Updated March 5, 2024.
Applicants responding to rejections and objections can use the Design Patent Pro (DPP) ProSearch database to search for and cite prior design patent application documents and arguments where applicants successfully overcame similar rejections and objections. Should examiners consider such prior examples and arguments? What is their persuasive value? Some cases treat the results of prior patents and applications as a relevant, although not conclusive, consideration. Other cases appear to stand for the proposition that prior design patents and applications are not a factor to be considered. Which position is correct? A careful review of the case law indicates that prior patents and applications should be a relevant, although not conclusive, consideration.
As an initial matter, it should be noted that the USPTO itself uses prior instances of accepted claiming practice to support its decisions. In design patent application 29/583,860, the examiner objected to the title and specification and contended that a “light system” was not an article of manufacture. The applicant petitioned the Director requesting that the objection be withdrawn. The Director agreed that there was no basis for the objection, and stated “[m]oreover, after cursory review of the prior art reveals numerous US patents having ‘system’ in the specification, claim and title.”
A Relevant, Although Not Conclusive, Consideration
Cases treating the results of prior patents and applications as a relevant, although not conclusive, consideration include Sharp v. Coe, 75 U.S.App.D.C. 118, 125 F.2d 185 (1941), and Dyer v. Coe, 75 U.S. App. D.C. 125, 125 F.2d 192 (1941). In Sharp v. Coe, the Court stated “in connection with such other items of evidence as may be relevant, the action of the Commissioner on allowed claims can be taken into consideration in determining the patentability of rejected claims.” Id. at 189. In Dyer v. Coe, the Court stated “we rule that the action of the Commissioner on allowed claims is not to be taken as conclusive measure of the patentability of rejected claims; that patentability of the latter must be determined ultimately by comparison with the prior art; although in connection with such other items of evidence as may be relevant the Commissioner’s action on allowed claims can be taken into consideration in determining the patentability of rejected claims – the persuasive value to be given to the action of the Commissioner in respect of allowed claims to be determined in each case on its own facts.” Id. at 197. (emphasis added). See also Converse v. Brenner, 259 F. Supp. 227 (1966) (“Although one of plaintiffs’ contentions is based upon allowance of similar claims in view of the same references, such allowance by the Patent Office of claims which recite a process is not conclusive of the patentability of claims reciting the same process where the former claims are materially limited, as long as the latter are unpatentable over the prior art; although it is a relevant consideration.” (citing Sharp v. Coe, supra) Id. at 228 (emphasis added).
The rationale underlying this principle is the presumption of correctness and validity given the decisions by the patent office. Two of the cases cited by Sharp v. Coe are Poulsen v. COE, 119 F.2d 188 (D.C. Cir. 1941) and In re Englehardt, 17 C.C.P.A. 1244, 40 F.2d 76 (CCPA 1930). In Poulson v. Coe, the court stated “[w]hile the rule of stare decisis does not apply to decisions of the Patent Office, there is a presumption of correctness in such decisions.” Id. at 199. In In re Englehardt, the court stated “[w]e have a right to consider that a patent has been issued by the Patent Office, a patent covering the very claims here in issue; that such patent is beyond recall by it, and that it will be considered in any court as presumptively valid.” Id. at 1248. The court continued “[i]f the Patent Office was clearly wrong in finding patentability of the Barnebey application, it should not repeat its error with regard to the claims here involved, but we think that in such cases lack of patentability should very clearly appear to warrant rejection, and any doubt as to patentability should be more strongly resolved in favor of patentability than under circumstances where a patent had not been previously issued.” Id.
Not A Relevant Consideration
Cases dismissing the relevance of prior design patents and applications (and that are often cited by patent examiners), include In re McDaniel, 293 F.3d 1379, 1387 (Fed. Cir. 2002) (“It is well settled that the prosecution of one patent application does not affect the prosecution of an unrelated application.”); In re Gyurik, 596 F.2d 1012, 1018–19 n.15 (CCPA 1979) (“Each case is determined on its own merits. In reviewing specific rejections of specific claims, this court does not consider allowed claims in other applications or patents.”); and In re Wertheim, 541 F.2d 257, 264 (CCPA 1976) (“[I]t is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others.”)
Other cases in this line include In re Allen, 112 F.2d 840, 27 CCPA 1260, 1264 (CCPA 1940) (“Allowance of one claim by Patent Office to an applicant is not to be regarded as proper basis for determining allowability of another claim to another party.”); In re Driscoll, 562 F.2d 1245, 195 USPQ 434 (CCPA 1977) (“Each case must be decided on its own facts.”); In re Lobdell 1948 C.D. 447; 77 USPQ 377 (1949) (“Claims cannot be allowed merely because a substantially similar claim has been allowed in same or other applications.”); and In re Oakes, 140 F.2d 669, 31 C.C.P.A. 833 (1944) (Rejected claims cannot be allowed merely because a substantially similar claim in the same or in other applications had been allowed in the Patent Office.).
Many of these cases that appear to stand for the principle that prior design patents and applications are not a factor trace their lineage back to the case of In re Zalkind, 28 C.C.P.A. 959, 118 F.2d 356 (C.C.P.A) (see final section below). In Zalkind, the Court stated “[t]he principle has been often stated by this and other courts that generally rejected claims may not properly be measured by allowed claims in order to determine the patentability of the former, but must be considered in the light of their own limitations or lack of limitations.” Id. at 962.
An examination of Zalkind’s facts reveals that it does not stand for the broad proposition it has been cited for. Zalkind is a utility patent case involving laminated sheets. The examiner rejected all claims except number 10. The board reversed the examiner as to five claims including number 3, which included a limitation requiring paper material between two layers of sheet metal. The applicant argued that since the board found claim 3 patentable, claims 1 and 2 also should be patentable, even though claims 1 and 2 were limited to one layer of sheet metal. The court rejected that argument and repeated the above stated principle that rejected claims may not be measured by allowed claims to determine the patentability of the rejected claims.” In short, the court recited the unremarkable proposition that an allowed claim is not conclusive on the patentability of another claim, particularly when the claims are different in scope.
An additional line of cases typically cited for the “not a relevant consideration” principle emphasizes that to the extent the patent office has made a mistake in the past, the patent office is not bound to repeat those mistakes. Three cases representing this line are Ex parte Tayama, 24 USPQ2d 1614 (Bd. Pat. App. & Int. 1992), In re Donaldson, 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994), and In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). A review of these cases shows they are limited to situations where the USPTO has been in clear violation of a statutory mandate.
In Ex Parte Tayama, the applicant attempted to claim an icon for a set up operation. There was no article of manufacture mentioned and the claim was rejected under 35 U.S.C. 171 for non-statutory subject matter. The Applicant argued that the patent office previously had issued design patents to purportedly similar subject matter. The Board rejected the argument and stated:
“We recognize that patents have issued directed to designs referred to as icons. However, appellant has not cited any authority which holds that the issuance of a patent has any significant precedential value. In evaluating compliance with 35 U.S.C. § 171, each design application must be evaluated on the record developed in the PTO. See, In re Gyurik, 596 F.2d 1012, 1018 n. 15, 201 USPQ 552, 558 n. 15 (CCPA 1979); In re Phillips, 315 F.2d 943, 137 USPQ 369 (CCPA 1963). To the extent any error has been made in the rejection or issuance of claims in a particular application, PTO and its examiners are not bound to repeat that error in subsequent applications. Accord, In re Cooper, 254 F.2d 611, 617, 117 USPQ 396, 401 (CCPA), cert. denied 358 U.S. 840 (1958) (Decision in a trademark application in accordance with law is not governed by possibly erroneous past decisions of the Patent Office); In re Zahn, 617 F.2d at 267, 204 USPQ at 995 (“[W]e are not saying the issuance of one patent is a precedent of much moment.”) Compliance with § 171 requires analysis of the statute and interpreting case law. Mere reference to possibly contrary decisions of an examiner in other applications, applications which do not even discuss the issue raised, are not helpful in this analysis. We fully agree with appellant’s statement in the supplemental reply brief that “the issue of design patentability should most certainly be decided based upon legal precedent and principles….”
Ex Parte Tayama at *4.
Properly read, Ex Parte Tayama stands for the unsurprising principle that when a practice is in clear violation of statutory principles, the practice cannot continue merely because it has been done before. Importantly, the case does not say that a prior practice that is not in clear violation of a statutory principle should not be considered when evaluating a patent application.
In re Donaldson is similar to Ex Parte Tayama in that it involved the Patent Office’s failure to adhere to a statutory mandate. In Donaldson, the Patent Office had misinterpreted 35 U.S.C. § 112, Paragraph Six, regarding means plus function claims. The Court stated “[t]he fact that the PTO may have failed to adhere to a statutory mandate over an extended period of time does not justify its continuing to do so.” Id. at 1194.
The last case, In re Zahn, approved portion claiming for design patents. When arguing that portion claiming should not be allowed, the Board cited Ex parte Northup and stated:
“The only precedent relied on by the examiner was the 1932 board decision in Ex parte Northup, which appears to us to have been inconsistent with the contemporaneous act of the PTO in issuing Northup patent No. D- 89,448, referred to in the opinion in that case. The board there said Northup could not claim the design for the “forward corner” of an automobile body because it was not “a complete article of manufacture,” since it was “never manufactured and sold as a separate article of manufacture.” Patent D- 89,448, as here, has a claim referring to a complete article, namely, “an automobile body” but when the claim is read, as it must be, in conjunction with the specification and drawing, it is clear that the claim is for the design of the windshield portion only, which is shown in solid lines in the drawing, all the rest of the body being in dotted or broken lines. One board decision is not binding on the construction of a statute; and, of course, we are not saying the issuance of one patent is a precedent of much moment. Both are no more than food for thought. We turn for guidance to a higher authority (whereupon the Board turned to the Supreme Court’s Gorham v. White decision that involved claiming just a portion of silverware).”
Id. at 267.
In short, In re Zahn stands for the principle that the issuance of a prior patent is not conclusive on an issue, but rather provides “food for thought.”
Reconciling the Two Lines of Cases
The two lines of cases can be reconciled by observing that prior patents and applications only should be treated as a relevant, but not conclusive, consideration. Indeed, the leading case for which this principle is cited, Sharp v. Coe, supra, cites and expressly recognizes the principle from In re Zalkind, supra, that the action of the patent office on allowed claims is not to be taken as conclusive: “[w]e are in agreement that the action of the Commissioner on allowed claims is not to be taken as a conclusive measure of the patentability of rejected claims.” (citing In re Zalkind, supra). Id. at 188. But Sharp v. Coe continues, stating “[b]ut we are also agreed that, in connection with such other items of evidence as may be relevant, the action of the Commissioner on allowed claims can be taken into consideration in determining the patentability of rejected claims. Id. at 189.
Under these two coexisting principles, the presumption of correctness and validity given to prior approved design patents can be overridden when such patents are in clear violation of a statutory mandate, when clear distinctions exist between the patent application at issue and prior issued patents, or when the weight of customary practice clearly is contrary to the position asserted and no persuasive argument exists to depart from the customary practice.
The art of persuading an examiner often depends on how the argument is presented. Many examiners appreciate being provided past examples supporting an argument because it provides a level of confidence that the argument is correct. If an examiner quotes the arguments and cases that past examples are not relevant, consider presenting the examiner with the case law cited above that past examples should be a relevant, although not conclusive, consideration. Always consider supporting the arguments with a rationale that makes sense – do not just rely upon the past example by itself without pointing out the reason why the past example should be a persuasive reason for accepting your argument.
Observations on the Eleven Arguments and Cases Patent Examiners Typically Cite
Examiners often cite the following eleven cases when responding to an applicant’s argument that refers to prior issued patents and prior successful arguments. A brief response to each case is included.
1. “It is well settled that the prosecution of one patent application does not affect the prosecution of an unrelated application. In re McDaniel, 293 F.3d 1379, 1387 (Fed. Cir. 2002).
The pedigree of In re McDaniel does not reveal any compelling analysis supporting its conclusion. In re McDaniel cites In re Wertheim, 541 F.2d 257, 264, 191 U.S.P.Q. (BNA) 90, 97 (CCPA 1976), which cites In re Giolito, 530 F.2d 397, 188 USPQ 645 (CCPA 1976), which cites the three cases In re Margaroli, 50 CCPA 1400, 318 F.2d 348, 138 USPQ 158 (1963), In re Wright, 45 CCPA 1005, 256 F.2d 583, 118 USPQ 287 (1958), and In re Launder, 41 CCPA 887, 212 F.2d 603, 101 USPQ 391 (1954). The first of these three cases, In re Margaroli, cites In re Lilienfeld, 40 C.C.P.A. 904, 905, 203 F.2d 750, 750 (C.C.P.A. 1953), which has no citation support. The second case cited, In re Wright, has no citation support. The third case cited, In re Launder, cites In re Zalkind, 28 C.C.P.A. 959, 962, 118 F.2d 356, 49 USPQ 97 for support.
In re Zalkind states as follows, without any case citation support:
“The principle has been often stated by this and other courts that generally rejected claims may not properly be measured by allowed claims in order to determine the patentability of the former, but must be considered in the light of their own limitations or lack of limitations. This rule is so well known and well-fixed that no citation of authority is necessary to support it. That there are exceptional cases has been held but appellant here has disclosed no state of facts which would bring this case within the excepted class.”
Id. at 962.
In short, the putative legal principle that the prosecution of an earlier application does not affect the prosecution of a current application traces its roots back to In re Zalkind, which in turn cites no specific legal authority in support.
2. “Each case is determined on its own merits. In reviewing specific rejections of specific claims, this court does not consider allowed claims in other applications or patents.” In re Gyurik, 596 F.2d 1012, 1018–19 n.15 (CCPA 1979).
In re Gyurik, 596 F.2d 1012 (CCPA 1979), also has an unpersuasive pedigree. In re Gyurik cites In re Atwood, 46 CCPA 901, 904, 267 F.2d 954, 956, 122 USPQ 378, 380 (1959), which cites In re Freedlander, 30 CCPA 1179, 136 F.2d 759, 58 USPQ 402, which cites the two cases of In re Eitzen, 24 C.C.P.A. 798, 86 F.2d 759 and In re Andrus, 28 C.C.P.A. 1113, 119 F.2d 428. In re Eitzen cites In re Borden, 21 C.C.P.A. 915, 918, 68 F.2d 983, which cites the two cases In re Farrand, 18 C.C.P.A. 1452, 49 F.2d 1035 and In re Horning, 19 C.C.P.A. 1102, 56 F.2d 886.
In In re Farrand, the Court stated:
“Attention has been given to the argument that the Patent Office recognized invention on appellant’s part by granting claims Nos. 7 and 8, and to the insistence that these differ but slightly from the essential features of the pending claims. The limitations contained in those claims have been stated, supra.
The presumption is that it was by reason of the limitations contained that the examiner found them patentable, otherwise, it is to be assumed, they would not have been allowed. Since we do not find invention in those in which the limitations are not present, we cannot properly hold that they should be allowed simply upon the basis of the allowance of Nos. 7 and 8.
If, on the other hand, the limitations did not control and the allowed claims are, in meaning, virtually identical with those not allowed, then appellant would seem to have practically all the protection which would be derived from an allowance of the claims in issue.”
Id. at 1457.
In re Farrand does not support the statement in In re Gyurik that “[i]n reviewing specific rejections of specific claims, this court does not consider allowed claims in other applications or patents.” Id. at 1018–19 n.15. Rather, the claims being considered had different limitations than the claims allowed. And if the different limitations were not relevant, then there was no need to grant the additional claims as it would provide no additional protection.
In re Horning, 19 C.C.P.A. 1102, 56 F.2d 886 contains no citation support.
In re Andrus, 28 C.C.P.A. 1113, 119 F.2d 428 contains no citation support and states:
“Much space has been devoted in the brief filed on behalf of appellant to a comparison of the appealed claim with certain of the allowed claims in the effort to show a similarity in principle between the former and the latter. No sufficient reason is advanced, however, for our not observing the general rule to the effect that a rejected claim will not be measured by an allowed claim in passing upon the patentability of the rejected claim. We are of opinion, considering the appealed claim upon its merits, that it was properly rejected. If some of the claims which stand allowed should have been disallowed for the same reason that controls with respect to the rejected claim the situation presented thereby is one over which this court has no jurisdiction under the facts of this case.”
Id. at 1115.
3. “[I]t is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others.” In re Wertheim, 541 F.2d 257, 264 (CCPA 1976).
In re Wertheim is in the citation string under (1) above that ultimately relies upon In re Zalkind, that has no specific citation support.
4. “Allowance of one claim by Patent Office to an applicant is not to be regarded as proper basis for determining allowability of another claim to another party.” In re Allen, 112 F.2d 840, 27 CCPA 1260, 1264 (CCPA 1940).
In re Allen has no citation support.
5. Each case must be decided on its own facts. In re Driscoll, 562 F.2d 1245, 195 USPQ 434 (CCPA 1977).
In re Driscoll states:
“Moreover, it should be readily apparent from recent decisions of this court involving the question of compliance with the description requirement of § 112 that each case must be decided on its own facts. Thus, the precedential value of cases in this area is extremely limited. Id. at 1250.”
6. “Claims cannot be allowed merely because a substantially similar claim has been allowed in same or other applications” In re Lobdell 1948 C.D. 447; 77 USPQ 377 (1949).
In re Lobdell cites In re Oakes, 31 C. C. P. A. 833, 837, 140 F.2d 669, 60 USPQ 453, which in turn cites In re Farrand, 18 C.C.P.A. 1452, 49 F.2d 1035, 9 U.S.P.Q. (BNA) 330 and In re Zalkind, 28 C.C.P.A. 959, 118 F.2d 356, 49 U.S.P.Q. 97, discussed above.
7. The principle has been often stated by this and other courts that generally rejected claims may not properly be measured by allowed claims in order to determine the patentability of the former, but must be considered in the light of their own limitations or lack of limitations. In re Zalkind, 49 USPQ 97 (CCPA 1941).
In re Zalkind has been discussed above.
8. Rejected claims cannot be allowed merely because a substantially similar claim in the same or in other applications had been allowed in the Patent Office. In re Oakes, 140 F.2d 669, 31 C.C.P.A. 833 (1944).
In re Oakes cites In re Farrand, 18 C.C.P.A. 1452, 49 F.2d 1035, 9 U.S.P.Q. (BNA) 330 and In re Zalkind, 28 C.C.P.A. 959, 118 F.2d 356, 49 U.S.P.Q. 97, discussed above.
9. “To the extent any error has been made in the rejection or issuance of claims in a particular application, PTO and its examiners are not bound to repeat that error in subsequent applications,” Ex parte Tayama, 24 USPQ2d 1614 (Bd. Pat. App. & Int. 1992).
In Ex Parte Tayama, the applicant attempted to claim an icon for a set up operation. There was no article of manufacture mentioned and the claim was rejected under 35 U.S.C. 171 for non-statutory subject matter. The Applicant argued that the patent office previously had issued design patents to purportedly similar subject matter. The Board rejected the argument and stated:
“We recognize that patents have issued directed to designs referred to as icons. However, appellant has not cited any authority which holds that the issuance of a patent has any significant precedential value. In evaluating compliance with 35 U.S.C. § 171, each design application must be evaluated on the record developed in the PTO. See, In re Gyurik, 596 F.2d 1012, 1018 n. 15, 201 USPQ 552, 558 n. 15 (CCPA 1979); In re Phillips, 315 F.2d 943, 137 USPQ 369 (CCPA 1963). To the extent any error has been made in the rejection or issuance of claims in a particular application, PTO and its examiners are not bound to repeat that error in subsequent applications. Accord, In re Cooper, 254 F.2d 611, 617, 117 USPQ 396, 401 (CCPA), cert. denied 358 U.S. 840 (1958) (Decision in a trademark application in accordance with law is not governed by possibly erroneous past decisions of the Patent Office); In re Zahn, 617 F.2d at 267, 204 USPQ at 995 (“[W]e are not saying the issuance of one patent is a precedent of much moment.”) Compliance with § 171 requires analysis of the statute and interpreting case law. Mere reference to possibly contrary decisions of an examiner in other applications, applications which do not even discuss the issue raised, are not helpful in this analysis. We fully agree with appellant’s statement in the supplemental reply brief that “the issue of design patentability should most certainly be decided based upon legal precedent and principles….”
Ex Parte Tayama at *4.
Properly read, Ex Parte Tayama stands for the principle that when a practice is in clear violation of statutory principles, the practice cannot continue merely because it has been done before. But the case does not say that a prior practice that is not in clear violation of a statutory principle should not be considered.
10. “The fact that the PTO may have failed to adhere to a statutory mandate over an extended period of time does not justify its continuing to do so.” In re Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1849 (Fed. Cir. 1994).
In re Donaldson is similar to Ex Parte Tayama in that it involved the Patent Office’s failure to adhere to a statutory mandate. In this case, the Patent Office had misinterpreted 35 U.S.C. § 112, Paragraph Six, regarding means plus function claims. The Court stated “[t]he fact that the PTO may have failed to adhere to a statutory mandate over an extended period of time does not justify its continuing to do so.” Id. at 1193.
11. “[W]e are not saying the issuance of one patent is a precedent of much moment.” In re Zahn, 617 F.2d 261, 267, 204 USPQ 988, 995 (CCPA 1980).
In re Zahn approved portion claiming. When arguing that portion claiming should not be allowed, the Board cited Ex parte Northup and stated:
“The only precedent relied on by the examiner was the 1932 board decision in Ex parte Northup, which appears to us to have been inconsistent with the contemporaneous act of the PTO in issuing Northup patent No. D- 89,448, referred to in the opinion in that case. The board there said Northup could not claim the design for the “forward corner” of an automobile body because it was not “a complete article of manufacture,” since it was “never manufactured and sold as a separate article of manufacture.” Patent D- 89,448, as here, has a claim referring to a complete article, namely, “an automobile body” but when the claim is read, as it must be, in conjunction with the specification and drawing, it is clear that the claim is for the design of the windshield portion only, which is shown in solid lines in the drawing, all the rest of the body being in dotted or broken lines. One board decision is not binding on the construction of a statute; and, of course, we are not saying the issuance of one patent is a precedent of much moment. Both are no more than food for thought. We turn for guidance to a higher authority.”
Id. at 267.
None of these cases stand for the proposition that prior patents and applications should not be considered, only that they should not be considered controlling.
Please note this post is for general informational purposes only. It is not legal advice and does not create an attorney client relationship.
