Common Patent Prosecution Mishap: Failing to Address a 35 U.S.C. 112 Rejection – Florida Patent Lawyer Blog

Written by: Mark Terry

Yesterday’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Lin reveals a common patent prosecution error -especially before the BPAI – failing to properly address a rejection.

The case of Ex Parte Lin involved a photolithography invention. The Examiner rejected the claims under the 1st paragraph of 35 U.S.C. § 112 for failing to comply with the enablement requirement. According to the Examiner, the Specification disclosure would not enable a person with ordinary skill in this art (POSITA) to make or use, without undue experimentation, a “photomask with wavelength-reducing material throughout the full scope of the claimed refractive index range.”

Appellants argued that an artisan could make or use the photomasks because a paragraph of their specification disclosed specific wavelength-reducing materials which are known in the art to have a refractive index larger than 1.

The Board rejected this argumment, stating:

The deficiency of this argument is that it fails to address with any reasonable specificity the issue raised by the Examiner’s rejection. Contrary to Appellants’ belief, the issue under consideration is not whether specific wavelength-reducing materials disclosed in the Specification have a refractive index larger than 1. … Rather, the issue before us is whether the Specification would enable an artisan to make and use, without undue experimentation, a photomask with wavelength-reducing materials throughout the claimed refractive index … See In re Goodman, 11 F.3d 1046, 1050 (Fed. Cir. 1993) (the specification must teach those of skill in the art how to make and how to use the invention as broadly as it is claimed). Appellants’ argument does not address this issue and therefore does not reveal any reversible error in the § 112, 1st paragraph, rejection.

Lessons Learned: The lesson here is that you must address an Examiner’s rejection head-on. Don’t respond to a rejection with a tangential or side-issue. And specifically, when dealing with a § 112, 1st paragraph, rejection, the issue you must confront head-on is the issue of whether the specification teaches POSITA how to make and how to use the invention. Addressing anything else will only serve to draw attention away from the central issue.


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