Silly § 102 Tricks

By Michael Borella --

With further apologies to David Letterman.

Almost two years ago we published Stupid § 101 Tricks, an article discussing some of the annoying, improper, and yet disappointingly common patterns seen in rejection and invalidation of claims for allegedly lacking patentable subject matter.  Moving on from there, Section § 102 of the patent statute sets forth the requirement of novelty.  In sum, it is a rather simple requirement, far easier to determine, less nuanced, and less subjective than the inquiry of § 101 or even the obvious analysis set forth in § 103 and related case law.

Nonetheless, it is not uncommon to observe deviations from the straight lines of the § 102 analysis.  As § 102 does not lend itself to the same level of shenanigans as § 101, we characterize these tricks as being "silly" rather than "stupid."  Still, they are problematic in practice as they not only are misaligned with the statue and case law, but also unnecessarily increase the cost of patent acquisition.

Let's start by defining the legal concept of anticipation.  In Verdegaal Bros. v. Union Oil Co. of California, the Federal Circuit stated that "[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference."  The Court has further clarified that "anticipation is not proven by multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention."  Microsoft Corp. v. Biscotti, Inc.  And, "unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it . . . cannot anticipate under 35 U.S.C. § 102."  Net MoneyIN, Inc. v. VeriSign, Inc.

This is cut and dry -- one reference must disclose all claim elements as arranged in the claim under analysis.  As noted in M.P.E.P. § 2131.01, secondary references can be relied on to establish anticipation when these references "(A) Prove the primary reference contains an 'enabled disclosure;' (B) Explain the meaning of a term used in the primary reference; or (C) Show that a characteristic not disclosed in the reference is inherent."  Nonetheless, the use of secondary references in § 102 considerations remains rare.

With all this in mind, on to the tricks.  All of these tricks have been observed during patent prosecution at the USPTO, and therefore we focus on how they are used by examiners.  We expect that they are less prevalent at the PTAB and in courts but have not yet made that determination.

For any of the tricks described below, a recommended course of action is to interview the examiner in a non-confrontational fashion.  It is likely that they simply made an oversight, or that they have interpreted the claim in some fashion that is not explicit in the Office action (more on that later).  In some cases, reminding the examiner of the requirements for anticipation set forth in the M.P.E.P. § 2131 might also help.

Trick 1: The Ghost Claim Element

As noted, to anticipate a claim, a prior art reference must recite all of the claim elements.  However, some § 102 rejections silently ignore an entire claim element.  In some cases, the rejection ignores part of a claim element, such as the content of a wherein clause.  While the default is to consider all words of a claim during examination, there are a few oddball instances where the examiner is permitted to ignore part of a claim.  Intended use clauses and certain types of conditional claim language are two examples.  But even in those cases, the examiner is expected to provide a rationale for why a claim element is ignored.  For ghost claim elements, however, there is no rationale at all and the claim element is simply not addressed.

Trick 2: The Throwaway Claim Element

Here, the examiner finds a prior art reference that arguably teaches all claim elements except for one.  But for some reason, the examiner really wants to give a § 102 rejection rather than searching for a secondary reference to fill the gap.  Or, maybe the examiner cannot find such a secondary reference.  Regardless, the rejection cites to a passage in the primary reference that has nothing to do with the claim element to which it is being applied.  In many situations, this mapping is so far off base that you end up shaking your head a few times, cleaning your glasses, and questioning your own sanity.  But further analysis and consideration results in the same conclusion.  It is surprising to see this when the examiner otherwise did an admirable job in applying the prior art to the claim.

Trick 3: The Low-Effort Rejection of Dependent Claims

A related trick is to find a decent prior art reference for the independent claims -- let's say for sake of argument that the reference properly anticipates the independent claims.  But then the rejection uses the same reference as allegedly anticipating all of the dependent claims as well.  While this might be case for a few dependent claims, at least some get the same "throwaway" tactic described above -- the reference clearly has nothing to do with what is recited.  This low-effort approach allows the examiner to quickly turn around a rejection without searching for secondary references.  For at least some examiners, this is a pattern of behavior that you will see over and over.

Trick 4: The Stealth § 103 Rejection

In this type of rejection, the examiner finds an analogous prior art reference, but one that does not exhibit all claim elements as arranged.  Nonetheless, the examiner formulates a § 102 rejection, using vigorous hand-waving over the missing elements, and arguing that at some high level of abstraction the claim elements and the reference's teachings are the same or at least close.  To paraphrase a cliché, closeness only matters in horseshoes, hand grenades, and obviousness.  The problem is that some examiners will shut their ears to any argument that their rejection is improper -- ignoring the M.P.E.P. and case law in the process.  In practice, the applicant often ends up making claim amendments because the reference -- while insufficient to establish anticipation -- could be used in a single-reference § 103 rejection.  Still, this possibility does not justify an improper § 102 rejection.

Trick 5: The <Ctrl>-F Rejection

Earlier this year we published an article on examination annoyances and how to handle them.  One of these annoyances, the <ctrl>-f rejection, applies here as well.  This type of rejection is based on the examiner selecting certain keywords from the claims, finding a prior art reference that contains the same keywords, and stitching the disparate passages in the reference together into an anticipation rejection.  Of course, the context in which the keywords are used in the claim is lost.  The prior art may contain the same language as the claims but is often not otherwise related.  The key to addressing a § 102 <ctrl>-f rejection is to focus on the arrangement of claim elements, as that is likely what the examiner ignored.

Trick 6: Broadest Unreasonable Interpretation

It is no secret that an examiner's take on the broadest reasonable interpretation (BRI) of a claim can be quite different from that of an attorney or agent who drafted or is prosecuting the claim.  In most cases, it is helpful to be informed of the examiner's interpretation, and it would be nice for examiners to set forth their BRI explicitly in Office action.  But as noted in the examination annoyances article, BRI can be misused.  BRI is tempered by how claimed elements fit into the overall structure of the claims and how they relate to other claim elements, as well as how the constituent words and phrases are defined in the specification and drawings.  M.P.E.P. § 2111 helps in this regard, stating that BRI is not the broadest possible interpretation, and that examiners must apply the ordinary and customary meaning of claim terms unless these terms have been given special definitions in the specification.  Further, BRI must be consistent with the use of the claim term in the specification and drawings.  Nonetheless, examiners may argue in interviews that their unspecified claim interpretation is proper under BRI, thus allowing them to wedge a § 102 rejection out of a reference that might be better used as just one of a § 103 rejection, if at all.

Comments

[Connor]

Thank you for this article (and the previous one). It's too bad that the PTO has never come up with a way to correct these practices (or doesn't want to), because they make it difficult for the applicant to achieve compact prosecution and obtain allowable claims or decide to abandon an application. Use of these sloppy examination practices effectively damages both the applicant's intellectual property interest and the interest of the public in having settled patent claims. The public interest would be better served by timely, thorough, and fair examination.

[Jim Demers]

What's important about a dumb 102 rejection is that it wastes your first bite at the apple: the Examiner will often come back with the 103 rejections that should have been made in the first place, but now it's a final rejection, and your client is looking at an RCE or appeal, and the associated costs.
The improperly-made-final rejection is a very common tactic - some examiners use it routinely - and you have to be alert to new references and new grounds for rejection. (The latter are automatically deemed "made necessary by applicant's amendments", and that too needs to be promptly argued against.)

[skeptical]

Mr. Demers,

As any choice to amend is solely that of the Applicant, how exactly do you propose to "promptly argue against" a next action Finality?

Genuinely curious.