1. msmith@foley.com1 Representative Rejections (two minor suggestions) Matthew A. Smith Foley & Lardner LLP at the United States Patent & Trademark Office June 1, 2011

2. msmith@foley.com2 Representative rejections are a good idea.

3. msmith@foley.com3 Two suggestions:

4. msmith@foley.com4 “...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. msmith@foley.com5 EXAMPLE Claim 1: A device, comprising: Element 1 Element 2 Element 3 Element 4

6. msmith@foley.com6 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. msmith@foley.com7 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. msmith@foley.com8  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. msmith@foley.com9  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. msmith@foley.com10  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 If withdrawn, Examiner can evaluate parties’ arguments only.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. msmith@foley.com11 Second suggestion

12. msmith@foley.com12  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. msmith@foley.com13  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. msmith@foley.com14  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 95/001039 (2011-05-03 BPAI Decision, p. 12). SNQs vs. Representative Rejections

15. msmith@foley.com15 Thank you.