All Citations Are Not the Same – Exploring Examiner Citations from US Patent Documents – Part 3 – Blocking Citations from Patent River

In this post, additional details on examiner citations from US patent documents will be explored by looking at references used to block other, more recent patent applications, during the course of their prosecution.

As mentioned in Part 1 of this series, the US is somewhat unique in expecting applicants to share prior-art that they are aware of with the USPTO. International applications, through the PCT or the EPO, do not have this requirement, so the only source of citations are those coming from the examiner. On the search reports that accompany these documents, the examiners also provide details on how the documents cited apply to the application being examined and which claims the reference(s) cover. While there are several categories assigned to the prior-art identified by international examiners, there are two that are considered particularly relevant to the examination process. These are labeled as X or Y documents with the following definitions:

Category “X” is applicable where a document is such that when taken alone, a claimed invention cannot be considered novel or cannot be considered to involve an inventive step.

Category “Y” is applicable where a document is such that a claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art.

The category listing for each reference, in these search reports, is provided within the report and in the electronic version of the data supplied by the offices. As such, this additional detail can often be found in the database records associated with patent search vendors. Examples of these X and Y documents were seen in Part 2 of this series, in the table of citation types that was generated from Refine using the Citing Reference Details – Patent field from Thomson Innovation.

Unfortunately, with the US data on Form 892, the listing of reference cited by the examiner, there is no categorization of the references discovered. Because of this, there is no way to identify the relevance of the individual documents to the examination process, from the form itself. Ordinarily, a user will need to access Public PAIR, download the Office Actions associated with the prosecution of the application, and look up which references were used against the individual claims and how they were applied. This is a time-consuming process, especially when a large number of documents need to be mined.

When it comes to rejections within US Office Actions involving prior-art references, there are generally two types that are seen, these are referred to in shorthand as 102 and 103. They refer to the appropriate paragraphs of 35 U.S.C.; 35 USC § 102 – Conditions for patentability; novelty and loss of right to patent; and 35 USC § 103 – Conditions for patentability; non-obvious subject matter. These are typically cited by the examiner, in an Office Action, as follows:

Claim Rejections – 35 USC §102

The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:

A person shall be entitled to a patent unless –

(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.

Claim Rejections – 35 CISC § 103

The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Since 102 and 103 references result in rejections of pending patent applications they have been referred to as “blocking citations”. Often times, applicants will have to cancel claims or rewrite them in order to avoid these references, so they can be considered as being particularly relevant to the case at hand. References can also be listed on Form 892, if they were “made of record but not considered by the examiner” or if they were found by the examiner but not mentioned in an Office Action at all. These are still relevant to the case at hand, since they were discovered by the examiner, but they are not considered blocking, per se.

As mentioned, categories, such as 102, 103 or Other, are not found on Form 892 and previously had to be looked up by downloading non-final and final Office Actions from Public PAIR. Recently, a service called Patent River, has launched that provides information on blocking citations, or Forward Rejections as they refer to them, for US patent documents. The company accomplishes this by collecting data from a variety of public sources and compiling reports on the 102 and 103 rejections associated with a patent or portfolio of interest. From their website, Patent River describe their Rejection Report service as follows:

Rejection Reports give you exact, concrete data about every published instance where your subject (patent or published application) was the reason your competitor’s application was rejected.  While others provide “Forward citation reports” that are a laundry list of search results, we strictly report only those instances where an examiner has rejected a competitor’s application explicitly citing your subject as the reason for the rejection.  Rejection reports present all the details:  date, reason, assignee, and searchable copies of all associated documents.

Looking at the Allure Energy portfolio, as started in Part 2 of this series, it was discovered that the majority of the forward citations to this portfolio were coming from examiners. While this was recognized, data was not provided on whether these rejections were of the “Other” variety or if they were “blocking citations” that led to a 102 or 103 rejection. A Rejection Report from Patent River can identify this key distinction between these categories. All examiner citations have value, since they are highly likely to be on target, but forward rejections can prove especially valuable in business discussions, especially if the blocking art leads to an abandonment or a significant narrowing of the claims of an application.

A page from the Rejection Report on the Allure Energy Portfolio provides the following details:

A Page from Patent River’s Rejection Report on the Allure Energy Patent Portfolio – click to enlarge

The report provides the Allure Energy document that led to the rejection, the assignee of the application at issue, the application number at issue and the current status of the document. It also provides the type of rejection, when the rejection was generated, whether it was a final or non-final rejection, whether the claims were amended in the response and if the rejection led to an abandonment. Finally, and perhaps most importantly, the report contains a link for downloading the specific Office Action, from the file wrapper that documents the rejection. The applicant response and amended claims are also available for download from Patent River.

It can be seen, in the Allure Energy case, that as of the date the report was generated, there are several 103 and at least one 102 examples, where a document from the portfolio was a blocking citation against another application. It can also be seen that while Allure has a relatively large portfolio, only seven of the documents have been used as the basis of a rejection and that US8,024,073 is used most frequently, to date.

102 rejections are especially powerful, and we see an example of one of these involving application number 13/087,139, assigned to Raytheon. The text from the Office Action associated with this rejection demonstrates the critical nature of the Allure Energy art to the case:

Claims 1-23 are rejected under 35 U.S.C. 102(e) as being clearly anticipated by Imes et al. US 2011/0051823 (“Imes”).

For example, Imes discloses:

A power administration system, comprising:

a memory module (e.g., Fig. 4 #404) storing power management data for managing a

plurality elements of a first power environment, the elements of the first power environment comprising a power system, one or more sensors, and one or more power consumers; …

So, in this case, all 23 of the Raytheon claims have been rejected solely on the basis of the Allure Energy document. It is important to keep in mind that this is a non-final rejection, and Raytheon will respond by amending claims and/or making an argument for why the examiner was mistaken when they applied the Allure Energy art to their case. While the information we have so far is critical, and potentially valuable, the process of examination is not complete.

103 rejections are also relevant, and there are several of them including application number 13/224,708. In this case the text from the Office Action reads as follows:

Claims 1-12 are rejected under 35 U.S.C. 103(a) as being unpatentable over United Kingdom Patent Publication No. GB 2 448 896 A (hereinafter Boait) in view of U.S. Patent Publication No. 2010/0076613 A l (hereinafter Imes) in further view of U.S Patent No. 2011/0231320 Al (hereinafter Irving).

Boait is the primary reference, but it needs to be used in combination with an Allure Energy document, in order to support a rejection based on obviousness. This application has not been abandoned to date, but the organization involved did respond to the initial non-final rejection, and amended their claims. Once again, the examination process is not finished but the Allure Energy document is having an impact on the prosecution of the application.

Rejection Reports can be obtained by contacting Patent River directly, by email at mike@patentriver.com or by ordering Composite Patent Rejection reports from PantrosIP.

While the Allure Energy portfolio is relatively young, it appears to be having an impact on the prosecution of later-filed patent applications, in the same area of technology. This has significant ramifications for understanding how valuable this portfolio could be and which organizations might be interested in hearing more about it. During the course of this series, we have looked at forward citations and progressively recognized additional value associated with various ways that they can be categorized. Applicant citations can be very informative but there is a higher likelihood of relevance when looking at citations from an examiner. Additional business opportunities present themselves when it is discovered that the examiner citations are blocking and potentially keeping another organization from generating patents themselves. Armed with this degree of delineation, patent analysts can construct powerful arguments regarding the business potential of patent documents and portfolios based on the categories of citations discovered.

Comments 4

  1. On the Patent Valuation LinkedIn group Mark Graham made the following comments that I thought were interesting:

    The matter of forward citations and such seems to me to be really interesting. But isn’t it sort of a sideshow relative to the meat and potatoes of determining the true value of a patent portfolio.

    From my experience, the basic approach of determining patent “value” lies in first assessing the nexus between the scope of the broader independent claims of the patents and the commercially valuable embodiments of the technology. Once that is done, the inquiry should then turn to projecting the dollar value of the market for these commercial embodiments over the term (or remaining term) of the patents that protect the owner’s commercial exploitation of those embodiments in jurisdictions where such patents are in force.

    Within this broad framework, one has to apply appropriate discount factors and other objectively reasonable assumptions, adjustments, etc., specific to the situation at hand, but I have found this “Scope Nexus Applied to Market Value” approach to be an exceedingly more appropriate way to determine the true economic value of a patent portfolio.

    I am a Patent Lawyer, and the citation thing and other such inquiries would naturally appeal to me if I really thought they would make a meaningful contribution to determining patent value. But I just don’t see it.

    Mark Graham, Esq.

    1. I could not agree with you more and I even wrote a previous post on claim shaping and the importance of claim drafting to business process and patent value.

      Part of the rational for creating this series on examiner citations was that I felt that citations coming from examiners had a higher likelihood of being relevant since they were assessed by a human being who is familiar with the technology. There can be issues with relevance when considering the citations coming from the applicant. Being able to separate examiner and applicant citations used to be difficult but now can be done reasonably easily.

      As for overall value, I think citation analysis can play a role, especially in regards to understanding impact within an industry. If a patent has 50 forward rejections associated with it from 30 different companies, some of whom might be in radically different industries, then that provides a list of 30 people who might have some interest in having a conversation. Meanwhile, without citations more work needs to be done to identify interested parties and divergent uses might not be explored.

      Thanks,
      Tony

  2. On the IP-Backed Finance Research LinkedIn group Stephen Robertson made the following comments that I thought were interesting:

    Thanks Tony – citation analysis is an interesting area but one in which I don’t claim to know a great deal of knowledge except that backward and forward citations are I know seen as indicators used in valuing a patent – forward citations being linked to the number of citations and who is cited as possible infringers of your patent.

    Furthermore in recent discussions with IP Finance providers in the US, they stated they also constructed a patent value score incorporating citation analysis and amongst other things (i) the construction of the patent claims and (2) evidence of amendments to claims during patent prosecution – now who said patent valuation was black magic!

    1. Stephen – Thanks for the comment. I agree that patent citations are only one piece of a bigger picture when it comes to valuation. I hope the series helps being distinguish the types of citations available and how to apply them.

      I have also written some posts on claim shaping and file wrapper analysis and how they pertain to potential valuations on my site. Let me know if you would like me to post the links to these here.

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