California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Advice for Drafting Patent Applications in the Wake of Recent Changes in U.S. Law William Rowland and Weiwei Stiltner Buchanan Ingersoll & Rooney PC

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: After KSR, the Standards Continue to be Tightened USPTO Board of Appeals AFFIRMED, AT LEAST IN PART 48.7%55.8%69% REVERSED OR REMANDED 45.5%40.4%28.2%

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: October 10, 2007 PTO Guidelines Must read for any practitioner handling US prosecution Identified seven “Rationales” supporting a legal conclusion of obviousness Each “Rationales” includes specific examples based on case law

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: What attributes should a well-written patent application have? –Describe the invention so one of ordinary skill can understand it –Disclose the best mode –Provide support for subsequent amendment of claims –Claims narrow enough to avoid prior art –Claims broad enough to hamper design around The “well-written” patent application 4

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: –Claims clear enough to provide notice –Factually accurate –Suitable vehicle for foreign filing –Tell a story The “well-written” patent application 5

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Initial Preparation It is important to have a good understanding of the most relevant prior art Don’t want to amend the claims if not necessary 6

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Reason not to amend claims case law now emphasizes the negative impact that narrowing amendments have on the scope of a claim –(Festo) 7

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Background – Description of Related Art The background enables the Examiner to quickly focus on the importance of the invention Discuss prior art objectively Discuss problems, shortcomings or improvements needed in the prior art carefully Balance reluctance to prematurely characterize the invention against need for advocacy Can be omitted 8

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Potential Problems with the “Related Art” Section If the specification indicates that the prior art devices have a certain drawback, and if an accused device similarly has that drawback, a court may find that the accused device does not infringe the patent 9

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Summary/Objects Section Acceptable to omit “Objects” entirely Avoid defining an object that might be narrower in scope than the invention Use "objects," "purposes," "features" and "advantages“ carefully The summary should be a mere recitation of the independent claims of the application, almost verbatim 10

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Brief Description Of The Drawings Describe as illustrations of embodiments Do not say that the drawings illustrate the “invention” 11

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Description Of The Preferred Embodiments Best Mode Requirement –Must disclose the best mode contemplated by the inventor of carrying out the invention 12

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Description Of The Preferred Embodiments Describe new functionality associated with the invention - describe what the invention accomplishes that the prior art does not accomplish. Describe how combination of two or more elements achieves new functionality or new synergy. 13

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Description Of The Preferred Embodiments Avoid claims that simply list elements or features of invention. Draft claims so that features/elements of invention are related to one another – makes it more difficult for Examiner to argue that improvement is merely predictable use of prior art elements according to their established functions. 14

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Description Of The Preferred Embodiments Avoid "The present invention is…” refer to the embodiments of the invention as the preferred embodiments, and not as the invention itself 15

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Absolute Terms Be careful about using absolute terms, such as “must”, “critical”, “essential”, “important” to describe features of the invention or other adjectives that might be interpreted as suggesting an element must be part of the invention Courts may construe the claims so as to require such features for infringement, even if the features are not included in the claims 16

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Features Not Present In The Invention If the specification makes clear that an invention does not include a particular feature, all devices or methods having that feature may be deemed outside the claims, even though the language of the claims might be broad enough to encompass products or methods with the feature in question 17

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Disclosed But Unclaimed Subject Matter Be Careful! Recommended to disclose all readily known equivalents in the specification of an application But, the doctrine of equivalents cannot be utilized to reach disclosed, but unclaimed subject matter 18

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: The Use of Functional Language to Define an Element Can create problems if not backed up with solid information/data Functional language alone often does not persuade the Examiner 19

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Support for the Claims Ensure that the specification provides clear support for the claims The supporting portions of the specification should be clear and free from ambiguity 20

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Claims Provide claims of varying scope Preference should be for structural recitations over functional recitations in device claims A claim should be carefully reviewed to ensure that it does not include any limitations that are not necessary to define the invention and distinguish it from the known prior art 21

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Be Clear Make sure your claim element is drafted the way you intended The mere use of the terms “means” or “step” does not automatically invoke 35 U.S.C. § 112, paragraph six The absence of the terms “means” or “step” does not automatically avoid 35 U.S.C. § 112, paragraph six 22

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Be Diverse Consider use of parallel sets of claims –one of which is drafted using means (or step) plus function language –the other uses structural language Or –one of which is in method format –the other of which is in device or apparatus format 23

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Responding to §103 Rejections Under KSR, Examiners must still provide sufficient rationale to support conclusion that it would have been obvious to combine references. “[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR at 14.

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Responding to §103 Rejections Argue that interdependencies between claim elements are not disclosed in prior art.

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Responding to §103 Rejections Argue that prior art teaches away from combination/modification. Argue that claimed combination achieves unpredictable results – claimed combination achieves results exceeding or different from those that would have been predicted.

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Responding to §103 Rejections Use of Declarations to demonstrate: –“Unexpected Results” –“Failure of Proposed Combination” –“Secondary Considerations”

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Evaluating Subject Matter Eligibility for Process Claims In re Bilski has declared that the test for determining whether a process qualifies as eligible subject matter is to determine: whether "(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." ("Machine-or-Transformation Test").

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Beauregard Claims In Cybersource Corp. v. Retail Decisions Inc., 620 F.Supp.2d 1068 (N.D.Cal. 2009), the claim at issue was directed to a “computer readable medium” containing program instructions, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out certain recited method steps.

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Beauregard Claims In Cybersource Corp. v. Retail Decisions Inc., 620 F.Supp.2d 1068 (N.D.Cal. 2009), the claim at issue was directed to a “computer readable medium” containing program instructions, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out certain recited method steps.

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Conclusion Things in a U.S. patent are not always as they may appear to be A claim may be treated as a "means plus function" claim even though it does not use the term "means", or vice versa Language in the specification may be used to limit a claim even though such a specific limitation may not be found in the claim 31

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Conclusion A term in a claim may be given a narrower or different interpretation than would normally be associated with that term A term in a claim may be prohibited from covering an equivalent element under the Doctrine of Equivalents, even if the element is truly equivalent 32

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Conclusion Recite physical structure at least in one central element of a claim, if appropriate In a system or an apparatus claim that describes a program that implements a method, recite specific hardware components that performs elements of the method 33

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Conclusion If a claim describes transformation of data that represents a physical object, recite the physical object in the claim 34

California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Thank You 35