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The three successful steps to successful patenting

[Step no. 2]

BY JOEL I. ROSENBLATT

Last month started a three part series: The Three Steps to Successful Patenting. Step No. 1 asked the basic question: What will the patent office accept as valid subject matter? Before an examiner will search the patent database to determine if the claimed invention is novel (Step No. 2), the invention must fit within the four statutory definitions of invention.

The four accepted inventions include: a new and useful process, machine, manufacture, composition of matter, or any new or useful improvement of these items. The analysis can be complex when computers or computer functions are involved, especially where a business system is developed that can only be run as a computer process. While last month’s column provides some limited insight, those with an interest in the unexpurgated U.S. Patent Office version of what is eligible subject matter, may like to read the content: http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/guidelines101_20051026.pdf.

Before we get into Step No. 2, there is a basic legal concept intrinsic to our constitutionally mandated legal process. It’s known as substantive competent evidence and requires record facts and common sense logic connecting the facts to a logical conclusion. It is a quality required by our due process of law clause and mandated in every civil, criminal, and administrative action. It appears in legislative process under the name of “rational,” meaning there must be facts, and common sense reasoning supporting the law. It’s the “common sense” part that creates the confusion. Common sense is a generally accepted logical process, as in “scientifically predictable and repeatedly proven facts,” taking us back to the administrative action known as the Patent Office action.

The Patent Office action is the examiner’s report of the patentability of the claimed invention. It comes after the examiner decides the claimed invention is eligible subject matter under the patent law (see two paragraphs up). If the examiner believes otherwise, the Patent Office action will include a rejection on the ground of ineligibility. However, examiners are trained to be thorough and give the inventor a full explan-ation. Therefore, the examiner will cull through the patent database to find a patent, or pending published application, or any publication, each more than one year old, that describes each and every element of the claimed invention.

Although this point is technical, it must be understood as a prerequisite to understanding Step No. 2. Step No. 2 must be understood before Step No. 3. This is where we return to our constitutional process of judicial review. The constitutional process of judicial review is nothing more than the examiner, in a Patent Office action, applying the same standard of competent substantive evidence, as the Board of Appeals or a court would apply when reviewing the Patent Office action.

As a matter of statutory direction, this means any Patent Office action rejecting the claimed invention must not be arbitrary, capricious, abusive of discretion, or otherwise not acting in accordance with law. Therefore, the examiner’s decision must be supported by the standard of substantial evidence.

To meet that standard, the examiner’s decision must describe and explain the facts used in the decision, and those facts must be within the four corners of the record. Then the explanation must connect those “record facts,” to the conclusion by the logic of generally accepted reasoning. The examiner is not permitted to use so called “common knowledge.” Common knowledge brings us back to the arbitrary, capricious, or a breach of discretion (meaning, in turn, a conclusion not supported by competent substantive evidence as shown by record facts).

Anyone can throw in a fact based on common knowledge, but it takes competent substantive evidence to show that alleged “common knowledge” is a fact and not one person’s assumption, conclusion or opinion of what is right or should be right, or what is the majority belief, held to be true, or accepted as true. Without prompting, we all can come up with one or two previously held beliefs that are now in history’s collective garbage.
That brings us up to the examiner, who in the rush to meet his or her patent office examination reporting goals, may occasionally resort to “common knowledge”as fact support for rejecting the invention. With this as prologue, we should be able to competently address Step No. 2, known as the test for novelty. The patent law states that no patent may be granted if the invention was in public use, on sale, or disclosed in a printed publication more than a year before the date of the application and therefore is not novel. That includes published applications and patents, with a filing date meeting the one year requirement.

The critical words are “the invention” meaning the invention must have been disclosed, element by element, within the four corners of a single prior art publication or in the single system, device or process, used or on sale. There can be no equivocation and prior art publications, or devices, systems and processes, may not be combined to make up for missing pieces from any on of these items. (That is Step No. 3 for next month.) The lesson here is if the examiner cannot match your attorneys’recitation of each claim element with a part taken exclusively from within the four corners of a single prior art reference item, the rejection won’t stand and you remain in the running for a patent.

That is not to say the examiner doesn’t have one or two tricks left. One is “inherency,” a common law doctrine typically seized upon by examiners to squeeze one more application disposal into his activity report. Properly understood, inherency means extrinsic evidence of the missing descriptive matter, meeting the recited claim element is present in the device or method, described in the prior art reference, and that its presence would be recognized by persons of ordinary skill. This is the one exception to the four corners doctrine because it permits the examiner to explain by facts extrinsic to single prior art reference, why the allegedly inherent characteristic necessarily flows from the teachings of the single piece of applied prior art.

However, the examiner is not off the hook because inherency requires the examiner provide a basis in fact, and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the prior art. Having been at the receiving end of “inherency rejections,” I know it makes for an interesting discussion with the examiner and the Board of Appeals.

Another approach which may be fairly taken by the examiner is to apply to the recited claim elements, the broadest reasonable meaning of the words in their ordinary usage. This means the examiner may interpret the claim language, as would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicant's specification. However, the broadest reasonable interpretation of the claims must also be consistent with the interpretation that those skilled in the art would reach.

For example, take a true to life example (at the risk of offending), claim language reciting “restoring hair growth,” was interpreted by the examiner as producing any quantity of growth and not necessarily a full head of hair as disclosed in the patent. The applicant’s argument of the description of the invention directed to a full head of hair should prevail, did not, and invention was rejected.

The lesson is Step No. 2 may be easier to overcome than Step No. 1, especially where the examiner is up against a reporting deadline and a little careless in applying the prior art. That means the examiner is likely to rely on the doctrine of obviousness; that’s Step No. 3 and next month’s subject.

Meanwhile, I’m still searching for that hair restoring patent; not for myself of course, but for an extremely close friend.

Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the e commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Certified Approved Mediator for Computer Law Disputes, and is admitted to the Northern, Middle, and Southern, U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: (321) 821-1922 or by email to jirosenblatt@earthlink.net. Past articles may be viewed at http://www.joelirosenblatt.com

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