January 2013 Patent Prosecution Group Luncheon

1. Prosecution Group Luncheon
January 2013

2. PTO Requesting Comments on “Quality”
• “[F]urthering the Office’s dialog with the public
about ways to enhance patent quality”
• Identification of “potential practice changes
that applicants can employ to augment the
quality of issued patents,” inviting comment
• Two particular headings
– Clarifying the Scope of Claims
– Clarifying Meaning of Claim Terms in
Specification

3. PTO Requesting Comments on “Quality”
• Clarifying Scope of Claims
– Standardized claim template
– Identify support for limitations (chart, template)
– Note if examples are limiting or illustrative
– Expressly identify MPF elements, structures/acts
– Particular notation systems for computer-
implemented subject matter
• Clarifying Meaning of Claim Terms
– Give scope/technical meaning of terms of degree
– Include a glossary of terms
– Designating default dictionary(s) for ascertaining
meaning

4. Technical Amendments to AIA (Jan. 14, 2013)
• Technical changes re: program for covered business
method patents and joinder of parties
• Accelerates bar on using failure to obtain the advice
of counsel to prove willfulness/inducement
• Inter partes review available for first-to-invent patents
ineligible for post-grant review
• Revises filing deadline for inter partes review
• Extends time for filing inventor’s declaration/recorded
assignment to issue fee payment date
• Modifies requirements and time periods for activities
relating to patent term adjustments
• Modifies requirements for petitions for derivation
proceedings, delineates criteria applied to deem
application as “earlier” with respect to an invention

5. Written Description—Design Patent Edition
In re Owens (Fed. Cir. 2013) (decision pending)
• D531,515 issued for mouthwash bottle in 2006
• CON filed, drawings amended with ghost-lines for most
of design (solid lines remained for portion of surface)
• PTO rejected CON per written description requirement
– Not apparent from original specification that inventor in
possession of invention as now claimed
– Applicant: area claimed was in the original application
– PTO: nothing in original application indicates that portion
now claimed could itself be a design
• Rule: one can amend by "ghosting" solid lines and vice-
versa, but cannot partition areas or define new portions

6. Written Description—Design Patent Edition
D531,515
Continuation

7. Fighting Obviousness Decisions
• In re Chevalier (Fed. Cir. 2013) (nonprecedential)
• FC affirms obviousness, rejects position that combination inoperable
• Familiar refrain: issue not whether “references could be physically
combined but whether the claimed inventions are rendered obvious
by the teachings of the prior art as a whole"
• If each element known, obviousness requires finding that the
combination of known elements was obvious to POSA
• Each element in Ref. A, relationship among parts taught by Ref. B
• POSA motivated to modify because "would facilitate a more rapid
and more complete conversion from axial flow to radial flow"
• Applicant did not challenge that finding, admitted that relevant parts
of references are "recognized equivalents performing the same
function of converting axial flow to radial flow"