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Representative Rejections (two minor suggestions) Matthew A. Smith Foley & Lardner LLP at the United States Patent & Trademark Office.

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Presentation on theme: "Representative Rejections (two minor suggestions) Matthew A. Smith Foley & Lardner LLP at the United States Patent & Trademark Office."— Presentation transcript:

1 Representative Rejections (two minor suggestions) Matthew A. Smith Foley & Lardner LLP at the United States Patent & Trademark Office June 1, 2011

2 Representative rejections are a good idea.

3 Two suggestions:

4 “...the examiner may select one or more ‘‘representative’’ rejections from the group of adopted rejections. The examiner’s determination that a rejection is ‘‘representative’’ means that the examiner believes that all rejections within the group of adopted rejections will clearly fall if the representative rejection is not sustained.” Determination of representativeness

5 EXAMPLE Claim 1: A device, comprising: Element 1 Element 2 Element 3 Element 4

6 EXAMPLE Claim 1: A device, comprising: Element 1 Element 2 Element 3 Element 4 Proposed Rejection I: Reference A, 102(b): Clearly taught Arguably taught Depends on claim interpretation

7 EXAMPLE Claim 1: A device, comprising: Element 1 Element 2 Element 3 Element 4 Proposed Rejection 2: B + C Clearly taught Claim interp. inherent + Plausible motivation to combine B and C.

8  In practice, strengths / weaknesses of rejections will rarely line up such that “the group of adopted rejections will clearly fall if the representative rejection is not sustained”  This means that representative rejections could be either rarely used, or often inappropriately used. Determination of representativeness

9  Suggestion: do not define “representative” to imply that a decision on one rejection determines the outcome of the others.  “Representative” could be a procedural label only. In other words, a rejection could called “representative”, if it is the one the Examiner will evaluate in detail. Possibly change the word “representative”? Determination of representativeness

10  Patent Owners in response will point out weaknesses in other rejections.  In inter partes reexam, Requesters will comment on strengths in other rejections.  If rejection maintained: no problem. If withdrawn, Examiner can evaluate parties’ arguments only. Determination of representativeness

11 Second suggestion

12  Under the FR Notice “SNQs that are not persuasively explained to be substantially different from each other will be deemed to constitute a single SNQ from which the examiner will select the best proposed rejections based on the best cited references, as discussed below in Part A.4.” SNQs vs. Representative Rejections

13  This rule is unnecessary, because representative rejections can already be selected.  There is currently disagreement (even within the PTO) about what makes SNQs “different”. It is a difficult question. For example, are the examples above on slides 6 and 7 “substantially different”? SNQs vs. Representative Rejections

14  Selection of particular SNQs (or treatment as the same SNQ?) could affect jurisdiction, not just workload.  See May 3 BPAI decision in 95/001039: Inter partes reexamination 95/ ( BPAI Decision, p. 12). SNQs vs. Representative Rejections

15 Thank you.


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