Ex Post Facto Claim Limitations

Receiving a Notice of Allowance should be a positive point in patent examination. The applicant has likely gone through an extensive and time consuming processing of not only developing a new invention, but also searching, preparing the application, prosecuting the application, and finally convincing an examiner at the Patent Office that the invention is novel, inventive, and meets all other requirements. This is no small feat.

But the USPTO might still have a few tricks up its sleeve to frustrate the applicant, including unduly limiting the scope of the allowed claims through a new “claim interpretation” issued with the Notice of Allowance.

Specifically, it seems that some examiners prefer to hold back a Section 112, sixth paragraph (pre-AIA) or Section 112(f) (post-AIA) until issuing the Notice of Allowance. Such an approach can be significantly restrictive to claim scope as the applicant may have had no intention for the claims to interpreted as a “means” limitation. Such interpretations can be very restrictive in view of the relevant case law.

Can examiners sneak in limiting claim interpretations at the last minute and close prosecution on the merits?

37 CFR 1.104 Nature of examination states the following in subsection (e) that:

Reasons for allowance. If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning. The reasons shall be incorporated into an Office action rejecting other claims of the application or patent under reexamination or be the subject of a separate communication to the applicant or patent owner. The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure by the examiner to respond to any statement commenting on reasons for allowance does not give rise to any implication.

So, the applicant can file “comments” responding to the new interpretation, but if the examiner ignores them, it “does not give rise to any implication.” This is partly because the examiner likely never even reads the comments as the case is passed along to publications. The comments might look something like the following:

Responsive to the Notice of Allowance (Notice) dated [date], on the above-identified patent application, Applicant agrees with the Examiner’s conclusions regarding the patentability of the allowed claims, without necessarily agreeing with or acquiescing in the Examiner’s reasoning regarding the Claim Interpretation section as set forth in the Notice under 35 U.S.C. §112, sixth paragraph. In particular, applicant respectfully disagrees with the Examiner’s assertion that the claims and claim terms as set forth in the Notice should be limited by the interpretation set forth by the Examiner under 35 U.S.C. §112…

Another option may be to re-open prosecution by filing an RCE. This would require the examiner to respond to the applicant’s arguments; however, there is no guarantee that the examiner will change the interpretation and the examiner could simply re-issue another Notice of Allowance maintaining the interpretation. Such an approach may actually be worse than if the applicant had simply filed comments.

In any event, applicants should be careful to review reasons for allowance and ensure that at a minimum comments are filed responsive to any explanations that are contrary to the applicant’s position regarding the claim interpretation.