens, I deal with the rejection.

This post is prompted by a first OA that I just received. At the end, as part of what appears to be two pages of boilerplate, the OA says: "Applicant's future amendments need to comply with the requirements of MPEP 714.02, 2163.04 and 2163.06" Where MPEP 2163.II.A does say "with respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims").

I'm wondering if this is some indication that the Examiner will do something drastic if I don't "show support" for my claim amendments. Or maybe it's just boilerplate.

Any thoughts?

_________________
Karen Hazzah
Patent Prosecution blog "All Things Pros" http://allthingspros.blogspot.com/

The opinions expressed on this message board are mine and do not represent the views of my law firm, colleagues, or clients. My writings on this board are not legal advice and are offered for educational purposes only. No attorney-client relationship is created by my writings on this board.


2012-04-09 10:57:48
Profile WWW

Joined: 2012-01-26 15:47:36
Posts: 11
Location: In a bank with Sal.
I always point to the spec and/or original claims as appropriate ("Support for the drastic amendment to claim 1 may be found, for example, in the application specification at paragraphs [0032]-[0038] and, for example, in originally filed claims 2, 3, 6, 13, 22, 25 and 29, ...") ( :oops: )

I figure why take a chance on the Examiner - who likely has not yet read the spec, and probably won't do so now - arguing my amendment lacks support? (Also going back to my early training, although we grasped the distinction between must/should in the CFR, we generally treated "should" sections as required, unless there was a known, specific legal detriment to compliance with a particular "should".)

As for your particular OA's language, I've not seen that before. So I'd guess it is a warning of sorts that s/he wants more help in locating amendment support. Does seem strange to get such warning in a 1st OA, though. Unless this is an examiner who's examined a number of your other apps?


2012-04-09 11:16:54
Profile

Joined: 2011-12-29 10:29:29
Posts: 35
I also usually point to the location of the support for major claim amendments. Minor things or clarifying language based on an examiner's recommendation I usually don't and have not had it come back yet.


2012-04-10 08:06:24
Profile

Joined: 2011-12-26 16:53:41
Posts: 117
dogdaypm wrote:
I always point to the spec and/or original claims as appropriate ... I figure why take a chance on the Examiner ... arguing my amendment lacks support?

That's one way of looking at it. The other way is why say more than you have to, as long as you have a full opportunity to respond once an actual rejection appears (as is the case here). As it turns out, I get a 112 rejection less then 10% of the time (probably less than 5%), despite the fact that I rarely "provide support".

[quote="dogdaypm"
Also going back to my early training, although we grasped the distinction between must/should in the CFR, we generally treated "should" sections as required, unless there was a known, specific legal detriment to compliance with a particular "should".
[/quote]

Ah, but it's the MPEP that says "Applicant should show support for claim amendments" -- not the CFR. MPEP tells Examiners what to do, and therefore tells Applicants what to expect from an Examiner. But MPEP doesn't tell Applicants what they should/must do.

_________________
Karen Hazzah
Patent Prosecution blog "All Things Pros" http://allthingspros.blogspot.com/

The opinions expressed on this message board are mine and do not represent the views of my law firm, colleagues, or clients. My writings on this board are not legal advice and are offered for educational purposes only. No attorney-client relationship is created by my writings on this board.


2012-04-10 15:14:46
Profile WWW

Joined: 2012-03-17 19:03:29
Posts: 2
I'm against providing support for claim amendments, although I've been instructed by to other prosecutors to do so.

If the claim amendments are clearly supported, why waste the time (and client's money) mentioning it? If the Examiner comes back with a 112 rejection, point out the support and you're done.

If the claim amendments are not clearly supported, because their intrinsic or inherent or require a little thought, why pick that fight? For example, if you need to include a paragraph in the response that says "The claims have been amended to recite 'two widgets'. Paragraph [xxxx] states the device may have 'one or more widgets', therefore the amendment to 'two widgets' is supported," why would you invite the Examiner to argue with you over 112? Worse would be arguing "Fig. X is a flowchart of a method including 'determining X' that also includes an arrow that goes back to the beginning. Drawings can support amendments. Thus, the specification supports the amendment of 'determining X at first time' and 'determining X at a second time'." A real example: "Applicant appreciates that the spec fails to use the word 'computer' or 'processor'. However, one of ordinary skill in the art would appreciate that the system 100 of Figure 1 that is described as 'receiving data' and 'calculating a result from the data' necessarily includes a computer or a processor. Thus, the amendment to include 'a processor configured to X' [that we put in to overcome your stupid 101 rejection] is supported by the specification." Examiner's love to argue what "one of ordinary skill in the art would appreciate." Of course, if you get a 112 rejection, you go down swinging, but why challenge the Examiner in the first instance? I suppose that by including the arguments early, you hope not to have to put them in later, but that's not a time-savings.

Of course, if the claim amendments aren't supported, don't make them.

After a little bit of searching, I've determined the most "drastic" thing an Examiner can do... besides reject the claims under 112 in the next Office Action: Submit a "Requirement for Information" under 1.105 requiring the Applicant to provide "precisely which portion(s) of the disclosure provide the written description and enablement support for specific claim element(s)." See MPEP 704.11(a). I have a feeling that, although suggested by the MPEP, such a request is improper because "the PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims" (In re Wertheim, MPEP 2163) and the request improperly shifts that burden to the Applicant. I defer consideration as to whether I'd fight the Requirement on that basis or give in and point out the support.


2012-04-17 22:31:34
Profile

Joined: 2012-04-20 15:16:37
Posts: 33
It is quite rare to see an examiner using a requirement for information. In general the only time that I imagine that being used for lack of description would be when the Examiner sees a number of possible implicit teachings, but is not sure of whether any one of them is intended. Again, this would be rare.
I understand not wanting to pick a fight with an examiner, and omitting a specific reference to any section for support, but I would not make it a rule, particularly if the disclosure is extensive, or there are a number of embodiments recited. Also it would not be advisable to omit support when a broad limitation has narrow support in the disclosure. If the invention requires highly specialized knowledge to properly understand what is being discussed, omitting specific support can lead to rounds and rounds of prosecution, with the examiner saying "it's there" pointing to something that has nothing to do with your invention and you arguing "it is not". What appears obvious to you might not be so obvious to an examiner who has not had the benefit of discussing the invention with the inventors, or seeing a legalese-free description of the invention. I've seen some of those misunderstandings go for a few RCEs, and even all the way to the Board. It is quite easy for the applicant to argue support (unless the examiner is unreasonable or there is no support), and quite difficult to argue that the examiner's interpretation is unreasonable, so I would not invite that by keeping the examiner in the dark.


2012-04-20 15:35:53
Profile

Joined: 2011-12-26 16:53:41
Posts: 117
cpa34 wrote:
If the invention requires highly specialized knowledge to properly understand what is being discussed, omitting specific support can lead to rounds and rounds of prosecution, with the examiner saying "it's there" pointing to something that has nothing to do with your invention and you arguing "it is not".

I certainly don't want multiple rounds of 112 rejections. Which is why my practice is not to explicitly mention sections of the specification when I first make an amendment, but to do so if and when I see a 112.

cpa34 wrote:
quite difficult to argue that the examiner's interpretation is unreasonable


Disagree. I argue claim construction all the time, ie, arguing his interpretation is not reasonable. In fact, I believe understanding how the Examiner interprets the claims is the key to successful prosecution.

In the context of prior art rejections, very few arguments are really about what the reference teaches. Instead, they're about how the Examiner is interpreting the claims. That is, we both agree the reference teaches a widget, we just disagree on whether my claimed blodget is properly interpreted to cover the disclosed widget.

I suspect the same is true with written description arguments, ie, the crux of the matter is how the Examiner is interpreting the claim so that it *isn't* covered by your spec.

_________________
Karen Hazzah
Patent Prosecution blog "All Things Pros" http://allthingspros.blogspot.com/

The opinions expressed on this message board are mine and do not represent the views of my law firm, colleagues, or clients. My writings on this board are not legal advice and are offered for educational purposes only. No attorney-client relationship is created by my writings on this board.


2012-04-29 11:30:35
Profile WWW
Display posts from previous:  Sort by  
Reply to topic   [ 7 posts ] 

Related topics
 Topics   Author   Replies   Views   Last post 
There are no new unread posts for this topic. Should these sorts of amendments trigger a Final OA?

khazzah

10

6431

2012-01-26 15:16:41

klaviernista View the latest post

There are no new unread posts for this topic. Amendments By Canellation and Introduction of New Claims

watari_pg

1

2045

2014-09-16 10:55:30

khazzah View the latest post

 


Who is online

Users browsing this forum: No registered users and 2 guests


You cannot post new topics in this forum
You cannot reply to topics in this forum
You cannot edit your posts in this forum
You cannot delete your posts in this forum

Search for:
Jump to:  
cron