Thursday, September 17, 2009

Advice on the "background" section of a patent application

from the 12:01Tuesday blog:

If you are going to have a "Background" section, try to keep it SHORTER than the rest of the specification. Remember that the Background is the one section that is not required by statute (i.e., 112) or rule (e.g., 1.71 - 1.75), yet it is the one section that is admitted prior art. You do the math.

Note also from a post from Baker & Botts:

But should a patent application specifically reference the prior art, eg, should the background section of the patent applica
tion specifically identify the closest prior art, and attempt to point out distinctions between the invention and the prior art? Some patent drafters commonly elect to include this sort of characterization in the background of a patent application. Given that this specific identification and discussion of the prior art is purely optional — MPEP §608.01(c) only requires that the background include a brief general statement of the field of art to which the invention pertains — is this a good practice or a mistake?

Our position is that this practice is a mistake because it is risky and unnecessary.

IPBiz gives further information:

** 37 CFR §1.71 Detailed description and specification of the invention.

The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.


The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.

**37 CFR §1.72 Title and abstract.

The title of the invention may not exceed 500 characters in length and must be as short and specific as possible. Characters that cannot be captured and recorded in the Office's automated information systems may not be reflected in the Office's records in such systems or in documents created by the Office. Unless the title is supplied in an application data sheet (§ 1.76), the title of the invention should appear as a heading on the first page of the specification.

A brief abstract of the technical disclosure in the specification must commence on a separate sheet, preferably following the claims, under the heading "Abstract" or "Abstract of the Disclosure." The sheet or sheets presenting the abstract may not include other parts of the application or other material. The abstract in an application filed under 35 U.S.C. 111 may not exceed 150 words in length. The purpose of the abstract is to enable the United States Patent and Trademark Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.

**37 CFR §1.73 Summary of the invention.
A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, should precede the detailed description. Such summary should, when set forth, be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.

**37 CFR §1.74 Reference to drawings.
When there are drawings, there shall be a brief description of the several views of the drawings and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures and to the different parts by use of reference letters or numerals (preferably the latter).

**37 CFR § 1.75 Claim(s).

(a) The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.

(b) More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.

(c) One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim ("multiple dependent claim") shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purposes under § 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have paid therein the fee set forth in § 1.16(j). Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered.

**from an intelproplaw forum on Applicant's Admitted Prior Art (AAPA) in August 2009:

I have seen examiner's make 103 rejections, where one of the references is AAPA. This is usually based on a Background statement. It sounds so prejudicial to the applicant, that I hate repeating it (as in, "claims x, y, and z stand rejected over Smith in view of AAPA"). It's as if I concede it as an admission of prior art. Anyone have a clever way of recharacterizing the term for use in responses?

One comment: On the other hand, if you've called stuff "conventional", "notoriously old and well known" or "part of our national heritage" it probably doesn't matter what section of your application you've put it in.

**From patentablydefined:

Many applications, not incorrectly or improperly, discuss known art when explaining the need for the solution provided by a claimed invention. Typically, these discussions, located in the background section of the application, are fair game to apply against the claims of the application. And, when cited by an Examiner, these discussions are commonly characterized as “Applicant’s Admitted Prior Art (AAPA).”

Even if this characterization by the Examiner is not incorrect, a practitioner, as an advocate for an applicant, can produce a far more valuable prosecution history by using a more benign characterization of any such discussion. Like the term “limitation,” based on my experience, for some reason, judges and juries seem to attach increased significance to the word “admitted.” So, when possible, I usually characterize art discussed in an application as “conventional.” Thus, for example, I may write:

Claim 1 stands rejected under 35 U.S.C. 102 as anticipated by the widget discussed in the background section of Applicant’s disclosure (hereinafter “the conventional widget”).

* * * * *
The Office Action contends that the conventional widget includes the aforementioned feature of independent claim 1.

**From page 54 of Michael H. Jester's book: "The USPTO may deem statements made in the background section to be admitted prior art."

**From US 20090030906:

The subject matter discussed in the background section should not be assumed to be prior art merely as a result of its mention in the background section. Similarly, a problem mentioned in the background section or associated with the subject matter of the background section should not be assumed to have been previously recognized in the prior art. The subject matter in the background section merely represents different approaches, which in and of themselves may also be inventions.

**Also from Baker & Botts:

Mistake #5: Using Inconsistent
Terminology in the Specification
and the Claims — Don’t Confuse
the Markman Hearing


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