Strategies for Arguing Against 101 Rejections of Software-Based Method Claims in Light of In Re Bilski

© 2009 Michael A. Leonard II


On October 30, 2008, the Court of Appeals for the Federal Circuit (CAFC) decided In re Bilski, which pertains to the eligibility of method claims as statutory subject matter under 35 U.S.C. § 101.  This case significantly modified the standard for evaluating subject matter eligibility with respect to method claims.  In this decision, the CAFC held that a “claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus or (2) it transforms a particular article into a different state or thing.  See Benson, 409 U.S. at 70 (‘Transformation and reduction of an article ‘to a different state or thing’ is the clue to patentability of a process claim that does not include particular machines’)” (see Slip op. at 10 and 11 (Fed. Cir. 2008)).  In other words, Applicants have two options with respect to writing statutory method claims: (1) either recite in the claims that the steps thereof are performed by a specific machine or apparatus; or (2) argue that a transformation takes place in the method.

Tying method claims to a specific machine or apparatus may unduly limit the claim scope, depending on what is claimed.  For instance, if Applicants choose to tie the claims to a “computer” or a “processor,” certain otherwise-infringing devices may be deemed not to fall under the scope of the claims.  For instance, with respect to a computer, a PC and a laptop are likely to qualify, but what about PDAs, cell phones, tablet devices and other electronic devices that are becoming increasingly capable of carrying out the functions typically associated with a computer?  With respect to a “processor”, such a feature may run the risk of characterization as the general CPU of the device.  If certain features are carried out by a subcontroller or some other non-CPU device that performs logical operations, a Court may potentially deem such features not to be performed by a “processor.”  While new applications may be written to include such devices in the scope of a computer, a processor, or whatever structure is chosen (after all, an Applicant can be his or her own lexicographer), existing applications do not share this luxury.

Further, In re Bilski has left the determination as to whether tying features of a method claim to a “general purpose computer” is sufficient to tie the claim to a particular machine or apparatus for a future decision.  As Judge Newman noted in her dissent in In re Bilski, “[w]e aren’t told when, or if, software instructions implemented on a general purpose computer are deemed ‘tied’ to a ‘particular machine,’ for if Alappat’s guidance that software converts a general purpose computer into a special purpose machine remains applicable, there is no need for the present ruling” (see Judge Newman’s dissent in the Slip op. at 35 (Fed. Cir. 2008)).  With such potential limitations to claim scope and the specter of a potential decision disqualifying a general purpose computer as a sufficient machine or apparatus in the future, it may be preferable to argue that software-based method claims qualify as statutory subject matter under the second prong of the In re Bilski test − namely, that the features recited in software-based method claims transform an article.

The “Transformation” Prong

With respect to the transformation of prong (2), In re Bilski elaborated on the requirements for meeting the second prong of the Benson test.  First, the transformation “must be central to the purpose of the claimed process” (see Slip op. at 10 and 11 (Fed. Cir. 2008)).  The CAFC held this means that the transformation in question must “impose meaningful limits on the claim’s scope” and not “be insignificant extra-solution activity” (Id.).  Generally, the active verb at the beginning of a step in a method claim, such as “prioritizing”, “allocating”, “fetching”, “storing”, “receiving”, or the like, will limit the claim and be important for the claimed invention (otherwise, such limitations should probably not be included in the claim).  Thus, the operations of such active verbs should be deemed to be substantially central features to their respective claims and do not constitute extra-solution activity as they are arguably at the heart of the claimed subject matter.

Second, the CAFC held that the transformation only qualifies as patent-eligible subject matter if it transforms a certain type of “article.”  “[T]he main aspect of the transformation test that requires clarification here is what sorts of things constitute ‘articles’ such that their transformation is sufficient to impart patent-eligibility under § 101” (Id. at 24 and 25).  The majority in the In re Bilski decision stated that “[t]he raw materials of many information-age processes, however, are electronic signals and electronically manipulated data” and that “[s]o long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle” (see Id. at 25 and 26).  However, claiming a “visual depiction” of data representing physical objects is not within the scope of many software inventions.

It appears that the CAFC is primarily concerned about Applicants claiming all practical uses of a scientific principle.  “Diehr can be understood to suggest that whether a claim is drawn only to a fundamental principle is essentially an inquiry into the scope of that exclusion; i.e., whether the effect of allowing the claim would be to allow the patentee to pre-empt substantially all uses of that fundamental principle.  If so, the claim is not drawn to patent-eligible subject matter” (Id. at 8 and 9).  In the decision, the CAFC appears to take the position that all software methods are directed to algorithms.  However, this is not the case, as claims may include features such as which data is to be stored, i.e. the content of a packet header or the like.  Clearly, a data structure is not an algorithm.  However, rather than embarking down the slippery slope of arguing whether the data in software claims conforms with the aforementioned requirements, it may be more effective to argue that a physical device is transformed − namely, memory.

Transforming Memory

Because software inherently requires some form of storage in order to be executed by a device (otherwise, said software exists in the abstract only and is not patent-eligible subject matter), such as RAM, cache memory, hard disk, tape drive, optical drive, etc., a practitioner can argue that the method steps cause memory to undergo a physical transformation without creating prosecution history estoppel that would be useful to an adverse party.  Thus, arguing something similar to the following in Responses traversing an In re Bilski-based rejection under 35 U.S.C. § 101 may be helpful.

In the context of a network system such as that described in some embodiments in the present specification, Applicants submit that a person of ordinary skill in the art would readily appreciate that practicable embodiments of the claimed invention would be conducted with the aid of a computing machine, such as a server.  Such computing machines are commonly understood to have memory.  Further, the operations recited in the claims clearly change the state of the underlying data since the cache, register, or other memory on which the data is stored must be transformed to have a different magnetic polarity, electrical charge, or the like depending on the technology that is used.  These are real physical changes.  Further, memory is a real physical article.  As such, Applicants submit that the method claims perform a transformation under the “machine or transformation” test and thus qualify as patent-eligible subject matter.

It will likely be difficult for an Examiner to find any legal evidence in support of an argument that state changes in memory do not qualify as physical transformations, and the majority in In re Bilski did not take such a position.  An alternative interpretation is unreasonable since a transformation of memory is necessary for machine-executable code to be executed by a device.


In sum, it is inherent that practical applications of software-based inventions physically transform some type of memory.  Accordingly, Applicants may choose to argue that their software-based method claims comply with the transformation prong when presented with a 35 U.S.C. § 101 rejection referring to In re Bilski.  Dissenting judges alleged flaws in the majority’s reasoning in In re Bilski, and Judge Newman’s dissent is very well-reasoned, logical and persuasive.  We note that the United States Supreme Court may decide to hear the case and eventually modify or overturn the CAFC’s decision.  Nonetheless, In re Bilski establishes new law with respect to method claims that will have to be addressed in many cases, at least for the foreseeable future.

Top Corporate Patent Winners for 2008 Announced

© 2009 Christopher Paul Mitchell (Chris)

According to this press release by IFI Patent Intelligence, IBM continued in 2008 as the top corporate assignee of granted patents. The top five corporate assignees were:

1. 4,186 – International Business Machines Corp.
2. 3,515 – Samsung Electronics Co. Ltd. (KR)
3. 2,114 – Cannon K K (JP)
4. 2,030 – Microsoft Corp.
5. 1,776 – Intel Corp.

Top Corporate Patent Winners for 2007 Announced

© 2008 Christopher Paul Mitchell (Chris)

According to this press release by IFI Patent Intelligence, IBM continued in 2007 as the top corporate assignee of granted patents. The top five corporate assignees were:

  1. 3,148 – International Business Machines Corp.
  2. 2,725 – Samsung Electronics Co. Ltd. (KR)
  3. 1,987 – Cannon K K (JP)
  4. 1,941 – Matsushita Electric Industrial Co. Ltd. (JP)
  5. 1,865 – Intel Corp.

Comments On And Practical Suggestions For Improved After Final Practice

© 2007 Michael E. Kondoudis,

This post concerns “after final practice,” that is, practice after a final Office Action has been issued in an application. A brief survey of some basics of after final practice follows, along with some suggestions, sample paragraphs, and practice tips for after final practice.

Prosecution After Final Rejection is Restricted

The most significant aspect of after final practice is that it is restricted. Once a final Office Action has issued, an Applicant is no longer entitled to further unrestricted prosecution on the merits, as a matter of right. This is the result of the Office’s policy of compact prosecution, which is discussed here.

The restricted nature of after final practice has some not insignificant ramifications. For example, the amendments in an Amendment After Final are actually proposed changes to that application, except in limited circumstances. And, entry of those proposed changes is generally at the Examiner’s discretion, with direction from Patent Office regulations and guidance from the Manual of Patent Examining Procedure (MPEP).

The Regulations and the MPEP

The regulations and the MPEP establish a conceptual hierarchy for the entry of after final responses. Section 714.13 of the MPEP, entitled “Amendments and Other Replies After Final Rejection or Action,” provides that

[e]xcept where an amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner, compliance with the requirement of a showing under 37 CFR §1.116(b)(3) is expected in all amendments after final rejection.

And, 37 CFR §1.116(b)(3) requires a showing of “good and sufficient reasons” why the amendment after final rejection is (1) necessary and (2) was not earlier presented. In this regard, the MPEP instructs that a “refusal to enter the proposed amendment should not be arbitrary” and that it should be given “sufficient consideration to determine whether the claims are in condition for allowance and/or whether the issues on appeal are simplified.” MPEP 714.13(II).

Part (b) of 37 CFR §1.116, entitled “Amendments and affidavits or other evidence after final action and prior to appeal” provides that

(b) After a final rejection or other final action … in an application … :

(1) An amendment may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action;

(2) An amendment presenting rejected claims in better form for consideration on appeal may be admitted; or

(3) An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.

Unfortunately, neither the MPEP nor 37 CFR 1.116 provide any examples, standards, or other guidance as to what constitutes “good and sufficient reasons.” And, this is a significant standard. Indeed, the Patent Office’s own electronic filing system (EFS-Web) tutorial wholly ignores the possibility of the existence of “good and sufficient reasons,” advising that an Amendment After Final “will not be entered if it requires an additional search or more than a cursory review.”

Additionally, section 714.13 (II) of the MPEP instructs Examiners to advise an Applicant when: (1) certain portions of the amendment would be acceptable as placing some of the claims in better form for appeal or complying with objections or requirements as to form, if a separate paper were filed containing only such amendments; and/or (2) proposed amendment(s) to some of the claims would render them allowable.

The After Final Hierarchy

The foregoing regulations and MPEP guidance establishes the following hierarchy:

1. Responses After Final that cancel claims or amend an application to address a formal requirement made earlier (e.g., adopting Examiner suggestions) are entered as a matter of right. No showing of “good and sufficient reasons” is required.

2. Responses After Final that require only a cursory review by the Examiner (e.g ., removing issues for appeal or presenting rejected claims in better form for appeal) may entered at the non-arbitrary discretion of Examiner with or without a showing of “good and sufficient reasons.”

3. Responses After Final that “touch on the merits” or otherwise do not require “only a cursory review by the Examiner” (e.g., necessitating further search) may be entered at discretion of Examiner with a showing of “good and sufficient reasons.”

In view of this hierarchy, it would appear to be a better practice to prepare after final responses that appeal to the discretion of the Examiner, when they are not to be entered as a matter of right. Such responses would ideally reflect the restricted nature of after final practice, satisfy the requirements of the relevant rules, and reflect the MPEP’s guidance, so as to maximize the likelihood of entry.


The following are examples of suggested modifications tailored for after final practice, including some examples of paragraphs to consider including in after final responses to maximize the likelihood of their entry.

1. Acknowledge The Restricted Nature Of After Final Practice And Ask The Examiner To Exercise His/Her Discretion To Enter Your Response

One way to accomplish this might be to begin an after final response with a paragraph like the following:

In response to the final Office Action mailed April 5, 2007, and having a period for response set to expire on July 5, 2007, Applicant respectfully requests that the Examiner amend the present application in the manner set forth in this Amendment.

Or alternatively,

In response to the final Office Action mailed April 5, 2007, and having a period for response set to expire on July 5, 2007, Applicant respectfully requests that the Examiner favorably consider the following remarks.

2. Determine Where A Reply After Final Rejection Should Be Categorized In The Hierarchy And Expressly Explain Why The Reply Should Be Entered

For example, an Amendment After Final that addresses formal matters raised by an Examiner should be entered as a matter of right. So, an appropriate explanation might be:

Applicant submits that this Amendment After Final Rejection only addresses formal matters raised a previous Office Action. Accordingly, Applicant is entitled to entry of this Amendment as a matter of right under 37 C.F.R. §1.116 (b)(1).

When an Amendment arguably places the application in better form for appeal, an appropriate explanation might be:

Applicant submits that this Amendment After Final Rejection at least places this application in better form for appeal. Applicant respectfully submits that this Amendment should only require a cursory review because the claim amendments presented herein do not add any new features and/or do not significantly alter the scope of the claims. Consequently, the claim amendments should not require any further search by the Examiner. This Amendment is necessary as it clarifies and/or narrows the issues for consideration by the Board and was not earlier presented because Applicant believed that the prior response(s) placed this application in condition for allowance, for at least the reasons set forth in those response(s). Accordingly, entry of the present Amendment, as an earnest attempt to advance prosecution and/or to reduce the number of issues, is requested under 37 C.F.R. §1.116.

When an Amendment touches on the merits, an appropriate explanation might be:

Applicant submits that this Amendment After Final Rejection places this application in condition for allowance by amending claims in manners that are believed to render all pending claims allowable over the cited art and/or at least place this application in better form for appeal. This Amendment is necessary because … and was not earlier presented because Applicant believed that the prior response(s) placed this application in condition for allowance, for at least the reasons discussed in those responses. Accordingly, entry of the present Amendment, as an earnest attempt to advance prosecution and/or to reduce the number of issues, is requested under 37 C.F.R. §1.116.

Of course, this type of paragraph should be modified to articulate the particular “good and sufficient” reason(s) specific to a particular application.

3. Include An Express Request For The Specific Notice That MPEP §714.13 Instructs Examiners To Provide An Applicant

For example

In the event that the Office declines to enter the present Amendment, and (i) any portion of the present Amendment would place some of the claims in better form for appeal if a separate paper were filed containing only such amendments or (ii) any proposed amendment to any claim would render that claim allowable, Applicant respectfully requests that the Office inform Applicant of the same pursuant to MPEP §714.13.

4. File After Final Responses Electronically

Filing electronically avoids the delay between the time documents are received by the Patent Office and the time they are converted and placed into the image file wrapper (IFW). And, since time can be of the essence in after final practice, knowing a document has been received and is in the IFW can be a great benefit. For example, if the after final reply is filed within 2 months of the date of the final Office Action, the shortened statutory period for response will expire either 3 months from the mailing date of the final rejection or on the date the advisory action is mailed, whichever is later. Still further, there are also patent term extension advantages to filing electronically, as I discussed here.

5. When Filing By Mail Or By Hand, Take Advantage Of The U.S. Patent Office’s Expedited Procedure For After Final Responses

The Patent Office has an expedited processing procedure for processing paper responses after final rejection under 37 CFR 1.116. To take advantage of the expedited procedure, after final responses under 37 CFR 1.116 need to be marked as a “Reply under 37 CFR 1.116 – Expedited Procedure – Technology Center (XXXX)” on the upper right portion of the paper. Also, if the response is filed by mail, the envelope must be marked “Mail Stop AF” in the lower left hand corner. The markings preferably should be written in a bright color with a felt point marker. If the reply is hand-carried to the Customer Window, the outside of the envelope should be marked “Reply Under 37 CFR 1.116 – Expedited Procedure – Technology Center (XXXX).” See MPEP 714.13(V).

Three Final Comments

1. If you are not filing electronically through the Patent Office’s EFS-Web, I suggest that you consider starting to. The system is surprisingly simple and easy to use.

2. Under Patent Office rules, every Amendment must include markings showing the changes relative to the last entered amendment. So, in Amendments After Final (or Amendments filed with a request for continued examination (RCE)), it is important to take care not to include markings that indicate changes relative to any unentered amendment. Doing so should result in a Notice Of Non-Compliant Amendment. Never assume that an after final amendment has entered because they are not entered as a matter of right.

3. In view of the U.S. Patent Office’s new rules changing continuation practice, it appears that getting the most out of every response, before and after final, is going to be more important than ever

Practical Take Aways Regarding “Associated” Applications in View of McKesson

© 2007 Christopher Paul Mitchell (Chris) and Michael Kondoudis (

In McKesson Information Solutions, Inc., v. Bridge Medical, Inc., No. 06-1517 (Fed. Cir. 2007), the Federal Circuit affirmed a dismissal of an infringement suit after finding that the patent in suit was unenforceable due to inequitable conduct. In doing so, the Federal Circuit reaffirmed that a patent may be rendered unenforceable for inequitable conduct if an applicant, with intent to mislead or deceive the examiner, fails to disclose material information or submits materially false information during prosecution.

At issue in McKesson was whether the failure to cite information from one of two similar applications in the other during their pendency constituted inequitable conduct. The information at issue included: a prior-art patent; office actions; and the allowance of the first case.

The McKesson decision is a fact intensive one that does not necessarily break new legal ground. Nonetheless, the decision is significant; not for its general guidance about determining whether a decision to withhold information constitutes inequitable conduct, but for its illustration of the complexities that may arise in the context of “associated” applications, that is, unrelated applications directed to similar technology.

The following are some practice suggestions to promote compliance with the duty of candor in both the narrow context of a particular application and in the broader context of associated applications.

Suggestions For Patent Practitioners

1. Read the McKesson Decision and Rule 56; Understand the Duty of Candor and the Affirmative Defense of Inequitable Conduct

37 CFR 1.56 (“Rule 56”) imposes a duty of candor and good faith in dealing with the United States Patent and Trademark Office (USPTO). This duty generally requires, during the pendency of an application, that each individual associated with the filing and prosecution of that application disclose to the USPTO all known information that is “material to patentability.”

“Inequitable conduct” is an affirmative defense to patent infringement that requires: (1) an affirmative misrepresentation of material fact, a failure to disclose material information, a submission of false information, and/or an attempt to “bury” material information; and (2) an intent to deceive. Materiality may be judged by the “reasonable examiner” standard. An intent to deceive is necessary; an intent to withhold material information is not sufficient. And, the burden of establishing inequitable conduct requires that the asserting party prove a threshold level of materiality and intent by clear and convincing evidence.

2. Educate Clients About the Duty of Candor and Periodically Remind Clients of the Duty

 Consider notifying your clients about the “duty of candor” at least at the time of filing and perhaps at other specified stages of prosecution. Whether this notice is via a separate letter or a portion of a reporting letter, it would appear prudent to consider including:

a. a copy of Rule 56 along with a plain English explanation of the rule;

b. examples of potentially material information and possible sources of such information such as co-pending applications directed to similar subject matter, related applications, communications from foreign patent offices regarding associated applications, abstracts, offers for sale, brochures, litigation, and instances of public use; and

c. a reminder that the duty continues until issuance.

3. Establish and Implement a Procedure to Identify “Associated” Applications and to Ensure That “Associated” Applications are “Cross-Pollinated”

A prerequisite to complying with the duty of candor in the context of “associated” applications is to identify these applications. One way to increase the likelihood that applications directed to similar subject matter will be identified is to have a formal policy in place that effects a centralized “association review” of applications, sets a threshold or articulates criteria to evaluate just how similar in subject matter applications must be to render them “associated,” and specifies a procedure to follow when “associated” applications are identified. Some specific components to consider including in this procedure may include:

a. immediately notifying the client of the apparent association of applications so that the client may take internal steps to facilitate compliance with the duty of candor (see number 2 below).

b. drafting memoranda for each of the “associated” applications that identifies the associations. In paperless offices, the memo can be titled “MEMO OF ASSOCIATION” so that it is noticeable when one looks at a file directory. With physical files, a paper memorandum identifying the associations may suffice. Alternatively, on physical files, it may be prudent to consider writing an indicia such as “APPLICATION ASSOCIATED WITH FILE NUMBER XXXX.XXXX” on the cover of the file itself.

c. citing “associated” applications and the information of record therein to the USPTO as early as possible in prosecution.

d. when appropriate, “cross-pollinating” the “associated” applications. Once “associated” applications are identified, information from each application may need to be made of record in each of the other “associated” applications. And, after this initial cross-pollination is completed, it may more easily maintained if a record is made of what has been cited in/from “associated” applications and when.

e. Adding appropriate indicia to your docketing system. Some docketing systems, such as the Intellectual Property Case Tracking System by FlexTrac Systems, Inc., include a related cases tracking feature that may be suitable for tracking “associated” applications.

These steps may be implemented in any number of ways. For example, when two applications are determined to be associated, they may be clearly marked as such on their file covers. Concurrently, the docketing system could be updated to indicate the association. Then a standard letter may be sent to the client explaining the reasons for categorizing the applications as “associated,” the significance of this determination, and how the applications will be prosecuted by the attorney. Next, an information disclosure statement (IDS) could be filed in each “associated” application identifying the other as a co-pending application. In conjunction with the preparation of these IDSs, the information in each “associated” application could be reviewed to determine whether it would be appropriate to make that information of record in the other “associated” application. Thereafter, every time an Office Action is received in one of the “associated” applications, the other “associated” application may be reviewed to determine whether an IDS is appropriate in that application.

Suggestions For Clients

1. Review Advice from Your Attorney about the Duty of Candor and Follow that Advice

(see number 1 above) Make sure that you fully understand the duty of candor. If you are not sure, ask your attorney.

2. Implement Procedures for Ensuring That “Associated” Applications are Appropriately “Cross-Pollinated”

(see number 3 above). This is of particular importance when corresponding foreign applications are being concurrently prosecuted. Information from such corresponding applications may need to be cited in a corresponding U.S. application and those applications that have been determined to be “associated.” In these situations, the necessity of client input is self-evident.

3. Work with your Outside Counsel to Ensure the Duty of Candor is Met

a. Consider directing applications relating to similar technologies to the same office. Along these same lines, consider specifically requesting that applications directed to similar subject matter be handled by the same attorney or team.

b. Consider specifically advising your outside counsel when applications may be sufficiently similar as to warrant an “association review.” (see number 3 above).

c. Never avoid advising your attorney about potentially unfavorable art simply because it may be unfavorable.


The McKesson decision emphasizes the importance of compliance with the duty of candor in the context of unrelated applications directed to similar subject matter. By implementing a thoughtful procedure including components like those outlined above, compliance may be promoted in the broader context of unrelated applications directed to similar subject matter.

On a final note, the authors recognize that treating unrelated applications directed to similar subject matter as “associated” may entail some potential complications in litigation. And, these complexities should certainly be considered when setting the threshold or articulating evaluation criteria used to determine whether applications are sufficiently similar so as to be treated as “associated.” Nonetheless, by carefully and selectively categorizing applications as “associated,” these potential complications, which are the cost of complying with the duty of candor, can be minimized.

Practical Prosecution Advice After KSR

© 2007 Michael Kondoudis ( and Christopher Paul Mitchell (Chris)

KSR In A Nutshell

The Supreme Court’s decision in KSR Int’l. Co. v. Teleflex, Inc., et al., 550 U.S.___(2007) modified an established test for obviousness under 35 U.S.C. §103. Prior to KSR, Federal Circuit jurisprudence generally required a teaching, suggestion, or motivation to support a combination or modification of cited art (the TSM test) in an obviousness determination. After KSR, the TSM test is still insightful, but because it is too rigid, a broader, more flexible standard is proper. KSR did not alter the fundamental principles of obviousness.

In KSR, the Supreme Court identifies four specific Federal Circuit errors in applying the TSM test. Extrapolating from these errors, KSR provides the following guidance:

1. In searching for a reason to combine/modify elements of cited art, it is permissible for an Examiner to look not only to the problem to be solved by the inventor, but also at any known problem or need for the combination/modification.

2. One of ordinary skill in the art may be led by art other than that which solves the problem at hand.

3. A claim can be obvious merely because the combination/modification was obvious to try.

4. Common sense, whether guided by hindsight or not, properly plays a role in an obviousness analysis. KSR mentions common sense five times.

The Analytical Framework After KSR

KSR leaves a lot of open questions the answers to which are not immediately clear. That being said, the following observations appear most noteworthy:

1. There has been a further shift, however slight, against patentability. In practice, KSR makes it easier for an Examiner to make obviousness rejections by replacing the “rigid” TSM test with a more expansive, flexible standard.

2. Graham v. John Deere still controls. KSR emphasizes that “the [Graham] factors continue to define the inquiry that controls. If a court, or a patent Examiner, conducts this analysis and concludes the claimed subject matter was obvious, the claim is invalid under §103.” (KSR Opinion at p. 2).

3. An Examiner must establish “an apparent reason to combine … known elements.” (KSR Opinion at page 4).

4. An Examiner must expressly articulate the underlying analysis supporting a proffered “apparent reason.”

Patent Prosecution After KSR

After KSR, it would appear that a strategic shift in emphasis in responding to rejections under 35 U.S.C. §103 may be prudent. When appropriate, at least the following strategies for challenging the sufficiency and/or propriety of an asserted combination may be more promising, depending on the unique circumstances of a case.

Strategy #1 – Focus on the Interdependency of Features in a Claim

KSR expressly instructs that it remains legally insufficient to conclude that a claim is obvious just because each feature of a claim can be independently shown in the cited art. (KSR Opinion at p. 14). Thus, establishing that a claimed combination is not a “predictable use of prior art elements according to their established functions” (KSR Opinion at p. 13) may be particularly effective in traversing an obviousness rejection.

Strategy #2 – Emphasize Teachings Away

KSR discussed in some detail United States v. Adams, 383 U.S. 39 (1966), stating in part that in that case, “[t]he Court relied upon the corollary principle that when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.” (KSR Opinion at p. 12). Accordingly, if such teachings are present and are significant, there may be no reason to make the asserted combination/modification.

Strategy #3 – Ensure that an Office Action Provides a Sufficient Rationale for an Asserted Combination

KSR requires that an Examiner provide “some articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” (KSR Opinion at p. 14). Remember, an Examiner must “identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does,” (KSR Opinion at p. 15). And, the Examiner must make “explicit” this rationale of “the apparent reason to combine the known elements in the fashion claimed,” including a detailed explanation of “the effects of demands known to the design community or present in the marketplace” and “the background knowledge possessed by a person having ordinary skill in the art.” (KSR Opinion at p. 14). Anything less than such an explicit analysis may not be sufficient to support a prima facie case of obviousness.

Strategy #4 – Focus/Present Unexpected Results or Commercial Success

These secondary considerations under Graham v. Deere remain relevant. Accordingly, presenting evidence of unexpected results or commercial success remains a possible strategy for rebutting an obviousness rejection.


KSR did not change the fundamental principles of obvious under U.S. Patent Law. Instead, KSR increased the challenge an applicant faces to obtain allowance. This increased challenge, however, can be met by including non-obviousness arguments that were either emphasized by or unaffected by KSR instead of arguments: (1) based on a failure to meet the TSM test; (2) that the examiner is relying on an “obvious to try” rationale; and/or (3) that cited art is too far afield because it is not directed to the problem at hand.

Strategies to Minimize Prosecution Time and Increase Patent Term – Part 2

© 2007 Michael Kondoudis,

This is the second of a two part series on maximizing patent value by minimizing prosecution time before the U.S. Patent Office. As in Part I, several strategies to minimize the prosecution time of an application to achieve the earliest possible issue date are presented.

File a Nonprovisional Application Instead of a Provisional Application Whenever Possible

Provisional applications are NEVER examined; only nonprovisional applications are examined. And a utility application that claims the benefit of a provisional filing date is examined according to its own actual filing date, not the provisional filing date. As a result, the period from a provisional application filing date until the filing of a corresponding nonprovisional application delays the start of examination. Only the filing of a nonprovisional application places the application into line for examination.

This is not to say that provisional applications should always be avoided. To the contrary, provisional application can be both useful and necessary because a provisional filing date closes off later prior art from being cited against the application, and may be necessitated by business considerations (i.e., the ability to say “patent pending”), or to avoid a bar to patentability under 35 U.S.C. § 102. Thus, when considerations that outweigh speedy examination are present, a provisional application should be considered. Nonetheless, when possible, it is generally best to avoid filing a provisional application. And, when a provisional application is filed, it is generally best to start the conversion process as soon as possible.

Prosecute Applications Efficiently

Responding to all Office Actions as early as possible (hopefully within the typical three month response deadline set by most Office Actions) tends to speed up patent prosecution. To be sure, responding early to an Office Action yields a benefit measurable in days. This benefit, however, is amplified by routinely responding early to Office Actions. Indeed, routinely responding sooner than required can have a significant cumulative effect, especially when one considers those applications that cause several Office Actions to be generated.

Maintaining efficient communication with the examiner by interview also tends to speed up patent prosecution. Interviews help applicants better understand how an examiner is interpreting cited art, the basis for rejections, and how an examiner will respond to potential claim amendments, often without many of the estopple effects of paper prosecution. In these ways, interviews may greatly advance prosecution by at the very least making responses to Office Actions more effective.

Filing responses by Express Mail or Facsimile can also reduce prosecution time. Even though responses filed by first class mail are considered to have been filed on the day they are deposited in the mail, they must still be delivered to the PTO before they can be processed and may be lost. In contrast, papers filed electronically or by facsimile are virtually immediately received. In sum, filing electronically or by facsimile is safer and faster.

Take Advantage of Formal Examiner Amendments

MPEP § 1302.04 specifically limits changes to an image file wrapper (IFW) application to either: (1) a formal examiner’s amendment; or (2) an amendment made by the applicant. Also, this section authorizes the use of a formal examiner’s amendment to informalities in the body of the written portions of the specification as well as all errors and omissions in the claims. When faced with a the necessity for modest formal changes, a formal examiner amendment can avoid at least the time the PTO will take to process a response, even if that response is filed electronically.