Examiner statement that "specific cited sections of reference are not limiting"

[khazzah]

I'm dealing with an Examiner who cites specific sections of the reference, but also insists he won't be pinned down to these sections. Wondering if you guys have any thoughts on how to handle this, or think I should ignore and focus on what he did cite to.

Here's what I mean. First OA, in the body of the rejection, he maps particular claim elements to specific col/lines. (Great!) Then I explain why those sections don't teach the claim element. In the next OA, he maintains the rejection -- the body of the rejection remains untouched from last time -- but this time the Response to Arguments section starts with the following text:

Applicants' arguments have been fully considered but they are not persuasive. The Office refers applicants to MPEP 2123 where the MPEP states the entire reference is cited and specific cited sections of the reference are not limiting in any way. Any citation to specific, pages, columns, lines, or figures in the prior art references and any interpretation of the references should not be considered to be limiting in any way.

Followed by a page of boilerplate: case law "reference is relevant for all it contains", statement of BRI, MPEP section on Implicit Disclosure.

Now, I do understand the relevant case law and it's import. In fact, if I thought the reference "as a whole" really did disclose my claim, I'd amend.

But I also know that if appeal, I'll argue error in his rejection, and will discuss the weaknesses in the Examiner's specific contentions.

So ... do I just ignore his boilerplate during prosecution? Is there any point in quoting back CFR 1.104 ("the particular part relied on must be designated as nearly as practicable") and/or other parts of the MPEP favorable to me?

Maybe call to discuss what what he's trying to tell me with this boilerplate?

And hey, have any of you Examiners out there seen this practice?

This kinda reminds me of another common occurrence ... Examiner alleges Ref 1 teaches X and Ref 2 teaches Y, and I say No it doesn't, and he cites In re Keller "(the combination teaches") but then goes on to repeat the same verbatim contention about individual references. At which point my knee-jerk reaction is to explain that the reason I addressed the teachings of the individual references is that he in fact relied on teachings of the individual references.

[JimIvey]

The examiner is still required to show that the claimed invention is taught in the references, right?  As I understand the MPEP citation, the examiner is free to rely on other parts of the same reference even if the specific citations discussed don't teach the claimed element.  But, doesn't the examiner still have to identify the teachings of the element in those other parts?

The only way that "not limiting" language makes sense is if an applicant relies on a specific teaching of a reference that is contrary to another teaching in the same reference.  For example, an applicant relies on a specific teaching of a reference that A+B+C excludes D but another part of the reference teaches that A+B+C can include D.

In essence, what you're left with is a rejection in view of a reference without any guidance as to which parts of the reference teach your claim elements.  The closest thing I've experienced was an OA that said all claims were anticipated by a single reference but didn't discuss any claim elements at all.  Just a one-sentence rejection.  If I recall correctly, the examiner wasn't interested in elaborating by phone.  Be prepared for that, by the way.  I find that blow-off rejections often mean that the examiner isn't ready to talk to you. 

I did my best to guess the examiner's reasoning and responded to it, complaining a bit that it was really hard to respond without knowing why the examiner believed the reference taught all claim limitation.  In the fOA, I got back a snip about not having to cite specific sections of a reference if its applicability is clear from just reading the reference.  And, I got a new rejection on new art, suggesting the applicability wasn't all that clear.

Back in the day, I used to write "Applicant finds no teaching or suggestion in Ref. X for ...."  And, to say that honestly, I had to read the whole reference pretty carefully.  You might have to do that.  Now, out of laziness, I just write "the Examiner has cited no teaching or suggestion in Ref. X for ..." to avoid having to read the references in their entirety.

Good luck!

[smgsmc]

I'm dealing with an Examiner who cites specific sections of the reference, but also insists he won't be pinned down to these sections. Wondering if you guys have any thoughts on how to handle this, or think I should ignore and focus on what he did cite to.

Here's what I mean. First OA, in the body of the rejection, he maps particular claim elements to specific col/lines. (Great!) Then I explain why those sections don't teach the claim element. In the next OA, he maintains the rejection -- the body of the rejection remains untouched from last time -- but this time the Response to Arguments section starts with the following text:

Applicants' arguments have been fully considered but they are not persuasive. The Office refers applicants to MPEP 2123 where the MPEP states the entire reference is cited and specific cited sections of the reference are not limiting in any way. Any citation to specific, pages, columns, lines, or figures in the prior art references and any interpretation of the references should not be considered to be limiting in any way.

Followed by a page of boilerplate: case law "reference is relevant for all it contains", statement of BRI, MPEP section on Implicit Disclosure.

Now, I do understand the relevant case law and it's import. In fact, if I thought the reference "as a whole" really did disclose my claim, I'd amend.

But I also know that if appeal, I'll argue error in his rejection, and will discuss the weaknesses in the Examiner's specific contentions.

So ... do I just ignore his boilerplate during prosecution? Is there any point in quoting back CFR 1.104 ("the particular part relied on must be designated as nearly as practicable") and/or other parts of the MPEP favorable to me?

Maybe call to discuss what what he's trying to tell me with this boilerplate?

And hey, have any of you Examiners out there seen this practice?

This kinda reminds me of another common occurrence ... Examiner alleges Ref 1 teaches X and Ref 2 teaches Y, and I say No it doesn't, and he cites In re Keller "(the combination teaches") but then goes on to repeat the same verbatim contention about individual references. At which point my knee-jerk reaction is to explain that the reason I addressed the teachings of the individual references is that he in fact relied on teachings of the individual references.

I've had these rejections and worse [Examiner states that he does not need to point out specific passages because reference is simple (there's support for that somewhere in the MPEP); there's no definition of what a simple reference is, and the reference at hand had 20 pgs, not 2;  or he states that the claim element is disclosed in pgs 2 -15].  Assuming that the reference is not too long (that depends on the fee arrangement with the client), I will review the entire reference.  If I am sure that the reference does not disclose the claim element, I will respond:

"The passages of Ref X specifically cited by the Examiner do not disclose the claim element.  Furthermore, Applicant has reviewed the entire reference and has been unable to find any disclosure of the claim element.  If the Examiner disagrees with Applicant's findings, Applicant respectfully requests that the Examiner cite the specific passages that do disclose the claim element."

[khazzah]

The only way that "not limiting" language makes sense is if an applicant relies on a specific teaching of a reference that is contrary to another teaching in the same reference. 

Huh. That possibility didn't occur to me.

In essence, what you're left with is a rejection in view of a reference without any guidance as to which parts of the reference teach your claim elements. 

Not at all. As I said, he did in fact provide guidance on what parts teach. He just insisted, in response to my "does not teach" argument that he was not limited to  those parts. [My words, his words were "not limiting"]

I can't tell if he's trying to "hedge" (sort of like when attorneys argue in the alternative) or if he's trying to back off his earlier position without saying so? But in-the-alternative really is just that -- "I've got you here, and I've got you here too" -- and attorneys usually make that very explicit. Whereas his position is more "I've got you here but by the way, that's not even a requirement."

It is fairly common for the Examiner to change position and then refuse to admit he did so. For example, Examiner asserts that ref teaches at Col X line Y. Then when Applicant traverses, Examiner comes back in next Response to Arguments with a broader interpretation of a claim term, under which the reference still (allegedly) teaches. Yet the Examiner doesn't change the body of the rejection text, nor does he admit in the Response to Args that the specifically-relied-on portion did not teach.

The closest thing I've experienced was an OA that said all claims were anticipated by a single reference but didn't discuss any claim elements at all.  Just a one-sentence rejection. 

Wow, that sucks. Nah, like I said, my situation wasn't like that. I do see the one-sentence rejection all the time in mechanical cases, and I always marvel at how the attorneys deal with such little information.

Back in the day, I used to write "Applicant finds no teaching or suggestion in Ref. X for ...."  And, to say that honestly, I had to read the whole reference pretty carefully.  You might have to do that. 

Agree that if you make an assertion, you should believe it.

One of my overarching lessons for newbie associates is "read every word of what you wrote and make sure you stand by it". Folks have a tendency to treat boilerplate as, well, meaningless boilerplate. I say instead that if you don't know why that text is there, or what it means, it shouldn't be there.

Now, out of laziness, I just write "the Examiner has cited no teaching or suggestion in Ref. X for ..." to avoid having to read the references in their entirety.

Interesting. I too have changed my default practice from arguing a blanket assertion "ref doesn't teach" to "relied upon portions of the references do not teach".

In my case, it's not quite laziness More like I've become more and more convinced that saying less is better unless you have a very specific reason for saying more. [See below.]

"The passages of Ref X specifically cited by the Examiner do not disclose the claim element.  Furthermore, Applicant has reviewed the entire reference and has been unable to find any disclosure of the claim element.  If the Examiner disagrees with Applicant's findings, Applicant respectfully requests that the Examiner cite the specific passages that do disclose the claim element."

Yep. If the situation warrants, I sometimes follow my statement about relied-upon portions with a variation of what smgsmc did above. Namely, I discuss other portions that I have some reason to believe the Examiner might be looking at, and affirmatively state they don't teach either.

So in this situation I am choosing to say more, because I believe doing so could advance prosecution. But then I always state "however, these portions are not relied on by the Examiner", as a sort of signal that his rejection is still in error.

In contrast to smgsmc's practice, I rarely say "entire reference does not teach", even if I believe it. Because broad-brush statements just aren't very convincing. (To be convincing, I need details.) And because it isn't likely to elicit any new information from the Examiner.

[khazzah]

I've had these rejections and worse [Examiner states that he does not need to point out specific passages because reference is simple (there's support for that somewhere in the MPEP); there's no definition of what a simple reference is, and the reference at hand had 20 pgs, not 2;  or he states that the claim element is disclosed in pgs 2 -15].

Wow, I don't envy you. It's definitely hard to fight when all you have is a vague allegation. OTOH, in my world, it's hard to fight without a very specific allegation. And I think mechanical and computer practices are different in this regard. I think attorney prosecuting a mechanical app can probably get as much or more information out of "See fig. 1" than I do out of "Col. 5, lines 50-65."

What I mean is: cam has a generally accepted meaning, so when the Examiner cites to Fig. 1 for the cam, you can probably hone in on a handful of parts, out of the several dozen labeled parts in fig. 1, that might possibly correspond to cam under a Broadest UNreasonable  Interpretation.

In contrast, my claims use terms that often don't immediately bring something specific to mind, leaving me to guess what's going on the Examiner's mind. So even a pinpoint cite to exactly two paragraphs might not be specific enough for me to figure out what he's thinking.

Say I have a claim element with 3 verbs and 4 nouns, and the cited two paragraphs have 5 verbs and 6 nouns. Sometimes I really do have a hard time figuring out which 3 map to which 5, and which 4 map to which 6.

And other times, I can knock out most of the nouns/verbs in the reference as being irrelevant. But then I have a different problem. Then my problem is not smgsmc's problem --  figuring out which thing, out of an abundance of things, corresponds to my claim element. No, the difficulty now is figuring out how the very small number of things in the cited portion can correspond to all of my claim elements, especially given the claimed relationships between the elements. 

[MLM]

If I were in your shoes, I would call the examiner at this point. You already have your argument on record and the examiner dismissed it, which suggests to me that the examiner has a different interpretation of the claim than you do. An interview is a good opportunity to figure out where the disconnect lies. Also it's a chance to ask the examiner for a suggestion of some limiting language that would distinguish the claim.

Taking a wild guess here I would say the examiner can't point to a literal disclosure of all the claim elements in the reference, but rather sees the entirety of the reference as sufficient to teach all of the elements. If that's true then it helps to study the reference carefully before the interview so you are better prepared to reach an agreement or disagreement, as the case may be.

[NJ Patent1]

Caveat: have never been presented with this exact situation, and never with the several MPEP sections recited in the thread (thank heavens).  How does one hit a moving target?  For my 2 cents, ignore the Ex's boilerplate and just respond to the rejections made – who knows where "gratuitous" statements might lead?  But this is an individual informed judgment call.  Confess I have stretched this "rule", but as judiciously as possible, with weasel words such as "as Applicant best understands the rejection / applied art ..."

IMO no need to call to inquire about the boiler plate; has already been divined here – "it's in the reference, somewhere, I Ex feel it, but can't quite figure it out and MPEP says I don't have to tell bcs it is so simple ".  Might this be an exceptional case where it is "OK" to give a shot-across-the-bow with a cite to APA and Board (or CCPA/CAFC) case or two interpreting it?  Don't think I've ever done that at this early stage (no RCEs).  To close this unhelpful post, my gut says (and my mentor did say); "get in, get the job done, and get out.  Don't address rejections you think might be made".  This stinks.  The alleged "greatest patent system in the world" deserves better – at least a fair chance to respond.  Sure, do a telephonic if you think it will do any good 

[MLM]

Might this be an exceptional case where it is "OK" to give a shot-across-the-bow with a cite to APA and Board (or CCPA/CAFC) case or two interpreting it?

I see the risk of doing this before an interview as causing the examiner to stop being helpful, if s/he had any inclination to be helpful at all. It's like sending a cease-and-desist letter - once you do that then people naturally want to dig in. If there is any chance of getting the examiner to change position it is going to be through diplomacy (phone call) not brute force application of the rules (written response citing the MPEP to someone who probably believes that they know it better than you do).

[smgsmc]

"The passages of Ref X specifically cited by the Examiner do not disclose the claim element.  Furthermore, Applicant has reviewed the entire reference and has been unable to find any disclosure of the claim element.  If the Examiner disagrees with Applicant's findings, Applicant respectfully requests that the Examiner cite the specific passages that do disclose the claim element."

Yep. If the situation warrants, I sometimes follow my statement about relied-upon portions with a variation of what smgsmc did above. Namely, I discuss other portions that I have some reason to believe the Examiner might be looking at, and affirmatively state they don't teach either.

So in this situation I am choosing to say more, because I believe doing so could advance prosecution. But then I always state "however, these portions are not relied on by the Examiner", as a sort of signal that his rejection is still in error.

In contrast to smgsmc's practice, I rarely say "entire reference does not teach", even if I believe it. Because broad-brush statements just aren't very convincing. (To be convincing, I need details.) And because it isn't likely to elicit any new information from the Examiner.

No, this is not what I'm saying.  I'm saying that (1) The specific cited portions do not disclose the claim element, (2) I've carried out my due diligence and more by carrying out a good faith effort at trying to find the allegedly disclosed claim element anywhere within the entirety of the reference, (3)  I couldn't find it, (4) The burden now shifts back to the Examiner to prove that I'm wrong by citing a specific section that discloses the claim element.  I mean I can't argue specifics when the claim element just isn't there at all. 

Usually in these instances, the Examiner is just plain lazy, and I've prevailed several times at PABR.

On the other hand, sometimes I go searching, and I do find the disclosed claim element:  not in the passages cited by the Examiner, but elsewhere.  When I was a rookie, my boss would always admonish me for doing the Examiner's job.

[NJ Patent1]

MLM: Can't quarrel with your position.  Nana said; "you catch more flies with honey ..."  Whatever works for you or me.  Guess I stink at telephonics, too solicitous one time, or too hard nosed the next  .  smgsmc and I had similar mentors - don't do the x's job for them. And there is a time to get tough.  An informed judgment (gut?) call.

[khazzah]

In contrast to smgsmc's practice, I rarely say "entire reference does not teach", even if I believe it.

No, this is not what I'm saying.  I'm saying that (1) The specific cited portions do not disclose the claim element, (2) I've carried out my due diligence and more by carrying out a good faith effort at trying to find the allegedly disclosed claim element anywhere within the entirety of the reference, (3)  I couldn't find it, (4) The burden now shifts back to the Examiner to prove that I'm wrong by citing a specific section that discloses the claim element.

Hmm. So are you making a distinction between

Applicant has reviewed the entire reference and submits that it does not teach the claim element.

and

Applicant has reviewed the entire reference and has been unable to find any disclosure of the claim element. 

?

If so, sure, I do see a small distinction.

Or maybe you're explaining that you don't simply say "entire reference doesn't teach", as I might have inadvertently suggested earlier.  From your points 1 through 4, it's clear that you instead have a complete strategy designed to gather more info from the Examiner and advance prosecution. 

I mean I can't argue specifics when the claim element just isn't there at all. 

Gotcha. So we're on exactly the same page there. That's certainly an important takeaway.

If I were in your shoes, I would call the examiner at this point. You already have your argument on record and the examiner dismissed it, which suggests to me that the examiner has a different interpretation of the claim than you do. An interview is a good opportunity to figure out where the disconnect lies.

I'm with you. It's *always* about BRI. I just want him to put his interpretation on paper. I can see that an Interview might result in him making his position of record.

Also it's a chance to ask the examiner for a suggestion of some limiting language that would distinguish the claim.

Good point. And for some clients, that would be the primary goal of the interview.

Personally, I don't like this approach because what the Examiner wants to add to the claim is often stuff that is a) unrelated to the current features, b) too limiting, c) commercially useless, and/or some combination of thereof.

I think that's because Examiners are most interested in language that will get straight to allowance, whereas an attorney might want to narrow just enough to get past the current reference(s) and on to a better reference.

I see the risk of [traversing with boilerplate] before an interview as causing the examiner to stop being helpful, if s/he had any inclination to be helpful at all.  If there is any chance of getting the examiner to change position it is going to be through diplomacy (phone call) not brute force application of the rules (written response citing the MPEP to someone who probably believes that they know it better than you do).

Ah, see, viewpoints like this is one reason why I'm asking :-)

MLM: Can't quarrel with your position.  Nana said; "you catch more flies with honey ..."  Whatever works for you or me.  Guess I stink at telephonics, too solicitous one time, or too hard nosed the next  .

MLM, more power to you if you're successful with interviews. Apparently some of us aren't :-)

[smgsmc]

In contrast to smgsmc's practice, I rarely say "entire reference does not teach", even if I believe it.

No, this is not what I'm saying.  I'm saying that (1) The specific cited portions do not disclose the claim element, (2) I've carried out my due diligence and more by carrying out a good faith effort at trying to find the allegedly disclosed claim element anywhere within the entirety of the reference, (3)  I couldn't find it, (4) The burden now shifts back to the Examiner to prove that I'm wrong by citing a specific section that discloses the claim element.

Hmm. So are you making a distinction between

Applicant has reviewed the entire reference and submits that it does not teach the claim element.

and

Applicant has reviewed the entire reference and has been unable to find any disclosure of the claim element. 

?

If so, sure, I do see a small distinction.

Or maybe you're explaining that you don't simply say "entire reference doesn't teach", as I might have inadvertently suggested earlier.  From your points 1 through 4, it's clear that you instead have a complete strategy designed to gather more info from the Examiner and advance prosecution. 

Yes, the sentence I highlighted is what I'm getting at.  I don't conclude with "The entire reference doesn't teach."  That's falling into the Examiner's trap of trying to interpret what the reference teaches as a whole.  To me, that's a different argument from "I searched all of Ref. A for Element X, and I can't find it anywhere." 

A concrete example:  Claim recites heating by AC current induced in a workpiece by an induction coil.  Reference describes resistance heating by passing DC current through a workpiece.  I review the entire reference for disclosure of heating by an induced AC current (including alternative descriptions:  I do a text search first.  If I don't find it, I read the entire reference.  Especially if it's a foreign reference, because foreign engineers often use different terminology to refer to the same process).  Can't find it.  The only method of heating disclosed is DC resistive heating.  I've explained in a previous response how inductive heating is different from resistive heating.  Examiner doesn't argue that point.  He just comes back with inductive heating is to be found in the reference.

If the Examiner simply repeats his rejection and makes it final, it's off to PABR with a high probability of Applicant prevailing (even more so if it's a 102 and not a 103).

[MLM]

Also it's a chance to ask the examiner for a suggestion of some limiting language that would distinguish the claim.

Good point. And for some clients, that would be the primary goal of the interview.

Personally, I don't like this approach because what the Examiner wants to add to the claim is often stuff that is a) unrelated to the current features, b) too limiting, c) commercially useless, and/or some combination of thereof.

I think that's because Examiners are most interested in language that will get straight to allowance, whereas an attorney might want to narrow just enough to get past the current reference(s) and on to a better reference.

More often than not I do not go with what the examiner suggests, for the reasons you gave. However, by engaging the examiner in the process I build some goodwill and avoid the pitfalls of being adversarial in the early stages, and can often learn something that I can take back to the client with my advice for moving the case forward.

P.S. I will admit that it depends on the examiner. Recently I asked an examiner for suggestions and we talked through a few possibilities. It was a cordial and constructive conversation. About fifteen minutes after we hung up the examiner called me back with a few more helpful suggestions that he came up with. I was really impressed by that. In the end we couldn't get to anything that was useful for the client, but the client felt better about letting the case go knowing that we had explored the possibilities with the examiner.

[JimIvey]

In essence, what you're left with is a rejection in view of a reference without any guidance as to which parts of the reference teach your claim elements. 

Not at all. As I said, he did in fact provide guidance on what parts teach. He just insisted, in response to my "does not teach" argument that he was not limited to  those parts. [My words, his words were "not limiting"]

Right.  The examiner pointed to specific citations in the reference.  You argued (presumably persuasively) that those citations did not teach your claimed elements.  Now, the examiner says that the claimed elements don't have to be taught in those specific citations -- isn't that what "not limiting" means?  So, as I understand it, you're left with a rejection in view of a reference and a disclaimer of sorts that you shouldn't focus on any specific citations previously mentioned.

Okay, this was frustrating me enough that I went and read MPEP 2123.  It's mercifully brief.  In essence, a reference is not limited to "preferred" embodiments -- non-preferred and alternative embodiments taught by the reference are fair game for use in rejecting a claim.  That makes sense to me.

I would suggest going back over your arguments in your last response and looking for an argument that was based on what you perceived the author/inventor of the reference to subjectively believe or prefer -- something like a "teaching away" or "does not contemplate" argument.  I guess one example would be to emphasize that the teachings cited by the examiner were a non-preferred, alternative embodiment.  I really doubt you did that, but perhaps you can find something that someone could mistake for that sort of argument.

Either the examiner believes you made that sort of argument or the examiner is misapplying MPEP 2123 in some way, like it's saying that you don't have to cite specific teachings in the reference.

Regards.

[Tobmapsatonmi]

I'm saying that (1) The specific cited portions do not disclose the claim element, (2) I've carried out my due diligence and more by carrying out a good faith effort at trying to find the allegedly disclosed claim element anywhere within the entirety of the reference, (3)  I couldn't find it, (4) The burden now shifts back to the Examiner to prove that I'm wrong by citing a specific section that discloses the claim element.  I mean I can't argue specifics when the claim element just isn't there at all. 

Interesting discussion throughout.  As to the original question, I sometimes get the "See col. 2, LL 1-65, and see also the entire reference" type of rejection and I do what smgsmc mentions, quoted above.

I have also started using a version of this in 103 arguments regarding tertiary refs only applied to dependent claims.  If I had a very clear argument why refs 1+2 failed to disclose feature X of indep claim 1, when it came to arguing a dependent claim rejection (e.g., rejected over refs 1+2+3), I would normally only argue the dependent claim rejection as it related to the additional feature of the dependent claim and how the examiner had applied reference 3 to that claim.  Now instead I review the tertiary ref for teaching of the missing main claim element and add the comment that I have done so for the sake of completeness, even though the Office did not apply ref 3 to claim 1, and assert that ref 3 also fails to disclose feature X.

I started doing this because some of my frequent examiners had a habit of accepting my argument on the main claim (rejected over refs 1+2) but would come back tossing a tertiary reference (previously applied only to a dependent claim) into the main claim rejection and saying "Ah-HAH!  You didn't say R3 doesn't disclose feature X".


As for the "you're only arguing the refs individually" thing, it seems nonsensical to have to do so but I generally finish off a 103 missing elements argument with something along the lines of "therefore, because neither reference alone, nor the combination of references taken together, teaches or even suggests feature X....".