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The Patenting Process (Never Give Up!)

IP and Patent law books

The patenting process begins with an “application.”  A patent application is different than what the title “application” normally implies.  This is not a form that one might fill out, as is the case with most normal applications.  Instead, a patent application is a detailed, written description of the invention (referred to as a “specification”), ending with a set of “claims.”  The specification is akin to a textbook article describing the invention.  The claims define the invention in a single sentence, and are based on, and “supported” by, specifics found in the specification.  Usually, the first claim is a broad definition of the invention, and several following claims define the invention in narrower scope.  The scope of the definition generally is narrower for each following claim.

There are two reasons for this.  The first is that infringement is determined on whether the product or process of the alleged infringer falls within the scope of one or more of the claims.  Thus, an “accused” process or article may fall within the “word boundaries” of a claim that is broad enough to encompass the “metes and bounds” of the accused process or article, but may, at least in part, be beyond the scope of a narrow claim.  In this case, the accused process or article would “infringe” the broad claim but yet not infringe the narrower claim.  The second reason is that a patent can  be granted only for something that is not already known by others, or “obvious” in view of what is already known or used by others, as evidenced by existing patents or publications (known as “prior art”).  Thus, the scope of a broad claim may overlap and thereby encompass prior art, and therefore will be rejected by the Patent Office, whereas a narrower claim might fall completely beyond the scope of such prior art, and thereby be “allowable.”

A patent is “applied for” by filing the complete patent application (written description + claims) with the United States Patent And Trademark Office (the “Patent Office”).  In due course the application will be assigned to an Examiner having knowledge, training, experience and skills in the particular field of science within which the invention falls.

The Examiner will initially study the specification and claims, to determine whether in the first instance the claims are “supported” by the specification.  If the Examiner finds that any one or more of the claims are not supported by the specification, those claims will be rejected.  Assuming that the claims are supported (or ultimately “amended” to a form that is supported), the Examiner will then conduct a search to see if any prior art exists that would “anticipate” the claims or render them “obvious.”  Anticipation means that the full scope of a claim or claims falls within the prior art.  Obvious means that even though the claim is not anticipated by the prior art, the differences between the claim and the prior art are such that those of ordinary skill in the art would be led by the prior art to the invention defined by the obvious claim, even though the full scope of the invention defined by that particular claim or claims is not fully described by the prior art.

And this is where the battle begins.  The Examiner, even though their search does not produce any prior art that exactly describes (i.e., “anticipates”) the claimed invention, one or more of the “references” found by the Examiner might, in combination with the “ordinary skill of those skilled in the art to which the invention applies,” in the Examiner’s opinion, lead those skilled in the art to which the invention applies, to the claimed invention.  The bridging of the gap between the prior art and the invention, as defined by the claims, would allegedly be an obvious step by those skilled in the art, simply by applying their own knowledge to what they read in the prior art found by the Examiner.  The Examiner would then reject one or more of the claims as obvious over one or more of the cited prior art references found by the Examiner.

The Examiner would then issue an “Office Action” rejecting the claims and providing a detailed explanation of why the claims are allegedly anticipated by or obvious over the cited prior art.

The Applicant, or his attorney or agent, would then have an opportunity to file a response to that office action.  In such response the wording of the claims could, if necessary in the Applicant’s opinion, be amended to bring them further outside the scope of the prior art so as to overcome the anticipation and/or obviousness rejection.  The response would include an argument (called “Remarks”), explaining why the claims are neither anticipated by or obvious over the references cited.

The Examiner would then consider the response (called an “Amendment” if it includes amendments to the claims) and if convinced by the response that the claims are, in fact, neither anticipated by or obvious over the cited prior art, would conduct a further search and barring the discovery of any more relevant prior art, issue a Notice of Allowance which, upon payment of certain fees, would lead to the issuance of the patent.

On the other hand, if the response does not convince the Examiner, a “Final” Rejection would be issued, in which the original rejection or a modified version of the original rejection will be maintained.

The Applicant will then have an opportunity to file a further response or amendment, and if that does not change the Examiner’s mind, an “Advisory Action” will be issued, in which the rejection(s) are maintained.

At this point, if the Applicant is still convinced that the invention is “patentable” and does not want to “abandon” the application, there are several limited options, one of which is to file an Appeal with the “Board Of Appeals,” which brings us to the point of this blog!

An appeal is commenced by filing a Notice of Appeal, to be followed by a “Brief,” in which the Applicant discusses the invention and the prior art applied by the Examiner and explains to the Board of Appeals why the prior art cited does not render the claimed invention anticipated or obvious, and why the final rejection is incorrect and should be reversed.

The Examiner would then, in due course, file an “Examiner’s Answer” in which he contests the position taken by the Applicant in the Brief, and argues that the Board of Appeals should affirm the final rejection.

The Board of Appeals would then issue a Decision, either affirming or reversing the final rejection.

In a particular case, an application was filed for a tear-resistant multilayer film having a cured silicone coating on at least one surface layer to provide the film with release properties.  The film was useful as a protective release film for waterproof sheeting materials used as roof coverings.  The advantage of this film was that it could be used as a protective cover over the adhesive surface of a rolled-up bitumen roof sheeting.  This made it easier than it otherwise would be to unroll the sheeting material and properly place it where it was needed on a roof.  Once the sheeting material was properly laid out on the roof, the protective sheet, by virtue of its tear resistance and release properties, could be pulled out from underneath the roofing material so that the adhesive surface could be exposed, and the roofing material then be bonded to the roof.

In a first office action, the claims were rejected as obvious over a combination of two prior patents.  The Examiner argued that one of the two cited patents disclosed a self-adhesive bituminous membrane for a roof deck, in which the self-adhesive layer was protected by a release liner.  The Examiner acknowledged that the membrane disclosed by the first reference was not a laminate of the same individual materials making up the claimed multilayer film, but alleged that the second reference disclosed a multilayer film, and that when the two references were combined, it would be obvious to select the individual layers used in the Applicants’ film and thus to arrive at the claimed film.

In responding to this rejection, the claims were amended to specifically recite that the claimed film was a protective release film for waterproof sheeting materials.

Applicants then pointed out that the release film of the membrane in the first reference cited by the Examiner was removed from the membrane to expose the adhesive surface before the film was applied to the underlying surface.  This was in direct contrast to the film claimed in the application, which could be pulled out from under the roof sheeting material after the sheeting material had first been laid over the roof surface.  In addition, it was pointed out that the release material in the claimed film was a cured polysiloxane (silicone), whereas the release material disclosed in second patent cited by the Examiner was a silicone oil, and not a cured polysiloxane as recited in the claims.

The Examiner then issued a further “final” office action, in which he maintained the same rejection and made it final.  In responding to the arguments made by the Applicant, the Examiner argued that release liners of e.g. silicone release agent-treated polymeric films were known from the first reference cited, and that it would have been obvious to use the damage-resistant multilayer film of the second reference as the polymer film in a release liner to obtain the improved damage resistance.

Applicants then filed a Notice of Appeal, and in due course followed up with the filing of their Brief on Appeal.

In the Brief, Applicants first explained that their inventive protective film allows that, after laying out the roof sealing sheet with the protective film accurately on a roof, the protective film between the sheeting material and the roof can be pulled out from between them without further moving the adhesive sheeting material before it is bonded to the roof.

Applicants pointed out that, in contrast, the first reference cited teaches that the protective film with the release liner is rolled out on the roof, then one half is folded over the other half to access half of the release liner, the release liner is removed and the now exposed adhesive layer is folded back and bonded to the roof, then the other half, still covered by the release liner, is folded over the first half, the second half of the release liner is removed, and finally the second half with the exposed adhesive layer is bonded to the roof.  It was pointed out that this procedure, according to the reference, was rather complicated in order to avoid any mechanical stress.

Thus, Applicants explained, since no special mechanical properties are required of the release film of the first reference, the reference teaches that a release liner can be based on a large variety of different materials, and nothing in the reference could possibly lead those skilled in the art to the specific multilayer film coated with a cured polysiloxane, as claimed in the patent application.  The Brief concluded that the two cited references, therefore, could not possibly render Applicants’ claims obvious.

In the normal course of things, the Examiner would then file an Examiner’s Answer, that would respond to and argue against the points raised by the Applicants’ in their Brief.

In this particular case, however, the Brief apparently convinced the Examiner himself, as the Examiner, instead of filing an Examiner’s Answer, simply issued a Notice of Allowance.

The lesson to be learned from this is that even when it may seem impossible to convince the Examiner that the invention claimed in a particular patent application is patentable, the Applicant should never give up and should continue to argue against the rejection, including appealing to the Board of Appeals, if necessary, as either the Examiner might decide to avoid having his work reviewed by the Board of Appeals, by allowing the application, or hopefully, the Board of Appeals, when reviewing the respective arguments, will “reverse” the final rejection so that the application will be allowed.

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