Framing the Argument

While it seems odd to many, lawyers understand that how an argument is presented can sometimes make a difference in whether the argument is successful. This can be especially hard for some inventors to appreciate, as in their minds the technical facts should speak for themselves and it should not matter how issues are “framed.”

One example where this issue plays out almost every day in patent prosecution is with respect to whether or not a reference shows a claimed feature. This issue is the foundation upon which patent law is built - determining whether an invention is novel. Yet, how the issue is framed can make a big difference, particularly in the context of the USPTO’s Broadest Reasonable Interpretation (BRI) standard.

As discussed in past posts (here, here, here, for example), the USPTO takes the approach of applying the broadest interpretation of claim features (that is still reasonable) in order to ensure that the full scope of the claims is searched and examined. While this makes sense, examiners often take substantial liberties as to what claim elements do and do not cover under the BRI.

So what does the BRI have to do with how an issue “framed”? Getting back to the fundamental question of whether a reference shows a claimed feature, many times an applicant simply argues that the references does not show a claimed feature. However, such arguments often include implicit assumptions about the scope of the claim terms. While these assumptions are often correct and it would seem silly to expressly explain them, examiners often use the BRI to reject an applicant’s argument by implicitly taking a broader interpretation (which they also do not expressly explain).

To shortcut the number of prosecution rounds needed to bring these two passing ships in the night together, it can be helpful for applicants to not simply argue that a reference fails to show claim element “X”. But rather, the applicant can explain that the only way for the reference to show element “X” is to take an unreasonably broad interpretation of the claim terms. One reason this is not merely semantics is that the Federal Circuit has come down (and the PTAB has followed suit) on unreasonable interpretations that are not consistent with how the claim terms would be understood by a person skilled in the art in view of the specification and other evidence of record. See this previous post.

In this way, how you characterize the argument can make a difference not only in the success rate, but in reducing the number of rounds of prosecution. So, rather than simply arguing that “reference X does not show feature Y” only to get a final rejection where examiner says “yes it does,” consider supplementing the argument with further reasoning that “the only way for reference X to show feature Y is to rely on an unreasonably broad interpretation in violation of the BRI” (along with the evidence and reasoning supporting why such an unreasonable interpretation is incorrect and how a reasonable interpretation excludes feature Y).