Patent Law

Appeal Brief Summary

By Gary Odom and Jordan Kuhn

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Below, an example, from an unpublished application that is a continuation of 7,016,942.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.

(V) SUMMARY OF CLAIMED SUBJECT MATTER

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

(A) EXPLANATION

    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.

(B) CLAIM CHART WITH SPECIFICATION SUPPORT

Claim	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]

Full post as published by The Patent Prospector on May 02, 2008 (boomark / email).