Patent Practice Tip


Check this out.  We analyzed 10,442,614 office actions issued by the USPTO in order to determine how often examiners provide an indication of allowable subject matter limited to one or more allowed dependent claims.  This scenario is consistent with that notorious examiner text blip that goes something like: “…claim x is rejected as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.”  As is shown in the chart above, just over 14% of all office actions were found to include this allowable dependent claim scenario.

Fascinating!  But let’s drill down.  What might the trend look like through the lens of one specific corporate patent portfolio?  To answer that question, we limited the data to the patent portfolio owned by Boston Scientific, as in the medical device company with headquarters located in our favorite state of Minnesota.  The allowable subject matter pattern for this company followed a relatively similar trend line:


Now. let’s go one step further.  Let’s drill down to one single examiner who often handles Boston Scientific applications.  That examiner is Christine Hopkins Matthews.  Here are some interesting numbers for Ms. Hopkins:

2087   =   Total number office actions written across her entire docket of 802 applications

303    =   Total number of office actions she has written across the 73 Boston Scientific applications that she has handled

34%  =   Percentage of the 303 Boston Scientific office actions in which she included an allowable dependent claim (104 of the 303 office actions)

BEST PRACTICE?  This begs the question:  Would it not be a good idea to proactively optimize every dependent claim pending in front of an examiner prone to frequently allowing dependent claims?  It is certainly possible now to know which examiners demonstrate such a propensity.  So, should you not flag applications assigned to such an examiner for a dependent claim review during the earliest stages of prosecution?  How much claim value may Boston Scientific have given away unnecessarily by accepting allowance of less than ideal dependent claims?


Patent Appeal Shocker


This drawing comes from U.S. Patent No. 6,058,391.  This drawing from that patent was at the center of an appeal to the Board in application 14/056,491.  The attorney that handled this application was David D’Zurilla (Reg. No. 36,776), from the Schwegman law firm in Minneapolis, Minnesota.  On a VERY high level, the claims in the application pertain to how data is stored in tables.  The primary claim at issue on appeal looks like this:


What is remarkable about the appeal decision here is the Board’s willingness to step up and defend a software claim based on a plain language argument.  The Board proves to be unwilling to interpret the prior art in the abstract manner proposed by the examiner.  The decision is remarkable because, at least from our perspective, the USPTO has shot down tens of thousands of software patent applications where the language-claim mismatch was just as egregious.  Let us show you what we mean.

The examiner in the appeal of the ‘491 application made an argument in relation to the table depicted above in the prior art FIG. 6B drawing.  The examiner took the position that this drawing is evidence of “receiving a plurality of database tables from a plurality of different, independent third party clients in different industries.”  The argument was that the different departments shown in the table correspond to different industries.

Attorney D’Zurilla responds to this argument by pointing out that the departments shown in the table of FIG. 6B come from a single company.  The position taken is that departments within a single company are not in different industries, as claimed.  This certain seems like a logical position.  But we rarely see the USPTO be very friendly when an argument like this is made in a software patent application.

It is almost unbelievable but the Board decides to grant all claims.  They affirm that position that departments within a company or not from different industries.  Then, they simply say:

“We are constrained by the record and accordingly, we reverse the anticipation rejection of claims 1-7 and 9-20. Subsequently, we reverse the obviousness rejection of dependent claim 8 for the same reasons.”

Boom!  All claims allowed.  But what in the heck is going on here?!  It is not the experience of the authors of this article to get such fair treatment from the USPTO on a language technicality in a software patent application.  It seems like the Board is rebuking this examiner for not doing very good work.  But what about the hundreds of times that I have argued in my software applications that the cited prior art does not show what the examiner argues is the same as what is plainly recited in my claim?



Patent Practice Tip


This drawing comes from application 13/691,176 filed by General Mills, which happens to have its world headquarters in our favorite city of Minneapolis, Minnesota.  This application was handled by Attorney Everett G. Diederiks, Jr. (Reg. No. 33,323).  Mr. Diederiks is with the Virginia law firm of Diederiks & Whitelaw.

The title of the ‘176 application is “Shelf-Stable Food Product.”  The invention is essentially a method of making a cake ball.  Element 10 in this Figure above is the cake ball.  To make it, some shortening based slimy stuff 16 is mixed with some cake crumbs 14 and covered by something yummy like a chocolate layer 11.  As you can imagine, the claims pertain to certain ingredients being combined at certain ratios, etc.  You get the idea, right?

This case caught our attention due to an interesting exchange between the Board and Attorney Diederiks.

In his appeal brief, Mr. Diederiks argues that the examiner’s proposed combination of references fails to specifically teach or suggest a claimed combination of dehydrated cake crumbs and shortening mixture having a certain moisture profile.  Particular emphasis is given to the recitation that the cake crumbs are claimed so as to requirE “a water activity of 0.2 to 0.6.”  Mr. Diederiks further argues that the Examiner simply declared the moisture profile obvious without providing any specific corresponding teaching or suggestion in the references themselves.  Mr. Diederiks provides case law that supports the position that rejecting a claim on a combination of references is improper when the combination is missing a recited claim element, and if the record also lacks substantial evidence to support the position that the missing element is still an obvious part of the proposed combination.  Mr. Diederiks argues: 1) that the cited references fail to teach the claimed moisture profile; and 2) that the examiner failed to provide proper evidence that the claimed moisture profile obviously achievable or even desirable.

The examiner does seem to struggle with the fact that the cited references do not specifically teach crumbs having the claimed water activity of 0.2 to 0.6.  In the Answer to Mr. Diederiks appeal brief, the examiner does a lot of hand waving.  The relevant arguments made by the examiner are as follows:


From the examiner’s perspective, the Leavitt reference mentions a preference for stale crumbs, so therefore the claimed range can be assumed.  Alternatively, it is argued that the Beuchat reference teaches the goal of lower moisture to prevent microbial growth, so therefor the claimed range can be assumed.  Suffice it to say that Mr. Diederiks was not satisfied with these arguments.  He decides to file a Replay Brief and he responds to the examiner’s position in this way:


Accordingly, this case seemed to go to the Board with a legitimate question as to whether there was enough of a teaching and suggestion in the cited references to support the conclusion that the not specifically taught moisture range limitation is alternatively enough obvious to reasonably prohibit patentability.

So, what did the Board do with this issue?!

The Board’s decision was issued on July 12, 2018.  They affirmed the examiner’s position.  A copy of the decision can be accessed by clicking on this link:


But how exactly did they respond to the particular issue noted above?  With all do respect, the approach they took there seems a bit unfair.  First, they side stepped the issue by instead accusing Mr. Diederiks of “failing to identify error in the examiner’s finding and conclusions.”  They say that Mr. Diederiks noted the lack of teaching of the specifically recited claim elements without making any argument against the examiner’s assertion that the claimed ranges should be implied.  What?  Did Mr. Diederiks not argue that the examiner did not make an acceptable argument in support of a missing claim element so therefore the missing claim element is not excusable?  Is not arguing that the examiner’s support is insufficient an appropriate and acceptable position to take?  Why did they refuse to weigh whether the examiner’s position was sufficient at least because Mr. Diederiks specifically argued that it was not?

But the Board does not stop there.  They also take issue with Mr. Diederiks argument in the replay brief that water activity affects other properties such as mouthfeel so should not be considered in isolation.  The Board decides that Mr. Diederiks failed by not providing an explanation as to why these arguments were” necessitated by the Examiner’s Answer or could not have been presented in the principal brief.”  In other words, the Board refuses to even consider the argument because it allegedly is untimely and irrelevant due to being presented inappropriately in a reply brief in the absence of good cause under 37 C.F.R. § 41.41 (b)(2)(2015).  But was Mr. Diederiks comment about mouthfeel not provided as a minor example directly in response to the speculative arguments made by the examiner in the Answer Brief?  Is this really the intent of Section 41(b), which reads:


What exactly are practitioners supposed to take away from this Board decision in terms of learning about best practice?  They seem to be saying that it is insufficient to argue that an examiner’s position as to inference of a not specifically taught claim element is not an acceptable approach.  They also seem to be saying that 37 C.F.R. 41.41(b)(2) is going to be very narrowly construed in terms of what issues can be raised in a Reply to an Examiner’s Answer.

It is hard not to think that instead the Board was working really hard to find a way to side step some decent arguments presented by Mr. Diederiks.  Anyone else have any thoughts or opinions?




Getting Stoned Patent


Today we stumbled across a patent (# 10,194,692) that just recently issued (February 5, 2019) for a ‘Device for Vaporizing a Substance.’  The case was handled by attorney Kathleen Ott, who practices at the Minneapolis law firm of Merchant and Gould.  The apparent inventor and owner of the technology would seem to be an individual from Colorado (no laughing please).  There was a claim of micro entity status, which requires a gross income of less than $184,116.  Who knows though?  That might change quickly once consumers get their hands (lips?) on this beauty of a product.

The inventor in this case would seem to prefer that the device be referred to as a “FLASH DAB.”  Here is how it works.  Tube 15 slides to the right, which causes some parts attached to tube 10 to pop out of distal end 11.  It then looks like this:


Tube 10 is hollow.  A basket 16 is placed in its end, as shown here in FIG. 2.  The basket 16 is open on one side but is crimped closed on the side of the basket 16 that is shoved into tube 10.  The next thing that happens is that the user places a drug of choice into basket 16.  Then, tube 15 is slid back into place, except that a little piece of basket 16 is left hanging out.  The inventor calls that little piece “the wick.”  Anyway, the user holds a flame up to the wick so as to heat the whole basket 16.  This causes the drug to vaporize.  The user sucks the vapor through the proximal end 12 of tube 10.  And of course, the user inhales the vapor in order to fly like an eagle into the future.  Know what we’re sayin’?

The authors are admittedly naive when it comes to drug use.  Thus, we consulted with our expert drug correspondent, whom we will simply call Ray McDingle in order to protect his true identity (for obvious reasons).  We asked Mr. McDingle a single question which was “what in the hell is going on here?!”

Mr. McDingle told us that the inventor likes the “FLASH DAB” description of the invention because there is a category of drugs called “dabs.”  A dab is apparently a highly concentrated marijuana like substance that is commonly provided in a wax form.  It thus makes sense that a bit of dab would be placed in the basket and would vaporize when the wick is heated.  According to Mr. McDingle, and according to the specification of the ‘205 application, there are advantages to this flash dab configuration over products in the electronic cigarette category that may also be used for consuming dab (also apparently known as “dabbing.”).  Hide your children, folks.

Well, there you go.  You learn something new every day!







Patent Pending Firm Portfolio

We have a tendency on this blog to gravitate to utilizing the Minneapolis law firm of Schwegman, Lundberg & Woessner as an example.  There really is no reason for that other than serving as a relatable frame of reference, as they are a relatively large firm dedicated exclusively (for the most part) to the practice of patent law.  There is no alternative motive.  So, please do not assume otherwise.

Anyway, today we will take a look at a few interesting aspects of the Schwegman portfolio of presently pending applications.  Here is a breakdown of that portfolio sorted into annual buckets based on filing date:


For the record, the total number of Schwegman pending applications represented in this chart is 5,955.  It makes sense for the earliest annual buckets to be lightly populated because most applications filed in those years have now been granted or abandoned.  It also makes sense that 2018 is not as populated as 2016/2017 because many of the most recent applications have not yet been published.  Such applications would not yet be on our radar screen.

Moving on, we next sorted the Schwegman pending portfolio into buckets based on the number of office actions issued in each application so far:



It is also interesting to consider how the Schwegman pending portfolio is divided across different technology areas.  In order to do this, we identified how applications are proportioned across the eight art units to which their applications are assigned most frequently.  That data looks like this:



This is not terribly informative.  Several of these art units are in the same Tech Center Groups (e.g., 3791 and 3792).  Practically speaking, their primary technology categorizations boil down to surgery, mechanical/manufacturing, and software.  This makes sense and is consistent with our previous post about the makeup of clients in the Schwegman portfolio.  Following is a link to that post:

The Schwegman Firm is incredibly well diversified!

For the final perspective on the portfolio, we distributed the applications into buckets based on the overall allowance rate of the examiner assigned to each application.  Those of you that know the authors of this blog well will know how little respect we have for allowance rate as a practically useful metric.  That being said, in this format, it is at least interesting.






Patent Practice Tip


This drawing comes from application n 14/595,771 handled by the Minneapolis law firm of Dicke, Billig & Czaja.  The owner of the application is a Minnesota company called Inspire Medical Systems.  According to the company’s website, they specialize in technology that helps people sleep more soundly.

The title of the ‘771 application is “Nerve Cuff.”  Element 501 in this Figure is probably a nerve of some sort.  Element 504 is probably a cuff of some sort.  Or something like that.  You get the idea.

This case caught our attention due to an interesting argument made by Attorney Paul Grunzweig in his appeal brief.  Independent claim 12 was rejected as being obvious in view of a proposed combination of references.  Mr. Grunzweig attached the proposed combination as being non-analogous and therefore not reasonably combinable.  In essence, he accused the examiner of doing exactly what the KSR case law says you cannot do, namely, supporting a conclusion of obviousness simply by demonstrating that each of element of the claim was, independently, known in the prior art.  Mr. Grunzweig further contends that the cited references are actually divergent in their teachings, and thus one of ordinary skill in the art would not arrive at the subject matter of the independent claim 12 absent improper hindsight reconstruction.

These issues went to the Board.  Not surprisingly, the Board wasted no time in concluding that the proposed combination of references were adequately analogous.  We rarely have seen the Board unwilling to quickly conclude that references come from the same field of endeavor and are reasonably pertinent to the problem the applicant is trying to solve.  This seems like a tough argument to win on appeal.

The Board did go on to say something that was perhaps more interesting.  Following is an excerpt from the Board’s decision:


The Board seems to be suggesting that Applicant failed by not pointing to specific sections of its own Specification in order to prove the examiner’s use of improper hindsight.  So there is the practice tip of the day.  It would seem that the Board is willing to consider citations of your own Specification as evidence of the Examiner’s state of mind.  To be fair, the Board did infer that the cited passages must teach something that is neither taught nor suggested by the prior art references themselves.  But that should not be a difficult bar to get over, should it?


Patent Examiner Conflict?

Does it feel icky to have one examiner handling 88 applications from 10 different companies within headquarters located within a 50 mile radius of one another?

Minnesota law firms and patent departments are currently prosecuting 24,016 pending but not yet granted or abandoned U.S. patent applications.  Following is a listing of the patent examiners that are assigned most frequently in that set of applications.  The top ranked examiner, Elizabeth Houston, is handling 166 of the Minnesota applications, and so on and so forth.


Let’s take a closer look Examiner Houston’s docket.  Consider the following breakdown of 83 of the 166 pending applications on her docket:


What do all of these ten companies with pending applications assigned to Examiner Houston have in common?  Every one of these ten companies has a headquarters in Minnesota.

So, what do you think?  Should any consideration be given to a risk of bias in these circumstances?



Patent Prosecution Visualization

Each small square in the following block represents one of the 24,055 pending applications being handled by a law firm or legal department in Minnesota.  The color of the square designates the number of office actions that have been issued in each application.  The darker the box, the higher the number of office actions.  The lightest color signifies zero office actions.  A breakdown of the number/colors is presented beneath the visualization.


Here is the color/number breakdown:



Do any of these numbers surprise you?


Patent Prosecution Data

Over the last 365 days, attorneys in Minnesota law firms and departments have filed 10,628 responses to non-final office actions.  How often have they filed on time?

oneSupposing that the average extension of time fee paid was even a modest $300, that means total payment of extension fees in the amount of:


Over the last 365 days, attorneys in Minnesota law firms and departments have filed 2,797 responses after a final office action.  How often have they filed within two months, thereby securing the associated prosecution advantages?


Over the last 365 days, attorneys in Minnesota law firms and departments have filed 2,169 responses to a restriction requirement.  How often have they filed on time?



Is anyone surprised by any of these numbers?  Please comment.


Solid Work on Appeal


This is a story about a patent application prosecuted by a clever patent attorney that seemingly obtained a great outcome for her client.  The application is U.S. Pat. App. 13/113,174.

The Owner of the ‘174 Application – Amerilab Technologies

The first character in this patent story is Fred Wehling.  Mr. Wehling graduated from South Dakota State University in 1977 with majors in biology and chemistry.  He worked in Minnesota for a veterinary drug manufacturer and then for a human drug manufacturer.  In 1986, he founded his own pharmaceutical company called CIMA Labs, Inc.  The CIMA company manufactured effervescent tablet products (similar to products like Alka Seltzer).  Mr. Wehling helped take the company public, though he himself transitioned out in 1992.  The CIMA company was eventually purchased in 2004 by Cephalon (a Pennsylvania company) for around $515 million.  The Cephalon company went on to be purchased in 2011 by an Israel-based pharma company (Teva) for around $6.8 billion.

Mr. Wehling founded a new Minnesota based effervescent tablet company in 1996.  The new company is called Amerilab Technologies.  Mr. Wehling is still now the CEO of Amerilab.  And Amerilab is the apparent owner of the ‘174 application that is at the heart of this story.

The Invention


Have you ever made a tasty Jell-O brand gelatin dessert?  If yes, you probably remember boiling and stirring liquid on a hot stove.  Then, that hot liquid had to be transferred from the pan into some sort of alternate container such as a bowl or mold.  It is a bit like being a blacksmith in the kitchen but working with scalding hot tasty liquid instead of smelted metal.  The point is that making a Jell-O snack can be a risky operation.

The Specification of the ‘174 application describes a similar but different method of making a gelled composition.  The method includes using an effervescent tablet containing gelatin instead of something like that powder that your mom let you dump out of that little Jell-O box.  The tablet simplifies the process at least because it does not require creating and then transferring a scalding hot liquid.  According to the Specification, “[t]he single serving and single dose formulations of the invention provide gelatin in a form that enables consumers to easily prepare a dessert or a tasty vehicle for delivering an active agent such as a medicament or a vitamin.”

The Attorney

The hero in this story is Allison Johnson, the owner and founder of Allison Johnson, P.A. (  Ms. Johnson is the attorney who prosecuted the ‘174 application on behalf of Amerilab Technologies.  She was awarded a chemistry degree with honors from the University of Indiana in 1987.  Ms. Johnson worked as a scientist for the Drug Enforcement Administration, G.D. Searle and Northern Telecom.  She obtained a J.D. from Santa Clara University in 1992.  As a lawyer Ms. Johnson worked first in patent litigation at a nationwide litigation firm, and then in patent prosecution at a nationwide patent prosecution firm.

The Prosecution History


The ‘174 application ended up going to appeal when no agreement for allowance was reached after five office actions and an RCE.  Only claims 21—27 and 40-42 reached  appeal.  Claim 21 is illustrative and reproduced below:

21. An effervescent composition comprising:

from about 10 % by weight to about 30 % by weight of an effervescent couple comprising an acid and a base;

from at least 5 % by weight to about 20 % by weight of the acid;

from at least 1 % by weight to about 15 % by weight of the base; and

at least 200 mg of a gelatin that forms a gel, the gelatin comprising gelatin derived from a cow, gelatin derived from a pig, or a mixture thereof,

the effervescent composition forming a gel when the effervescent composition is dissolved in heated water to form an aqueous composition and the aqueous composition is subsequently chilled.

The Examiner


Masterful Arguments

Ms. Johnson made the bold decision to double down on a motivation to combine argument and take it to the Appeal Board.  Perhaps it is has something to do with her background in litigation, or perhaps she is just a darn fine patent attorney.  But one would be hard pressed to find a better approach on appeal in a motivation to combine issue.  She brings laser focus to the primary issue.  And she presents masterful persuasive reasoning in her documents on appeal.

Practitioners young and old are encouraged to read the excellent Reply Brief written, which can be accessed simply by clicking on the following link:

Reply Brief

The Outcome on Appeal

In an Appeal Decision issued on in September of 2017, the Board completely reversed the Examiner.  In other words, the battle was won by Attorney Johnson.  : )  Congratulations to Ms. Johnson, Mr. Wheling, and Amerilab Technologies on the grant of U.S. Patent No. 9,907,324.  Following is a link to the Board’s decision:

Appeal Decision

The New Gelatin Product Line by Amerilab Technologies


This image was extracted from the Amerilab website in order to demonstrate that the patented solution is now seemingly being commercially offered for sale.  This is the way that the patent system should work, right?