While everyone knows that a key to arguing against a rejection is to focus on the claim language relative to the prior art, it is easier than one thinks to stray from this principle. In an attempt to get one’s point across to an examiner or PTAB judge, this is often an allure to paraphrase or reword claim features to highlight differences from the cited art.

This allure, however, spells trouble in many situations. Whenever a patent professional finds themselves attracted to altered wording, it is a red flag to stop and re-evaluate. Even large and sophisticated patent applicants fall into this trap as we see in a recent case from Facebook. Appeal 2020-005953, Application 15/054,103.

The application relates to a method for a technique for using messaging bots with a communication system. Claim 1 on appeal is listed below:

1. A computer-implemented method, comprising:
monitoring, at a messaging system, a message queue for messages comprising a bot alias;
determining that a message in the message queue comprises a bot alias, the bot alias corresponding to a name registered with the messaging system for a messaging bot;
submitting the message comprising the bot alias to the messaging bot having a registered name corresponding to the bot alias from the message;
receiving a response from the messaging bot; and
adding the response to the message queue for delivery to a messaging application on a client device.

Facebook’s primary argument was that the “in the present application, [it] is necessary for each message which is intended to be directed to the bot to contain the bot alias.” This was a relatively clear distinction from the cited art, especially when phrased in this way. But the claim was not so clear - claim 1 does not explicitly require that each message contain (or be directed to) the bot alias as Facebook appears to argue. While there was a reasonable argument that the references did not have the actual claim limitations, because the argument paraphrased the claim limitation at issue with some addition that was arguably more narrow, whether or not that narrowing was relevant it provided the PTAB an easy way to brush the argument away.

From the decision:

In this response the Examiner identifies that Appellant’s arguments directed to each of the three points are based upon construing the claim such as reciting that it is necessary for each message intended for the bot to contain the bot alias. The Examiner identifies that the claim is not this narrow, rather the claim recites monitoring a message queue, which the Examiner equates to the conversation thread in Lynch, and determination that a message includes a bot alias (e.g. the trigger phrase “let us ask the brain”).

So, when you find yourself making arguments that do not match the claim language, this can be a warning sign. Maybe the argument is not framing the issues correctly, or maybe it is time to amend the claims to better match the argument.