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   Art cited in spec but not in IDS--considered?
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   Author  Topic: Art cited in spec but not in IDS--considered?  (Read 1942 times)
Azcatl
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Art cited in spec but not in IDS--considered?
« on: Mar 23rd, 2007, 1:47pm »
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I encountered this odd situation (to me at least).  An application listed 10+ references in the background section and referred to them as "relevant prior art."  The examiner's search turned up three references, cited in a PTO-892.  First O/A rejected claims on two of the examiner's references; after prefunctory applicant response, all claims were allowed.
 
The prior art listed in the background is highly relevant and should have resulted in rejection of most if not all of the claims.
 
Did the examiner consider this art?  Was he required to?  The duty to disclose in Rule 56 is said to be satisfied if art is cited by the examiner or disclosed in an IDS.  But it doesn't say the duty is *not* satisfied merely because the applicant put it in the spec.
 
If anyone has a rule or law citation on this point, I'd appreciate knowing it.
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Isaac
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Re: Art cited in spec but not in IDS--considered?
« Reply #1 on: Mar 23rd, 2007, 2:04pm »
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on Mar 23rd, 2007, 1:47pm, Azcatl wrote:
Did the examiner consider this art?  Was he required to?  The duty to disclose in Rule 56 is said to be satisfied if art is cited by the examiner or disclosed in an IDS.  But it doesn't say the duty is *not* satisfied merely because the applicant put it in the spec.

 
I think the idea that an applicant citing to a reference in the specification and characterizing it at some length would fail to satisfy the duty to disclose the reference to the patent office is not worth spending research effort on.
 
Most likely the examiner's own search turned up tons of references of which the examiner found only a few worth explicitly dismissing on the record.
 
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Isaac
Wiscagent
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Re: Art cited in spec but not in IDS--considered?
« Reply #2 on: Mar 23rd, 2007, 2:28pm »
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Depending on the importance of the case, it may be worthwhile to file an RCE w/IDS (if the patent has not yet granted) or request a reexam to consider the references (if the patent already granted).
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Richard Tanzer
Patent Agent
Azcatl
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Posts: 7
Re: Art cited in spec but not in IDS--considered?
« Reply #3 on: Mar 23rd, 2007, 2:46pm »
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I do agree that the art listed in the spec is "prior art" for all purposes by admission.
 
I didn't state it well, but what I was concerned about was whether this un-cited art had the benefit of any presumption that the examiner considered it and allowed the claims over it.
 
After thinking it through and considering MPEP 2256(C), I think it could be used in a re-exam request anyway.
 
I still wonder why the applicant did it this way.  Was he counting on the usual practice of the examiner not reading the spec?
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Jonathan
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Re: Art cited in spec but not in IDS--considered?
« Reply #4 on: Mar 23rd, 2007, 3:16pm »
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It could also be a case of sloppy prosecution in that they failed to IDS those references listed in the specification.
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