Writing patent claims

A patent claim is like a jigsaw puzzle piece
A patent claim is like a jigsaw puzzle piece

Writing patent claims is analogous to describing multidimensional jigsaw puzzle pieces using words.  Your claims have to fit in the spaces between prior art.

Patent claims are the most important part of a patent because the claims are legally enforceable.  Claims are also the trickiest part because they have to follow many rules.  Claims should describe your invention, not read on the prior art, and not be obvious variations on prior art. Claims should also be precise enough that others can clearly determine what it is that you are claiming. Claims are also important for determining inventorship, and patent ownership.

Like a jigsaw puzzle:  As a useful analogy, consider each patent claim to be somewhat like a multidimensional jigsaw puzzle piece. Each claim should be written using words and clauses that, in addition to describing your invention, “bend in” to avoid prior art, and “bend out” when there is no prior art.

From the patent examiner’s standpoint, he or she is looking at your claims in the context of the other prior art (the other pieces). The examiner is determining if each of your particular claim “pieces” is fitting nicely into the holes between prior art, or if they are hitting the other prior art “pieces”.  If there is overlap, the examiner will, at a minimum, want you to make your claims “bend in more” to avoid that prior art.  Part of the process of writing patent applications is to try to anticipate where this might happen and to write the patent in a way that gives you more options to “bend in” and “bend out” during the patent examination process.

There is one big difference between jigsaw puzzles and patent claims, however.  In jigsaw puzzles, although the different pieces can’t overlap, the gap between the different pieces can be made very small.  Think of this gap as the area where, given that one piece is “bending in“, it is “obvious” that the other piece must “bend out“.

Unlike jigsaw puzzles, examiners often require that this “gap” be big enough so that the shape of your jigsaw puzzle piece (claim) is not immediately obvious in view of the shape of the neighboring pieces.  In fact, a big part of the patent examination process is negotiating the extent of this gap, and how best to amend the claims accordingly.

Secondary considerations of nonobviousness

Secondary considerations of nonobviousness
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Is your examiner repeatedly insisting that your patent application claims are obvious?  One option: “reboot” your examiner by submitting at least one Rule 132 declaration providing “secondary considerations of nonobviousness.”

Without “obvious” type rejections, we would have a lot of trivial patents. So such rejections are needed, but the problem is that the USPTO usually goes too far. The USPTO determines obviousness by considering if the invention would be evident from the standpoint of an imaginary Person Having Ordinary Skill In The Art (PHOSITA). This test is ultimately just legal guesswork. As previously discussed, such determinations are often unduly influenced by hindsight bias.

35 USC 103 rejections

Does your examiner keep rejecting your patent under 35 USC 103 as being “unpatentable?” These 35 USC 103 rejections are another term for obviousness-type rejections.

Objective indicia of nonobviousness (outside evidence)

If you are getting stuck, you should know that you can also rebut obviousness rejections by submitting “objective indicia of nonobviousness.” (outside evidence). This external evidence can include unexpected results, commercial success, long-unsolved needs, failure of others, professional approval, skepticism of experts, and the like.

Although allowed, the USPTO considers such outside evidence to have a second-class status.  You can even see this in the terminology: “secondary considerations of nonobviousness.”

The patent legal system prefers its imaginary PHOSITA reasoning over actual real-world evidence! Sounds silly, but remember that they are skeptical because applicants are always trying to game the system.

A rare but useful trick

Applicants don’t submit outside evidence very often. Indeed, given the 2007 KSR removal of anti-hindsight rules, the tactic is underused. However, in my opinion, it is a useful “in an emergency, break glass” kind of tool.  You use it when you want to try to break the examiner out of a mental “rut,” or even a mental “infinite loop” of obviousness rejections.

When to submit “outside evidence?”

When to use it?  Obviousness rejections are routine.  It usually takes at least two office actions to see if the examiner is showing signs of having a non-negotiable “I still think it’s obvious” position.  If this seems to be the case, you can submit outside evidence and try to “reboot” the examiner. Your secondary considerations of nonobviousness might break the examiner out of this infinite loop.

USPTO rules on outside evidence

According to the USPTO examination rules, MPEP 716.01(d)   Weighing Objective Evidence… “When an applicant timely submits [outside] evidence traversing a rejection, the examiner must reconsider the patentability of the claimed invention.”

You submit outside evidence as various “Rule 132 declarations.” These Rule 132 declarations should first state the identity and the credentials of an outside declarant. The declarant should ideally be an expert who is not a member of your company and is not a co-inventor. Next, your declaration should then state the relevant outside facts. Finally, the declarant must sign the statement. You should try to find credible individuals for this, and to submit the best evidence available.

Expect the USPTO to be skeptical.

Due to USPTO concerns that the outside evidence is unreliable, this is not a sure tactic.  The rules state that there must be a “clear nexus” between the extrinsic evidence and the invention’s claims. The examiner may rebut by arguing that no such clear nexus exists, proposing alternative explanations, and looking for other ways to discount the declaration.  Still, if you do have good evidence, why not use it?

Obviousness, hindsight, KSR

Obviousness, hindsight, and KSR
Training the human neural network: by Novasdid (CC BY-SA 4.0)

The 2007 KSR v. Teleflex Supreme Court (SCOTUS) decision is why the patent examiner, ignoring hindsight issues, just used your teaching against you to reject your patent application claims as being “unpatentable” (obvious) under 35 USC 103.  Unfortunately, the US patent “obviousness” rules and regulations still have some “bugs.” 

The patent examiner has just reviewed your patent application and has sent you an office action. Why did the examiner write all these “rejected under 35 USC 103 as being unpatentable over (various citations)” statements? It almost looks like the examiner just copied your claim, interspersed it with various citations matching some of the claim words, and concluded with “therefore it would have been obvious to one of ordinary skill in the art…”

This statement might look to you like a standard formula that the USPTO could use to reject almost anything. It is. Why does the USPTO work this way?

Why do obviousness rejections exist?

Some background: Without obviousness rejections, your patent could soon be swamped by many other competitor patents that claim the smallest, most trivial changes to your work. So there needs to be something to prevent this. Obviousness acts like an invisible “force field” that keeps competitors from getting too close to your work. The USPTO attempts to set the depth of this “shielding” or “force field” by trying to determine, often years later, what a person having ordinary skill in the art (PHOSITA) would think was obvious.

The big problem is “hindsight bias”. Lots of non-obvious things look obvious in hindsight. Here the legal system is attempting to cope, with varying success, with a very complex underlying problem of pattern recognition. Once you see the solution to a puzzle, it is hard to see anything else.

Hindsight bias?  Inconceivable!

Before 2007, the USPTO used anti-hindsight rules in an attempt to minimize hindsight problems. However, in the 2007 KSR v. Teleflex case, SCOTUS made what, in my opinion, was a fundamental error. Dictionaries define hindsight (somewhat incompletely) as: “understanding of a situation or event only after it has happened or developed”. SCOTUS tends to turn to the dictionary whenever they don’t understand a subject. Here, they ran this incomplete dictionary definition into the ground. They argued that the earlier anti-hindsight rules were too “rigid”, and that “common sense” should be used. They held that hindsight could be avoided by just considering if the invention would be obvious “at the time of the invention”.

Unfortunately, SCOTUS failed to provide a time machine. What they gave us instead is a meaningless phrase and a legal fiction.

In reality, you have just shown the examiner the solution to a puzzle. You have thus “trained the examiner’s neural net” to view this solution as “obvious.” However, SCOTUS doesn’t understand this. Instead, they have told the examiner that hindsight bias isn’t a real problem.  Thus, your examiner can dismiss your “hindsight” rebuttals by merely stating that under the newer, post-KSR, USPTO rules (MPEP 2141.01 III): “Content of the prior art is determined at the time the invention was made to avoid hindsight.” Really? While you are back in that era, can you invest in some stocks for me?

In other words, thanks to the KSR ruling, the present USPTO rules can be paraphrased as Don’t bother us about “hindsight”, we’re not listening. SCOTUS says that we don’t have to!

Other ways to rebut obviousness rejections

Fortunately, you are not totally out of luck. You have other ways to rebut obviousness rejections. Examiners often misquote the citations and have gaps in their reasoning. Further, the examiner’s proposed combination is often a Frankenstein monster that differs significantly from the claim.  You can also try to defend based on Secondary considerations. So you can do things to defend your claims. However, US patent law does have a “bug” (or feature) here.

Foreign patent traps

foreign patent traps - using your own prior art against you
It’s a trap!

Outside of the US, foreign patent offices will often use your own prior patent filings against you.  Avoid this trap by planning carefully.

Both US and foreign patent laws are based on various legal fictions.  One legal fiction is that an invention is instantly created in a fully formed state.  Another legal fiction is that even if a particular improvement to the invention was not actually obvious to the real inventor, still an examiner or judge may reject this improvement as being obvious to an imaginary “person of ordinary skill in the art”.  Patent law just doesn’t cope with hindsight well.

In practice, we all know that real inventions often come into life slowly, usually after much trial and error.  Complex inventions may take years to fully develop. The inventor is thus faced with a dilemma – file fast so as to be the first person to file, or keep working on the invention, file a better patent application, but possibly lose to someone who filed sooner?

US patent laws recognize this problem and allow an inventor to file as many patent applications as needed, even over a period of years, and gradually accumulate a “stack” of patent applications.  This stack of patent applications captures both the time of earliest invention, as well as a later time-optimized form of the invention. Intuitively this system seems fair.  Wouldn’t it be unfair to use an inventor’s own earlier work against the inventor?

Doesn’t this basic rule of fairness apply everywhere?  Unfortunately, it does not.  The harsh reality is that in international patent filings outside of the US, other countries typically use an inventor’s own earlier patent applications against them.

This assumption of basic fairness often traps inventors and startups.  Here the only way to avoid the trap is to recognize that this problem exists, and take steps to mitigate problems.

As a good rule of thumb for international patents, assume that there is at most a 12-month window after a first (US) patent application has been filed in which to make further improvements. Plan accordingly. If you have thought up improvements to your invention, it is far better to submit these improvements as an updated PCT patent application before the 12 month anniversary of the first patent application.

After 12 months, you can’t claim the priority date of your first US filing. Someone else can jump ahead of you and claim credit.  Even worse, 18 months after filing (when usually your first US patent application will be published) your first US patent application can then be used against your later filed improvement.

It is very irritating to have an international examiner claim that your improved invention is obvious against your own earlier-filed application.  Even more irritating when you know that in reality, the improvement was totally not obvious.  Perhaps the improvement may have taken you a year or more of hard work!  Too bad — to the foreign examiner, your improvement is obvious.

The lesson here is: if you have made improvements, file them as an updated international patent within 12 months of the filing date of your first invention (or in an emergency, at least before your first patent application is published — usually 18 months after first filing).

Cleaning up obsolete case law: time to revisit In re Gorman

re Gorman
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35 USC 103 rejections: Ever have something rejected as “obvious” in view of a combination of 5+ references?  The re Gorman case is how such absurd rejections are rationalized.

Patent examiners must follow the Manual of Patent Examining Procedure (MPEP). According to MPEP 707 section 7.37.07, arguments that the examiner used an excessive number of citations are presently found to be “unpersuasive”.  Section 7.37.07 is based upon an old case In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).  However, Gorman uses reasoning that is now obsolete and unsupported due to patent law developments since 1991.

Some key aspects of the In re Gorman decision were:

When it is necessary to select elements of various teachings in order to form the claimed invention, we ascertain whether there is any suggestion or motivation in the prior art to make the selection made by the applicant. Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.Cir.1985). ” ‘Obviousness can not be established by combining the teachings of the prior art to produce the claimed invention, absent some teaching, suggestion or incentive supporting the combination.’ ” In re Bond, 910 F.2d 831, 834, 15 USPQ2d 1566, 1568 (Fed.Cir.1990) (quoting Carella v. Starlight Archery and Pro Line Co., 804 F.2d 135, 140, 231 USPQ 644, 647 (Fed.Cir.1986)).

The extent to which such suggestion must be explicit in, or may be fairly inferred from, the references, is decided on the facts of each case, in light of the prior art and its relationship to the applicant’s invention. As in all determinations under 35 U.S.C. Sec. 103, the decisionmaker must bring judgment to bear. It is impermissible, however, simply to engage in a hindsight reconstruction of the claimed invention, using the applicant’s structure as a template and selecting elements from references to fill the gaps. Interconnect Planning, 774 F.2d at 1143, 227 USPQ at 551. The references themselves must provide some teaching whereby the applicant’s combination would have been obvious

However, since 2007 KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, the “teaching, suggestion or incentiverequirement for combining citations is no longer required (although still allowed).  When this part of the 1991 Gorman court’s reasoning, shown in the first paragraph above, is removed, it becomes clear that the legal and logical underpinning of their 1991 decision no longer applies!

Yet they persist… Under present rules, MPEP 707 section 7.37.07, based upon the now obsolete 1991 Gorman legal reasoning, still acts as a roadblock for any applicant who attempts to argue that the examiner did:  “engage in a hindsight reconstruction of the claimed invention, using the applicant’s structure as a template and selecting elements from references to fill the gaps.”

At present, there is no upper limit to the number of citations that an examiner can apply, and indeed I personally have seen combinations of eight citations used in obviousness rejections. Some 35 USC 103 rejections look more like ransom notes, where the examiner parses the applicant’s claim into various sentence fragments, and then computer-matches these with corresponding sentence fragments from other citations.

Note to USPTO:  At present, MPEP 2145 cites In re Gorman as justification for combining 13 prior art references in a 35 USC 103 (obvious) rejection! Indeed, MPEP 2145 teaches no upper limit. Under the present post-KSR rules, where hindsight is not viewed as being a problem, an examiner could, in theory, write a pure “ransom note” type rejection. Just use the applicant’s claims and assign each claim word to a different reference.