PTO’s Burden in Rejecting Claims is Met When Applicant Can Understand Basis for Rejection
In re Jung (decided 3/28/11)By: Robert A. Jensen
_____________________________________________________________
What This Means to You
- Citations to portions of prior art references without significant explanation may be sufficient for an anticipation rejection by the US Patent and Trademark Office (PTO).
- Request an interview with the patent examiner to obtain clarification as to the basis of rejections.
_____________________________________________________________
Overview
In its recent decision in In re Jung, the US Court of Appeals for the Federal Circuit (Federal Circuit) clarified the PTO’s burden when rejecting claims for anticipation.
The Federal Circuit declined to expand the showing required for the PTO to sustain an anticipation rejection beyond the statutory notice requirement. Mere citations to the relevant sections of applied prior art, without significant explanation, can be sufficient to put the applicant on notice of the grounds for the rejection.
Case Background
During examination of a patent application directed to control circuitry for a photodetector array, the PTO patent examiner rejected the claims as being anticipated by a prior art reference, pointing to column and line numbers where each element of the claim was disclosed in the applied reference.
The applicant disagreed on the ground that the controller of the prior art was “different” from the controller recited in the claims. However, the applicant did not explain why the recited controller differed from that disclosed in the prior art or point to any claim limitations believed to distinguish over the prior art.
The examiner disagreed and maintained the rejection. The applicant then appealed to the Board of Patent Appeals and Interferences (BPAI) which upheld the examiner’s rejection and refused to import limitations into the claims.
The applicant appealed the BPAI’s decision to the Federal Circuit on the procedural ground that the examiner did not provide sufficient explanation of the rejection. Notably, the applicant did not contest the substance of the rejection.
Decision Analysis
In upholding the decision of the BPAI, the Federal Circuit declined to expand the showing required of patent examiners when making anticipation rejections. The court stated that the PTO carries its procedural burden of establishing a prima facie case of anticipation under the Patent Act by notifying the applicant of the reasons for the rejection, together with such information and references as may be useful in judging the propriety of continuing prosecution.
The court noted that the statute is violated when the rejection is so uninformative that it prevents the applicant from recognizing–and seeking to counter–the grounds for the rejection.
In this case, the Federal Circuit found the examiner’s citation to portions of the prior art reference disclosing the claim limitations were sufficient to put the applicant on notice of the nature of the rejection.
Takeaways
This case demonstrates that the PTO’s burden for explaining the applicability and pertinence of a reference when rejecting claims is met when the examiner identifies the basis for rejection in the prior art.
When prosecuting a patent application, bear in mind that the patent examiner is entitled to take the broadest reasonable interpretation of the claim language. Examiners often rely on references that may, at first glance, appear to be unrelated to the subject matter of a claim, but which may provide a suitable basis for a rejection when the claim is given its broadest reasonable interpretation.
If a rejection appears to be incorrect or unclear, an interview with the examiner could provide insights into the basis for the rejection.
