Gerald M. Murphy, Jr., Esq.
Eugene T. Perez, Esq.
Birch, Stewart, Kolasch & Birch, LLP
February 11, 2010
OVERVIEW OF LECTURE
6 “partial case studies”
Illustrate how certain issues play out
Provide reexamination numbers for sample
cases as a resource in preparing papers
For each case, will provide:
Description of various actions taken
ISSUES ILLUSTRATED IN CASE
Substantial new question of patentability
Extensions of time
Page and word limits and other formalities
Responding to the first Office Action
Responding to ACP
Responding to RAN
Filing a RCR
Timing and substance of petitions
REEXAM CONTROL NO. 95/000,103
MOBILE VIDEO SYSTEM
CASE 1 - OVERVIEW
August 1, 2005 - Case filed
September 29, 2005 - SNQP raised, but no rejection
issued. ACP issued
February 17, 2006 - RAN issued confirming
June 25, 2009 – Board decision confirming
December 22, 2009 – Certificate issued confirming
patentability of all claims (unamended)
CASE 1 – SNQP v. REJECTION
The PTO issued an ACP as a first Office
Action indicating that claims are allowable.
Examiner declined to issue rejection:
No explanation how to combine the elements
No motivation to combine references in the
Some prior art teaches away
TPR Appealed – Argued that rejection should
have been issued. Board affirmed with full
CASE 1 –
Standard for making a rejection is higher than
standard for establishing SNQP.
Do not simply rely on a claims chart in the
request for inter partes reexamination.
Give detailed reasons for a KSR rationale
REEXAM CONTROL NO. 95/001,001
METHOD FOR TRANSMITTING DATA IN
CASE 2 - OVERVIEW
August 8, 2007 - Case filed
Original request did not set forth substantial
new question of patentability. Filing date not
September 7, 2007 – Corrected Request
January 5, 2010 – Awaiting docketing to
Board of Appeals
CASE 2 – ALLEGED SNQP
Original request was hundreds of pages
long. Exemplary “issues” include:
Claim 36 of the „902 patent is obvious
under 35 U.S.C. 103(a) over „901 in view
of „685 and „792 or „078;
Claim 68 of the „902 patent is obvious
under 35 U.S.C. 103(a) over „910 in view
of „792 or „078 or „685 or „411 or „516 and
Lucent (7 references)
CASE 2 – NOTICE OF FAILURE TO
COMPLY (8-22-07, 2 weeks after filing)
An “explanation for each permutation is not provided”
Request asserts 39 SNQPs and 33 obviousness
rejections without a corresponding detailed explanation.
Claim chart provides an exemplary job of explaining
each reference separately
Request fails to explain how each reference is combined
with each reference for every claim
Request must explain, for each patent claim, how each
document in the combination is applied
CASE 2 – REPLACEMENT
Replacement request was 1339 pages long
(not including Exhibits)
Eleven SNQP were alleged
PTO granted the request and combined TPR
issues into 7 issues
All claims were rejected
CASE 2 – ESTABLISHING
SNQP FOR OBVIOUSNESS
Summarize prosecution history – to demonstrate that
the SNQP is in fact “substantial” (important to
Examiner when deciding whether to allow) and “new”.
Provide at least one valid reason for combining the
Explain why the claims would have been obvious over
the proposed combination.
Provide appropriate motivation.
CASE 2 – SUGGESTIONS FOR
Carefully explain the SNQP
Do the Examiner‟s job for him/her
Do not expect the Examiner to look at the art and
independently create a proposed rejection
No page limit for the Request, so put in the request
everything you think the Examiner might want at any
time during the proceeding. Only chance to avoid
page limitation rules.
Good Table of Contents is desirable so Examiner
can easily find information to support a rejection
REEXAM CONTROL NO. 95/000,153
CASE 3 - OVERVIEW
July 17, 2006 - Case filed
Multiple petitions filed during prosecution
Prosecution reopened after first ACP and
RAN, and after appeal briefs were filed
December 10, 2009 – non-final action mailed
PO response due ?
FIRST OFFICE ACTION
Pharmaceutical composition claims - ten
grounds of rejection – 102/103
Preamble of claim 1 amended. Narrower
dependent claims added. New claim set
Five 132 Declarations and one 131
TPR response filed – criticized Declarations,
ACP ISSUED (09-05-07)
4 of 10 Grounds of Rejection dropped
14 of 19 new Grounds of Rejection adopted,
at least in part.
All claims remained rejected
CASE 3 – EXTENSION OF TIME TO
RESPOND TO ACP (9-19-07)
Legal and technical personnel associated
with PO and Licensee conducted the first of
several teleconferences discussing ACP.
In view of complexity, in-person meeting
scheduled to maximize access to technical
expertise and information.
PO and Licensee are considering the
necessity of conducting additional testing that
would likely take at least two months.
CASE 3 – DECISION ON EXT.
OF TIME (9-28-07)
Petition explains “sufficient cause” for extension.
PO has set forth facts that establish reasonably
diligent behavior by all those responsible for
preparing a response.
When balanced against the “special dispatch”
requirement, PO‟s showing is adequate to justify a
PO should expect that future requests will not be
granted absent strong and compelling reasons.
RESPONSE TO ACP (12-05-07)
More claim amendments and evidence filed.
Petition for withdrawal of premature ACP filed
concurrently with Amendment.
Petition Dismissed (06-20-08)
PTO action was appropriate
PTO action responsive to PO filing
But, amendment and evidence entered.
PO should expect to receive RAN
RAN ISSUED (07-17-08)
All claims remained rejected.
One new ground of rejections was stated in
RAN that was not present in ACP
CASE 3 – THREE TYPES OF
PETITIONS FILED (9-5-08)
37 C.F.R. § 1.181 (e.g., to reopen
prosecution because ACP is premature)
37 C.F.R. § 1.182 (e.g., RCR to reopen
37 C.F.R. § 1.183 (e.g., waive rules regarding
Basically, applicant wanted to submit even
CASE 3 – 183 PETITION RE
EXT. OF TIME (9-5-08)
PO requested suspension of time for filing
Appellant Brief until other petitions regarding
(1) reopening prosecution under Rule 181
and (2) RCR under Rule 182 are decided.
Need a 183 petition because date for filing
Appellant Brief is non-extendable according
to the rules.
Also, PO needs 4 more months to conduct
further tests to show unexpected results.
CASE 3 – 181 PETITON TO
REOPEN PROSECUTION (9-5-08)
Basis for Petition: new rejection appears in
RAN that was not present before, including
Before ACP, PO added new claims
Ground #22 in ACP did not reject all of the
Ground #22 in RAN did reject all of the new
CASE 3 – 182 PETITION FOR RCR
3 new Declarations filed with petition.
PO is conducting additional experiments to
address issues first raised in RAN.
Examiner made new criticisms of previous
tests discussed in 3 declarations.
New tests have already begun in light of new
comments by Examiner – but only 1 month of
results obtained to date.
CASE 3 – DECISION ON 183
Instead of 2 month due date, PO gets 3
months to file Appellant Brief.
If TPR filed a NOCA, also get 3 months to file
CASE 3 – RENEWED PETITION
FOR RCR (12-3-08)
Renewed petition filed because additional
tests now complete.
3 more Declarations attached to petition.
CASE 3 – APPEAL BRIEF
PO filed brief on Dec. 4, 2008, because
decisions on none of the three petitions had
So, are petitions moot?
CASE 3 – DECISION ON 181
Petition Granted to reopen – a new ground of
rejection was made in the RAN with respect
to at least one claim (claim 56)
Even if omission of rejection of claim 56 in
the ACP was inadvertent, there still was a
new ground of rejection.
No discussion of additional tests that need to
CASE 3 – REQ. TO CONSIDER
RENEWED PET. (12-19-08)
Paper filed that asks for
Consideration of previously filed renewed
CASE 3 – DECISION ON 182
PETITION FOR RCR (12-31-08)
Petition Dismissed as moot since Rule 181
Petition to reopen prosecution was granted.
Evidence attached to Rule 182 petition will be
considered in next Office Action
CASE 3 – CURRENT STATUS
Non-Final Office Action issued on December
10, 2009 – one year after petition was
Evidence from Rule 182 Petitions was
considered by Examiner
Case now pending 5 years with only a non-
final Office Action
File extension of time requests as soon as
PTO action is issued.
File Petitions diligently and with any evidence
in your possession that you want entered and
an explanation as to when additional
evidence will be available.
File 181, 182 and 183 petitions concurrently
and keep proceeding as if they will be
granted – but keep all dates docketed.
REEXAM CONTROL NO. 95/000,138
PURIFYING PROCESS FOR
CASE 4 - OVERVIEW
March 28, 2006 - Case filed
January 26, 2007 – ACP
Multiple petitions filed for entry of amendment
Petitions all denied
Oral Hearing set for April 2010
CASE 4 – DEFECTIVE
May 22, 2006 – First Office Action
July 24, 2006 – Patent Owner filed 6 page
amendment and 98 pages of remarks
Can you contact PTO and advise about too
August 11, 2006 – PTO issued Notice of
Defective response (too many pages) with a
15 day period for response
HOW TO RESPOND TO
Possibly file a petition asking for extra pages
because other side had extra pages
File a compliant response
Point out defect in other parties paper
Ask that if other party is required to file a
corrected response, they should not be able
to add any new arguments or evidence (since
they have benefit of reading your response
CASE 4 - AMENDMENTS
AFTER ACP (3-26-07)
In response to ACP, claim 1 narrowed and
other amendments made
Cancelled “4 claims” and added “4 new
Argued that previously submitted data
showed unexpected results that were
commensurate in scope with claims
CASE 4 – RAN ISSUED
Amendment is not entered
Does not merely cancel claims, remove issues for
appeal, adopt an Examiner‟s suggestion, or
Does not only require a cursory review to determine
if entry is proper
New limitation fails to set a demarcation from the
Does not distinguish from prior art since references
can still be applied in the same manner
CASE 4 – IMPROPER
AMENDMENTS AFTER ACP
Amendment has cancelled “4 claims” and
added “4 claims.”
However, multiple dependencies increased
claim count by 3.
Accordingly, additional claims are added
without cancelling a corresponding number of
finally rejected claims.
CASE 4 - RESPONSE TO RAN
Petitions due 2 months after RAN (1-29-08)
Briefs filed (3/27-7/2/08)
181 Petition to reopen filed (7-28-08)
181 Petition dismissed & returned (8-3-09)
CASE 4 - 182 PETITION
182 petition for RCR (12-9-09)
(1) simplify issues
(2) improper closing of prosecution
182 petition dismissed (12-16-09)
Very late (18+ months late)
(1) amend would not advance prosecution
(2) previous decision on 181 petition rejected this
argument, which is proper argument for a 181
CASE 4 – LESSONS LEARNED
Should introduce all possible claim
amendments, new claims, evidence and
arguments in response to first Office Action.
Do not count on entry of any amendments
after ACP except very simple clerical
amendments. Don‟t get tricky.
Always file petitions after ACP and/or RAN in
case amendments not entered.
REEXAM CONTROL NO. 95/000,043
BUSINESS METHOD FOR ON-LINE GOODS
CASE 5 - OVERVIEW
May 26, 2004 - Case filed
Two ACPs and two RANs issued
6 petitions filed, not counting standard
petitions for extension of time (3 filed)
January 2010 - Oral Hearing not yet
CASE 5 - RULE 181-183
PETITIONS - FACTS
March 8, 2007 – Second ACP Mailed
May 7, 2007 – Amendment filed which added
new claim 22 which contained phrase
“managing … goods or services solely
provided by the first business entity…”. No
claim was cancelled.
February 11, 2008 – Second RAN was
issued refusing entry of Amendment.
CASE 5 – RULE 181 PETITION
Asked to (1) withdraw ACP mailed March 8,
2007, (2) reopen prosecution and (3) enter
PO Amendment and comments filed May 7,
Argued that claims 22 is allowable so it
should be entered.
CASE 5 - RULE 182 PETITION
September 13, 2006 – First 182 Petition for RCR
granted “for consideration of (1) the Amendment
After ACP received June 10, 2005 and (2) the
Comments of the Third Party…No further
comments … will be granted … absent a showing
of extraordinary circumstances”.
February 11, 2008 - Second RAN issued.
Petition asked for granting of RCR.
CASE 5 - RULE 183 PETITION
Requested waiver of time for filing appeal
brief until after decision on 181 and 182
Apparently never decided, but briefs have
CASE 5 – DECISION ON RULE
181 PETITION (7-21-08)
Second RAN was not premature.
No good and sufficient reasons as to why
the amendment is necessary and was not
New limitation in claim 22 not previously
considered by Examiner.
CASE 5 – DECISION ON RULE
182 PETITION (7-21-08)
Petition dismissed – referencing reasons
relating to 181 Petition (discussed above)
Also noted that briefs of parties have already
been filed. (183 petition for waiving date for
filing briefs is moot)
No extraordinary circumstances
CASE 5 – SUA SPONTE PTO
WAIVER OF RULES (12-14-09)
May 2008 – Jan. 2009 - Appeal Brief,
Respondent‟s Brief and Rebuttal Briefs all
exceeded page limits.
Examiner‟s Answer was issued and page
limit violations were not noted.
PTO sua sponte waived the page limit
requirements because of “special dispatch”
Appeal Docketed – January 5, 2010
CASE 5 - LESSONS
Do not expect granting of request for second
RCR or second reopening of prosecution.
If parties fail to comply with formalities, and
other side has already filed response before
mistake is noticed, PTO will overlook formal
REEXAM CONTROL NO. 95/000,020
(merged with Ex parte 90/006,495)
ELECTRONIC MAIL SYSTEM
CASE 6 - OVERVIEW
May 29, 2003 - Case filed
One ACP and one RAN
About 12+ petitions filed
Inter partes and Ex parte merged
June 29, 2009 – decision in related CA
Nov. 10, 2009 – Board Decision
Dec. 10, 2009 – PO requested rehearing
CASE 6 – 183 PETITION RE PAGE
AND WORD LIMITATIONS
Two different petitions (2-23-07 & 3-9-07) filed to
suspend the page and word count limitation for
an Appeal Brief.
Needed to fully and completely addresses each
of the allegations and rejections presented in the
ACP and RAN.
CASE 6 – PTO DECISION ON
PTO Decision (3-9-07) grants TPR 60 pages
or 28,000 words.
PTO Decision (5-23-07) grants PO 141
pages or 51,225 words.
Parties should get at least many pages as
Examiner or other party?
CASE 6 – ORIGINAL PETITION
RE FOIA DOCS
TPR asked to enter FOIA documents into record
PTO dismissed, returned, invited to refile “the
material directed to substantive patentability issues
separately in accordance with 37 CFR 1.3 [decorum
and courtesy] and 1.4(c) [separate paper]” (09-13-
Material commingled with “allegations of misconduct
and bias on the part of Office personnel”
Request for reconsideration not filed.
CASE 6 – REFILED PETITION
PO again asked to enter Declaration of
Forensic Documents Examiner that questions
authenticity of FOIA documents
Alleged not earlier available
RAN issued after original request for
reconsideration date passed. Special
dispatch requirements override.
CASE 6 – 181-183 PETITION
Similar to earlier petition
Filed too late (over 1 month late)
RAN issued after original request for reconsideration
Would further delay proceeding possibly requiring a
new RAN. Special dispatch requirements override.
Probative value questionable
CASE 6 - LESSONS
If you do not know what to do, file a petition
File your petitions and requests for
reconsideration of petitions on time.
Filing of petitions may set up case for future
appeal or district court litigation.
As TPR, put as many arguments and
evidence in request as possible
As PO, treat first Office Action like you will
not get another chance to amend claims or
Consider petitions at every stage of
proceeding if rules are not in your favor
Read the rules again, and again…. at every
stage of proceeding.
Gerald M. Murphy, Jr., Esq.
Eugene T. Perez, Esq.