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Claim Amendments: Clarifying vs. Narrowing

Claim Amendments: Clarifying vs. Narrowing published on 3 Comments on Claim Amendments: Clarifying vs. Narrowing

Unwritten rule #1 of patent examination: If a reply to an office action includes no claim amendments, the examiner can simply copy-and-paste the last rejection.

This unwritten rule is applicable even if:

  • The office action is plainly wrong about the references.

  • The references are completely unrelated to your technology, and it’s difficult to understand why the examiner even cited them.

  • The rejection cites references that do not qualify as prior art.

  • The rejection totally disregards claim language, and perhaps even entire claims – neglecting even to acknowledge that some of the claims are pending.

No matter how brilliantly you assert these arguments, some examiners will not even consider them – the examiner will glance at the portion of the reply providing the claims, see no amendments, and blithely toss the reply aside. Then the examiner takes the previous office action, which reads:

Claim 1 is rejected because Reference A teaches (x) (y) (z).

…and prepares a final office action reading:

Claim 1 is rejected because Reference A teaches (x) (y) (z).

RESPONSE TO ARGUMENTS

Applicant’s arguments have been considered, but are unpersuasive because Reference A teaches (x) (y) (z).

Control-C, Control-V, Send. With those keystrokes, the examiner earns about 10 hours of productivity – at the expense of your client’s budget, and several months of wasted patent term. 1

Should examination be conducted this way? Not at all. Examiners are obligated to give due consideration to every one of the applicant’s arguments.

Is examination conducted this way? Yes, very often, because examiners usually aren’t held accountable for failing to consider the applicant’s arguments.

What are the options for responding?

  • You can ask the examiner for help. More often than not, the examiner will glance at the claims, draw a big circle around the lengthiest ones, and state: “You should amend claims 2 through 8 into claim 1.” If you accept this proposal, your client gets a patent that is far narrower than the prior art reasonably requires.

  • You can ask the examiner’s SPE to join you in an interview. Some SPEs will agree to participate, listen to your arguments, and then tell the examiner that they’re wrong. Some SPEs will agree to participate, sit in the interview with a glassy stare, and occasionally say, “I support the examiner.” And some SPEs will flat-out refuse to get involved.

  • You can file an appeal. Go ahead, pay the expensive appeal brief costs, and spend a few days writing up your arguments with painstaking clarity. The PTAB will review it and issue an opinion explaining that you’re correct… four years from now. In the interim, the examiner has been promoted to primary, changed art units, or left the USPTO – i.e., there’s a good chance that the examiner will face no repercussions for having been wrong.

This is an ideal scenario for amendments that clarify the claims, without significantly limiting them. The purpose of a clarifying amendment is to add elements to the body of the claim that explicitly specify limitations that are already stated elsewhere in the claim or are necessarily implied, and that call out a point of novelty in a way that an examiner cannot reasonably dodge. 2

Example: Your client has invented a square Frisbee (perhaps with the corners slightly rounded to reduce liability a bit). The square shape provides a surprising improvement in aerodynamic stability. Claim 1 recites: “A toy comprising: a square frame…”

The examiner rejects it in view of Reference T, showing a triangular projectile. The examiner asserts a “broadest reasonable interpretation” of the claim term “square” as including a variety of equivalent geometric shapes, or that PHOSITA would interpret a triangular frame as functionally equivalent to a square frame in this context.

Of course, the examiner’s position is untenable for a variety of reasons. Your specification presents a lengthy and brilliant discussion about the unexpected aerodynamic benefits of square frames over triangular frames. Prophetic statements in Reference T teach away from a square frame as “incapable of flight.” Also, well, basic geometry.

Nevertheless, if your reply only presents these arguments and no claim amendments, you might receive a copy-and-paste final rejection. The office action might even explicitly dismiss your arguments as “attempting to import limitations from the specification into the claims.”

Instead, you could amend claim 1 to provide: “A toy comprising: a square frame having four sides, wherein respective sides form a 90-degree angle with an adjacent side…” (Dependent claims can further specify that the 90-degree angle can be rounded.)

Of course, this description is entirely redundant with the term: “a square frame.” However, this amendment adds distinguishing claim language that this examiner must explicitly address in the next office action. If your reply focuses on this amendment and the obvious difference of this claim language from Reference T, the odds are greatly improved that the next office action will explicitly state that, yes, Reference T does not teach these elements of claim 1.

In a perfect patent system, this type of clarifying amendment is never necessary and has no effect on prosecution. But in dealing with the organization on Dulany Street, clarifying amendments can advance prosecution by overcoming references while not meaningfully limiting the claim, and therefore are a useful tool in the patent practitioner’s toolkit.


Notes:

  1. In fact, copy-and-paste office actions have even worse consequences:

    • A reply to a final office action with no claim amendments can prompt a first-action final rejection to the RCE. This is even worse for the applicant – RCEs are expensive, and this tactic effectively robs the applicant of an entire round of prosecution – and even more tempting for the examiner, who earns a full 20 production hours with virtually no effort.

    • By issuing a carbon-copy rejection, the examiner is digging in and doubling down on the stated rationale. Even if you later convince the examiner that the rationale is completely wrong, the examiner may be reluctant to change position and admit, after a string of identical office actions, that the claims are allowable over the references. Some examiners are so adamant about avoiding this that they will stand pat on an argument that they know to be specious, all the way up to the PTAB, rather than changing position in the absence of claim amendments. (Yes, this is a thing that happens.)

  2. Just to distinguish “clarifying” claim amendments from other types that are not as effective:

    • Amendments to the preamble. The legal rule of whether the preamble is limiting is: “Does it ‘breathe and meaning into the claim?'” The examiner’s rule of whether the preamble is limiting is: “The preamble is never limiting.” Relying on any part of the preamble to distinguish a reference is a losing argument.
    • “Wherein” clauses tacked onto the end of the claim, such as: “wherein the noble gas is xenon.” Examiners may or may not give due consideration to these amendments, so these clauses may add limitations (according to a court) while not improving the distinction of the claim over the prior art (according to the examiner).

    • Characteristic / result clauses, such as: “the solar cell exhibiting an efficiency of at least 20%.” Examiners will typically ignore these elements as simply descriptivelangauge that does not “positively recite” any structure or function – even the odds that a court will find them essential limitations are approximately 1,000%.

3 Comments

This is absurd, of course the Examiner must address the previous arguments! If he does not address the previous arguments the office action is incomplete.
You call him and point it out, citing MPEP § 707.07(f), and request a new office action. If he refuses, you call his SPE and do the same. The SPEs, more often than not, agree, and will make the examiner issue a new office action.
Also, I am not a fan of amending and arguing, it’s wasteful and creates needless prosecution history. You either do one, or the other, rarely both. If you amend (to clarify) *and* argue, you will get a final action, even if your arguments, and not the amendments, overcame the references.

This is absurd, of course the Examiner must address the previous arguments! If he does not address the previous arguments the office action is incomplete.

The problem is that 37 CFR does not set forth a minimum standard for “addressing” the arguments. As I noted in my post, many examiners feel that they have met their obligation to “address” your arguments by stating: “The arguments have been considered, but are unpersuasive because (pasting in the claim mapping from the previous office action).”

Sure, you can argue with the examiner about this point, and you can cite MPEP 707.07(f). The examiner will respond that:

(1) The MPEP is not legally binding on the examiner and is not a proper authority to cite as an examiner’s obligation (which may or may not be true – see Ex parte Dutton – but is certainly an interesting question); and

(2) The examiner believes that he or she has “taken note of the applicant’s argument and answer the substance of it” by stating that it has been considered and is unpersuasive.

All of this comes down to you asserting that the examiner’s burden hasn’t been met, and the examiner asserting that it has. In addition to wasting your own time and the client’s money, this tactic creates or exacerbates an adversarial environment that reduces the examiner’s willingness to work with you. This is not productive, and is not in your client’s best interest.

If he refuses, you call his SPE and do the same. The SPEs, more often than not, agree…

On this (and many other points), the USPTO examining corps widely varies. Some technology centers / art units / SPEs will side with you; others won’t.

In the technology centers / art units / SPEs that I have encountered, my experiences are that SPEs are willing to hear two types of arguments:

1) Reviewing the merits of 102/103 arguments, i.e., whether the references actually teach the claimed subject matter; and

2) Reviewing clear and indisputable errors of procedure, such as examiners not returning phone calls, not agreeing to interviews, and not responding to office actions in a timely manner (i.e., cases falling into the RCE hole for an extended duration).

Other arguments, such as about 101 and 112 issues, generally don’t garner SPEs’ attention. This is especially true about squishy issues with completely subjective boundaries, such as whether the examiner’s answer sets forth a proper prima facie case. On the whole, SPEs don’t care, until and unless you actually file a notice of appeal.

Also, I am not a fan of amending and arguing, it’s wasteful and creates needless prosecution history.

Generally, I agree with you. In the specific context that I described, it is the most efficient and least damaging way to move prosecution forward.

I’ll put it more simply. If your claim recites “a square,” and your reply amends this to “a square

    comprising four sides

,” then your prosecution history estoppel applies to… well, squares that don’t have four sides. Can you explain why you see that as problematic?

If you amend (to clarify) *and* argue, you will get a final action, even if your arguments, and not the amendments, overcame the references.

If you don’t amend, and the examiner doesn’t consider your arguments and doesn’t cite any new references, then you get a final office action anyway. Same result, only you’ve also made no progress in the case.

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