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May 1, 2008

Appeal Brief Summary

In the past few years, patent examiners increasingly nitpick, sticklers for the rules and beyond. Appeals are burgeoning, as are non-compliance notices for appeal briefs under MPEP 1205.03. A common area for complaint is the summary: either too little or too much. A good answer is to give both.

37 CFR 41.37 covers appeal briefs. The summary is section (v).

(v) Summary of claimed subject matter. A concise explanation of the subject matter defined in each of the independent claims involved in the appeal, which shall refer to the specification by page and line number, and to the drawing, if any, by reference characters. For each independent claim involved in the appeal and for each dependent claim argued separately under the provisions of paragraph (c)(1)(vii) of this section, every means plus function and step plus function as permitted by 35 U.S.C. 112, sixth paragraph, must be identified and the structure, material, or acts described in the specification as corresponding to each claimed function must be set forth with reference to the specification by page and line number, and to the drawing, if any, by reference characters.

You want to provide an overview for the board, so they can readily comprehend the subject matter, and yet show complete specification support. Conflicting goals. So, first provide an explanation that sprinkles in references to figures and the disclosure. Then, give a claim chart with comprehensive specification support citation.

Below, an example, from an unpublished application that is a continuation of 7,016,942. '942 sailed to allowance a couple of years ago after a non-final action, but the same examiner took the continuation to appeal with a rather lousy prior art reference. The examiner corps is like a jar of bees that has been shaken up.


    Figure items are referenced as Fig. #:item (e.g. Fig. 1:50 for Figure 1, item 50).


    Claimed are methods for altering communication or data exchange modes between networked computers. Three computers are involved: a claimed first computer acting as a server; a claimed second computer, acting as a client in a client/server environment, then as a peer or dynamic host in a peer-to-peer network; and a claimed third computer, acting as a client in a client/server environment, then as a peer or dynamic host in a peer-to-peer network. For a simple example: Fig. 9:7 = second computer; Fig. 9:37a = first computer; Fig. 9:4c = third computer.

    An event (claim 1), or data-based trigger (claim 2) or determination (claim 3) occurs to alter mode from client/server to peer-to-peer. Fig. 8:60 depicts such an event. Fig. 4:22 depicts "offloading" for the server, relieving the server of acting as a communications/data-exchange hub, switching to dynamic hosting in a peer-to-peer environ.

    [0024] is a scenario overview. [0032] discloses transition from client/server to peer-to-peer. [0040]-[0041] discloses event-precipitated dynamic hosting. [0042]-[0046] discloses a scenario of network gaming employing the claimed invention. [0049]-[0050] describes a conferencing/file-sharing scenario.



Specification Support

1. A process for altering communication modes among computers comprising:

Figs. 2,4,6-9;[0008]-[0052]

a first computer establishing network connectivity with a second computer;

Figs. 2,4,7,8:20,9; [0021],[0024],[0029],[0042],[0050]

said first computer establishing network connectivity with a third computer;

Figs. 2,4,7,8:20,9; [0021],[0024],[0029],[0042]-[0043],[0050]

said first computer indicating to said third computer connectivity of said second computer with said first computer;

Figs. 4:21,8:61; [0021][0027]-[0030],[0042]-[0043]

in a first communication mode, said second computer and said third computer communicating exclusively via said first computer;

Fig. 2,9; [0021],[0024],[0042]-[0043],[0050]

recognizing an event during said first communication mode triggering a change to a second communication mode; and

Fig. 8:60,9; [0025],[0030], [0032],[0040]-[0046], [0048], [0050]

thereby in said second communication mode said second computer and said third computer directly establishing connectivity and communicating without said first computer intervening.

Fig. 6:26,7:37,8:65; [0024],[0031]-[0033],[0036]-[0039],[0048]-[0050]

Posted by Patent Hawk at May 1, 2008 8:16 PM | Prosecution



The table is great, but, you know, if US practitioners could get in the habit of including reference characters in the claims, like many other countries require, the claim table would be redundant in many cases, particularly for mechanical claims.

It's funny, we have such an aversion to putting the reference numerals in the claims in spite of PTO's "all clear" that the numerals do not limit the claims. MPEP 608.01(m) and 2173.05.

It is so much easier for everybody and it almost forces the drafter to comply with 112 (with the exception of claimed limitations that are not shown in figures).

Posted by: Babel Boy at May 2, 2008 8:40 AM

Personally, I would not rely on the PTO's "all clear" regarding anything as substantive as claim construction.

Posted by: ElvisLives at May 2, 2008 11:32 AM

Babel Boy, remember that the CAFC is free to ignore what PTO says in the Rules, let alone what it says in the MPEP. The Rules say that what's in the abstract won't be used to construe the claims, but there are several CAFC decisions where the court did just that, since the court is bound only by the statute. I agree with Elvis, I wouldn't rely on the PTO's "all clear" for claim construction.

Posted by: Dan Feigelson at May 3, 2008 10:13 AM

The current appeal brief rules are a mess, including consistencies with other portions of the Rules. Witness the requirement in the Summary of the Claim Subject Matter that elements/feature be identified by page and line number versus current practice of using paragraph numbers. The Summary of the Claim Subject Matter section of the appeal briefs is interpreted absurdly and often inconsistently by the "nit-pickers" in Appeal Branch of the USPTO. The deficiency statements we get often do not adequately identify what the problem is other than so generally as to be incomprehensible. And the proposed appeal rules will only make this situation worse with, for example, the page limitation requirements, never mind that the absurd interpretation of the Summary of the Claim Subject Matter section requirements may be the cause of adding more pages than is necessary to the appeal brief. The PTO should start focusing on the substance of why we've got so many appeals now (poor Office Actions), and stop this nonsense that form the appeal brief is what will make this better.

Posted by: EG at May 5, 2008 4:40 AM