Tips for Patent Prosecutors to De-fang the Bumble

The Holiday Season brings a special time of the year where we can take a breath and reflect on the past. Some things that help take us back are re-airings of old TV shows we watched growing up. My favorite holiday TV show was always the classic stop animation “Rudolph the Red-Nosed Reindeer.” How could you not love all those characters, like Hermey the elf, and Yukon Cornelius, the "greatest prospector of the North"? And who could forget the Bumble - he was terrifying and gave me nightmares growing up. As we all know, in the story, Hermey (who wants to be a dentist instead of an elf) removes all of the Bumble’s teeth after luring him out of a cave (and saving Rudolph and his family) by oinking like a pig.

In patent prosecution, some examiners and/or supervisors who make life overly difficult (and who unfortunately are intent on rejecting applications no matter what) can be a lot like the abominable snow monster. The heroes in this analogy are our inventors, who like Rudolph, try their best but often end up getting knocked out with a stalactite by the Bumble. It is therefore often up to the nerdy patent prosecutor, who like the nerdy little elf, must come up with a plan to de-fang the Bumble.

To that end, we have provided our Holiday Suggestions to help all the Hermeys out there reform the Bumbles of the USPTO. Each of these topics is discussed in various other blog posts on our site, so feel free to search around if it seems like any of these suggestions might be helpful to you.

• Restrictions - unreasonable examiners often use restrictions to make an applicant’s life overly difficult due to either a desire to do as little work as possible, or in the hopes of wearing down the applicant and limiting their scope and ability to amend. However, patent prosecutors should incorporate restriction traversals and petitions into their patent prosecution strategy in order to turn the tables on these examiners and increase the applicant’s leverage. We have many posts on how to fight restrictions and how to successfully petition. An applicant can win these battles, if needed, more often than traditional thinking suggests. Don’t go after the Bumble in his own cave and try to fight on his turf like Rudolph - turn the tables - traverse, amend, petition, …

• Some examiners are so bent on rejecting an application that they can make statement and do activities that actually help the applicant in the long run. So, when you find yourself in a situation where the examiner is un-convinceable (because they have no intention of giving a fair examination), stop trying to convince them. Consider how you can force them into extreme and unreasonable positions. Think about Hermey luring the Bumble out of the cave by oinking like a pig - Bumbles love pork!

• At the same time, do not let unreasonable examiners lead you down the primrose path. Unreasonable examiners who intend to reject no matter what rely on applicants presuming that the examiner is reasonable. Use examiner statistics (like bigpatentdata.com) to know from the first action how the examiner operates and do not get lulled into complacency. Likewise, do not let the examiner lead you into the swamp with side issues. Those are designed to distract the applicant in the hopes the applicant makes some sort of statement or admission that can lead to even more rejections. Don’t let the Bumble get the upper hand and knock you out with a stalactite because you are distracted.

• Play the long game and focus on winning at the PTAB. If the examiner or their supervisor is intent on rejecting no matter what, stop trying to convince them and instead focus on the eventual appeal. Make sure you have all your claims exactly as you would like them before the PTAB. Get all of your evidence in the record. Minimize wasted RCEs and appeal early. Be ready for the examiner and their supervisor to re-open prosecution and use it to your advantage to paint them as unreasonable. Maybe you will get lucky and your Bumble will be reformed without requiring multiple appeals!

Of course, it goes without saying that at the end of the day you need to know the prior art better than anyone else does. All of these tactics require that you have a strong invention with claims that differentiate the state of the art. Your strategy should be solid even if the examiner and supervisor change which part of a reference is being cited, or change how the references are being combined.

So, hopefully when you find yourself facing an unreasonable Bumble showing big scary teeth, you can be like Hermey and remember that the Bumble is not so scary after all - you just need to remove those scary teeth.

As a quick aside, “Rudolph the Red-Nosed Reindeer” had its own intellectual property issues, as noted by Wikipedia:

The copyright of the Rudolph the Red-Nosed Reindeer special lies in an area of uncertainty in regard to American federal copyright law. When the recording was originally published, the date of copyright (published in Roman numerals) was accidentally listed as 1164 (MCLXIV), omitting an M that should have been present (1964 in Roman numerals is MCMLXIV); this mistake was not corrected with subsequent edits and remains on televised prints to this day….

Assuming the error in the copyright is considered substantial enough to invalidate it (U.S. copyright law before 1988 required works to have a valid date on a copyright notice, while providing some leeway in regard to non-substantial errors), the error puts large portions of the special not directly tied to the songs or original story into the public domain. …

Restriction or Rejection?

Every patent prosecutor knows, or should know, that restriction requirements are petitionable, but not appealable to the PTAB. However, there is at least one exception to this general rule, and the USPTO’s updated MPEP calls it out with a new section. Specifically, with regard to Markush claims, the Examiner is not allowed to placed a restriction on a single Markush claim following the Haas and Weber cases. MPEP 706.03(y), titled “Improper Markush Grouping” sets forth the following in subsection (III):

III. REJECTION BASED ON IMPROPER MARKUSH GROUPING

When an examiner determines that the members of a Markush group lack either a single structural similarity or a common use, or if the single structural similarity is a substantial structural feature of a chemical compound that is not essential to the common use, then a rejection on the basis that the claim contains an "improper Markush grouping" is appropriate (see subsection II). Note that this is a rejection on the merits and may be appealed to the Patent Trial and Appeal Board in accordance with 35 U.S.C. 134 and 37 CFR 41.31(a)(1). Use Form Paragraph 8.40 to reject a claim on the basis that it includes an improper Markush grouping.

It is interesting that the MPEP fails to cite either Haas or Weber. These cases made clear that a restriction placed on a single claim was, in effect, a rejection that gave rise to grounds for appeal to the Board. In drafting this new section of the MPEP without citing the cases giving rise to the relevant law in the first place, there is the potential that the underlying basis is lost. While it is true that Haas was about a rejection for an improper Markush claim, the underlying issue was more general - “whether or not a single claim which includes a plurality of independent and distinct inventions is legally rejectable.”

You can read for yourself why Judge Markey answered the question in the negative, along with the companion Weber case confirming that §121 does not provide a basis for rejection of a claim. But the point is that the MPEP zeroes in on the more narrow issue of improper Markush claims, whereas there is case law support for the broader notion that if the examiner restricts a single claim, the action is appealable to the Board. This makes sense because it is not like the applicant can simply file a divisional with that claim - doing so will only result in the same restriction (rejection). Because the applicant is provided the statutory right to draft a claim as they see fit, do not let an examiner force an amendment by improperly restricting a single claim.