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 Should these sorts of amendments trigger a Final OA? 
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Joined: 2011-12-26 16:53:41
Posts: 117
MPEP 714.13 says that an amendment on non-Final usually triggers a Final OA, with a few exceptions:
Quote:
Except where an amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner, compliance with the requirement of a showing under 37 CFR 1.116(b)(3) is expected in all amendments after final rejection.


I'm curious about what types of amendments you guys think fall under the "cursory review" exception.

I find myself making lots of amendments these days to get past 101, 112P6, or 112P2 issues. Amendments like:
  • moving "computer" from preamble of method claim to body
  • adding "non-transitory" in front of "computer readable medium"
  • changing "means for Xing" to "[something] configured to X"
  • fixing antecedent basis

Of the above types of amendments, which do you think literally fall under "require only cursory review"? Which do you think should not trigger final, in the sense of "not fair to trigger final" ?

I feel that for all the above, it's unfair for the Examiner to use one of the above to take me Final, because my amendments don't affect the prior art search the interpretation of the claims. For example, if the reference shows a computer implemented method, then adding "computer" to my method doesn't affect the Examiner's prior art rejection. Thus, it's not fair for the Examiner to take me final.

Here's a separate but related question. As a practical matter, which of the above amendments would you expect to not trigger final, in the real world? That is, what does happen as opposed to what should happen?

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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.


2012-01-17 14:36:36
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Joined: 2011-12-24 18:23:00
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I agree on all four--they're minor, and if the substantive examination (meaning the analysis in any 102/103 rejections) was done properly, it would be done based on what the examiner knows you must mean, if any literal reading of the pre-amendment claims was rejectable on 101/112 or objectionable on informalities (formalities?).

Of course your latter query invites the response that it is the contrary. Frequently examiners take advantage of minor amendments to improperly hasten to final.

Related question: suppose a substantive rejection is based on 102(a) reference authored by the inventor(s) and "another" (or "others"), e.g., an academic paper published less than one year before the filing date which listed as authors the inventors plus other non-inventive contributing colleagues, and the applicant's (or applicants') 1.132 declaration successfully removes the reference by affirming that the other listed authors were not inventors. Then the claims are amended. Can the Patent Office require the declaration to be made again? And again and again each time there is an amendment? How about even a minor amendment, like one of those you list? That sort of game could get to be a real burden on the prosecution, especially if the inventors are no longer readily available to keep signing duplicate declarations.

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2012-01-17 19:44:17
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Joined: 2012-01-18 05:47:59
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I disagree with your interpretation of MPEP 714.13. I'm pretty sure this section deals with amendments after final rejection.

With the exception of adding non-transitory in front of computer readable medium, I would be hesitant to make a decision without seeing the details of the claim in question. I can think of examples where the scope of a claim would be significantly changed by these types of amendments.


2012-01-18 06:17:45
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I agree with Rusty who said you either aren't really talking about 714.13, as you seem to be concerned with when final is actually appropriate, OR you are concerned with after final things and not just triggering a final.

Anyway, as to your post, I would think 1, 2 and 4 are probably ok, with the caveat of I'd want to see the particular claims first. But they probably aren't changing things enough to be a big deal. Also with the caveat that I don't often work in computer type things so maybe I'm wrong.

3 though stuck out like a sore thumb to me. Changing from MPF to not would seem to potentially have a huge impact on claim scope, depending on how the spec defines things. So I wouldn't necessarily expect that to survive a mere "require only cursory review" standard--yes maybe on the facts of the case it would be ok, but in another case it might be vastly broadening the claims by removing it from covering only what is in the spec+equivalents.


2012-01-18 21:45:43
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Joined: 2012-01-10 00:06:46
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Not sure what you are getting at. Did you mean to say that 714.13 indicates that in most cases, amendments that require more than cursory review provoke an advisory action?


2012-01-19 01:03:51
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Joined: 2011-12-26 16:53:41
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Quote:
I agree with Rusty who said you either aren't really talking about 714.13, as you seem to be concerned with when final is actually appropriate, OR you are concerned with after final things and not just triggering a final.

@lazyexaminer and @rusty: You guys are right. Boy, did I screw that one up.

I was trying to ask what sorts of amendments can properly trigger a Final OA. Which is indeed covered by 706.07(a) and not 714.13.

706.07 says (paraphrasing) that Examiner can take you final even if he enters a new ground of rejection unless the new ground is "necessitated by applicant's amendment of the claims" [or based on info in an IDS].

So can the Examiner properly assert that these sorts of amendments necessitated a new ground?
  • moving "computer" from preamble of method claim to body
  • adding "non-transitory" in front of "computer readable medium"
  • changing "means for Xing" to "[something] configured to X"
  • fixing antecedent basis

And as a practical matter, which of these types of amendments commonly result in a Final OA?

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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.


2012-01-19 19:00:36
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Joined: 2012-01-10 00:06:46
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I think you meant to say that 706.07 says that an examiner can enter a new ground and go final except when the new ground is neither necessitated by applicant's amendment of the claims, nor based on information submitted in an information disclosure statement.

In my experience as a practitioner and former examiner, an examiner can properly issue a final rejection containing a new ground of rejection if the applicant amends one or more claims in any way that causes the examiner to change his or her interpretation of the amended claim.

1. Moving "computer" from the preamble of the method claim to the body: If such an amendment changes the Examiner's interpretation of the claim to the point a new ground of rejection is required, the amendment "necessitated" the new ground and a final rejection would be proper. Many examiners (perhaps improperly) ignore preamble limitations. Thus, adding a preable limitation to the body could substantively change an examiner's interpretation of the claim, leading to a new ground of rejection. If so, the final rejection would be (or is at least arguably) proper.

2. Adding "non-transitory" in front of "computer readable medium": This type of amendment is now being routinely filed to address 101 rejections of computer readable media claims that the office feels read on unpatentable "transitory" signals. In my experience examiners will anticipate that the applicant will amend such claims to overcome the 101 rejection and thus, also reject (if possible) such claims on prior art grounds. In those cases, the addition of "non-transitory" in and of itself would not necessitate a new ground of rejection (at least not in most cases). Rather, it would simply overcome the 101 rejection. Then again, if the amendment changes the examiners interpretation of the claim to the point that a new ground of rejection is required (this would be a rare circumstance), the amendment could be considered to have necessitated the new ground of rejection and a final rejection would be proper.

3. Changing "means for Xing" to "[something] configured to X": Relevant caselaw is very specific as to what type of language invokes means plus function considerations under 112(6). Means for Xing is pure means plus function language (which would invoke 112(6), whereas "[something] configured to X" is "functional" claim language that has been interpreted by various courts (I believe) as not invoking 112(6).* As a result, this amendment likely will change (perhaps drastically) the Examiner's interpretation of the claim. If it does, and a new ground of rejection is warranted, the Examiner could properly issue such a new ground in a final rejection. Of all the amendments in your bulleted list, this is the one I feel is most likely to result in a Final OA.

4. Fixing antecedent basis: If an amendment "only" fixes antecedent basis, it should not affect the Examiner's interpretation of the claim. As such, it is unlikely that such an amendment would "necessitate" a new ground of rejection. In fact, it is hard for me to imagine a scenario in which fixing a pure antecedent basis problem would give rise to a new ground of rejection.

If I had to put the above 4 amendments in order from most likely to provoke a proper final to least likely, I would say the order should be 3, then 1, with 2 and 4 tied for last.

*Note: I have not researched the law governing 112(6) and means plus function claims in some time. But the last time I did, it appeared that the courts were moving to a stance where a claim had to literally recite "means for [doing X]" in order to invoke 112(6).


2012-01-20 01:10:19
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Klaviernista, just a heads up. Regardless of whether "the courts were moving to a stance where a claim has to literally recite 'means for [doing x' in order to invoke 112(6)," the PTO has not adopted this view. Several training memos have come out over the last year stating that 112 6th is invoked more easily than you probably imagine. Specifically, "Examiners will apply 112 6 to a claim limitation that uses a non-structural term associated with functional language, unless the non-structural term is (1) preceded by a structural modifier, defined in the specification as a particular structure or known by one skilled in the art, that denotes the type of structural device (e.g., 'filters'), or (2) modified by sufficient structure or materials for achieving the claimed function."* In other words, it's not limited to "means for" or "step for" these days.


*Quote from the Federal Register, Vol. 76, No. 27, Feb. 9, 2011, page 7167.


2012-01-20 10:53:33
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Joined: 2012-01-18 21:32:16
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klaviernista wrote:
I think you meant to say that 706.07 says that an examiner can enter a new ground and go final except when the new ground is neither necessitated by applicant's amendment of the claims, nor based on information submitted in an information disclosure statement.

In my experience as a practitioner and former examiner, an examiner can properly issue a final rejection containing a new ground of rejection if the applicant amends one or more claims in any way that causes the examiner to change his or her interpretation of the amended claim.

1. Moving "computer" from the preamble of the method claim to the body: If such an amendment changes the Examiner's interpretation of the claim to the point a new ground of rejection is required, the amendment "necessitated" the new ground and a final rejection would be proper. Many examiners (perhaps improperly) ignore preamble limitations. Thus, adding a preable limitation to the body could substantively change an examiner's interpretation of the claim, leading to a new ground of rejection. If so, the final rejection would be (or is at least arguably) proper.

2. Adding "non-transitory" in front of "computer readable medium": This type of amendment is now being routinely filed to address 101 rejections of computer readable media claims that the office feels read on unpatentable "transitory" signals. In my experience examiners will anticipate that the applicant will amend such claims to overcome the 101 rejection and thus, also reject (if possible) such claims on prior art grounds. In those cases, the addition of "non-transitory" in and of itself would not necessitate a new ground of rejection (at least not in most cases). Rather, it would simply overcome the 101 rejection. Then again, if the amendment changes the examiners interpretation of the claim to the point that a new ground of rejection is required (this would be a rare circumstance), the amendment could be considered to have necessitated the new ground of rejection and a final rejection would be proper.

3. Changing "means for Xing" to "[something] configured to X": Relevant caselaw is very specific as to what type of language invokes means plus function considerations under 112(6). Means for Xing is pure means plus function language (which would invoke 112(6), whereas "[something] configured to X" is "functional" claim language that has been interpreted by various courts (I believe) as not invoking 112(6).* As a result, this amendment likely will change (perhaps drastically) the Examiner's interpretation of the claim. If it does, and a new ground of rejection is warranted, the Examiner could properly issue such a new ground in a final rejection. Of all the amendments in your bulleted list, this is the one I feel is most likely to result in a Final OA.

4. Fixing antecedent basis: If an amendment "only" fixes antecedent basis, it should not affect the Examiner's interpretation of the claim. As such, it is unlikely that such an amendment would "necessitate" a new ground of rejection. In fact, it is hard for me to imagine a scenario in which fixing a pure antecedent basis problem would give rise to a new ground of rejection.

If I had to put the above 4 amendments in order from most likely to provoke a proper final to least likely, I would say the order should be 3, then 1, with 2 and 4 tied for last.

*Note: I have not researched the law governing 112(6) and means plus function claims in some time. But the last time I did, it appeared that the courts were moving to a stance where a claim had to literally recite "means for [doing X]" in order to invoke 112(6).


For whatever it's worth, I agree pretty much 100% with this post. Also with the caveat that I was not aware of the newish 112 6th memo mentioned by Easwaran (thank you inconsistent Office training practice :roll: )


2012-01-21 14:43:31
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Joined: 2011-12-26 16:53:41
Posts: 117
klav and lazyexaminer: thanks for your comments.

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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.


2012-01-26 10:17:05
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Joined: 2012-01-10 00:06:46
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Easwaran wrote:
Klaviernista, just a heads up. Regardless of whether "the courts were moving to a stance where a claim has to literally recite 'means for [doing x' in order to invoke 112(6)," the PTO has not adopted this view. Several training memos have come out over the last year stating that 112 6th is invoked more easily than you probably imagine. Specifically, "Examiners will apply 112 6 to a claim limitation that uses a non-structural term associated with functional language, unless the non-structural term is (1) preceded by a structural modifier, defined in the specification as a particular structure or known by one skilled in the art, that denotes the type of structural device (e.g., 'filters'), or (2) modified by sufficient structure or materials for achieving the claimed function."* In other words, it's not limited to "means for" or "step for" these days.


*Quote from the Federal Register, Vol. 76, No. 27, Feb. 9, 2011, page 7167.


2012-01-26 15:16:41
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