Are CIPs an admission of a failure in patent drafting?

A CIP in US patent prosecution is a Continuation-In-Part. Some patent attorneys have strong feelings about CIPs, both for and against. However, whatever one thinks of the CIP, it is nevertheless an available tool to be used in patent portfolio development.

When one is faced with handling a situation that may benefit from a CIP, it usually presents an interesting situation where the patent drafting professional team is provided an opportunity to have a real-world check on the original claims and original specification/figures. In other words, when drafting the original case, the drafting team was tasked with not only describing the invention, but considering possible alternatives, extensions, etc., and drafting claims that took those and (obviously many other) issues into account.

If the new features that would form the basis of the CIP had been considered upon initial drafting, then of course there is no need for the CIP. But of course predicting the future is always hard. But even if the new features were not foreseen at the time of drafting, maybe the broadest claims are still broad enough to cover embodiments (generically) using those new features. In this way, the CIP situation presents a chance to have early, real-world and practical feedback on whether the drafting strategy of the parent was aimed in the right direction. If not, the parent is still pending and this might be a time not only to consider a CIP, but possibly further adjusting the claims of the parent.

So, whatever your feelings on CIP situations, consider them an opportunity to not only evaluate the parent application, but to realign it (and any further filings) with updated information that may have not been considered during initial drafting. Further, CIP situations present the drafting team with the unusual ability to have early feedback on what competitors might be thinking as the market develops.

Anticipation Short Cuts

Do not let examiners take short-cuts with anticipation. Even if a single reference shows all claimed elements, if it does so only by pointing to different embodiments, a case of anticipation has not been established.

Specifically, it is well settled that combining separate embodiments of a single reference is improper without some teaching to do so. When a prior art reference discloses multiple, distinct embodiments, combining teachings from those distinct embodiments requires an obviousness analysis, including a demonstration of why one of ordinary skill would be motivated to combine those disparate teachings. For anticipation, it is not enough that the prior art reference discloses multiple, distinct teachings that the ordinary artisan might somehow combine to achieve the claimed invention. In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)).

Examiners often think that because only one reference used, it must be an anticipation rejection. Often the fact that the examiner is using multiple distinct embodiments is without dispute since the examiner explicitly cites to different embodiments in a reference. In such a case, point out how the Office improperly combines disclosure that is from separate embodiments (or worse, from the background cite art in combination with the disclosed invention) and traverse the rejection.

The Office has the burden to establish a prima facia case, so push back against short-cuts.