When presented with a restriction between groups, one factor to consider in making an election is how to maximize arguments for an eventual petition, if needed.  When electing between groups where the scope of one group is within another group, it can be advantageous to elect the group that includes all of the elements (and more) of the other group.

An appeal can often result in re-opening prosecution, where the USPTO effectively admits the rejections were insufficient. Sometimes, even when the Examiner files an Answer to the appeal brief, certain rejections are withdrawn. Data from each art unit was sampled and the Answers tagged for any withdrawn grounds of rejection.

Examiners often dislike negative claim limitations. Adding a negative limitation without strict support in the specification can therefore be difficult. Further, it can be difficult to convince an Examiner that a prior art references fails to show a certain negative claim element. In a recent PTAB case, the Board confirmed that negative limitations must be considered and that anticipation cannot be achieved by combining disparate embodiments of a single reference. 

USPTO examiners often like to cite an applicant's previous applications against later filed applications. However, this also means that it is possible to access the inventors of the prior application and have them refute, through a declaration, misinterpretations of their disclosure. In some ways, there can be no better evidence of whether a prior art reference shows or suggests certain features than a statement by the inventors of that application. Such evidence can be particularly valuable on appeal, where PTAB judges seem to greatly enjoy knocking down technical arguments of counsel by noting that they are mere attorney argument unsupported by any evidence of record.

With the recent Supreme Court case of Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), many predicted a significant impact on prosecution before the USPTO, where Examiners would require applicants to further amend claims by pointing out potential clarity issues. In a recent PTAB case, the Board made clear that simply alleging a lack of clearness, without a proper explanation, is not proper.

When an Examiner twice or finally rejects an application, the applicant has the right to appeal to the Patent Trial and Appeal Board (PTAB).  This enables the applicant to have a panel of three administrative law judges (ALJs) review the rejection to determine if it is proper.  Unfortunately, the USPTO effectively denies such review in many appeals by reopening prosecution.

While much has been said recently regarding Section 101 following Supreme Court cases like Alice, there is another type of Section 101 rejection sometimes used by Examiners when the invention is said to lack utility. 

Inventions must be non-obvious to qualify for patent protection. While there are many ways to argue obviousness, savvy attorneys like to find a way to use "teaching away" by the prior art. However, a recent case from the PTAB illustrates that a teaching away with respect to features not relevant to the proposed combination are ineffective to overcome an obviousness rejection. 

Restriction requirements (or election of species) can significantly limit an Applicant's ability for subsequent amendments. The limitations on amendments can severely limit and Applicant's ability to distinguish prior art. Therefore, Applicants should be wary of restrictions that may have significant negative consequences for successful prosecution and develop a strategy for responding early in prosecution.

The Patent Trial and Appeal Board (PTAB) of the USPTO announced a new program focused on enabling small businesses to have their appeals expedited.  While this program may be useful in particular situations where speed is essential, there are some notable pitfalls for the unwary.  

As part of the requirement to limit patent applications to a single invention, the US Patent and Trademark Office sometimes issues restriction requirements citing differences among figures in an application.  One drafting tactic to minimize the ability for Examiner to make figure-based restrictions with regards to different aspects of a claimed method, is to utilize a linking flowchart, as well as nesting flowcharts (like sub-routines when coding).  

When the Supreme Court decided Alice, the USPTO took the matter to such an extent that it re-reviewed all allowed cases at that point that had not yet issued, and withdrew many applications. I reviewed many of the cases on the list to see how various Applicants were faring now, almost a year later. 

The doctrine of "Analogous Art" places an additional requirement on prior art that it be either from the same field of endeavor, or reasonably pertinent to the problem solved by the invention. While examiners often assert that a prior art reference is still relevant even when it fails to solve the particular problem solved by the inventors, if the prior art is not from the same field of endeavor binding precedent expressly confirms that it is not available.  

37 C.F.R. 1.2 confirms that business with the US Patent and Trademark Office is to be transacted in writing.  Sometimes, however, the Office of Petitions has direct discussions with Examiners, excluding the Applicant. 

In order to have a better understanding of how the USPTO decides petitions against restriction requirements, it is helpful to review a large number of such decisions.  However, there is no easy way to find or compile such decisions, other than going through serial numbers one by on on PAIR.  Therefore, I filed a FOIA request (LINK) requesting a listing of the relevant serial numbers. 

Obvious-type double patenting is a judicially created doctrine combating two potential evils - extension of patent term and division of ownership of the same invention.  While filing a Terminal Disclaimer is often an easy solution, some start-ups may be surprised when this option is not available to them.  

One area that is a constant headache for clients is restriction requirements from the USPTO. Clients often have a hard time and feel that they are being put through the ringer by an overly-bloated bureaucracy.  On the other side, Examiners often have limited time to examine disparate claim sets in a single application.  In any event, restrictions are very common, and due to the complexity of the rules many Applicants simply give in rather than spend the time and energy to argue.  

The discussion of Exemption 7(A) is continued in the context of FOIA denials by the USPTO, particularly with regard to whether the USPTO can prove that there would be harm in releasing publically available information about Examiners actions.