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   Examiner-generated Prior Art - Conflicts
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   Author  Topic: Examiner-generated Prior Art - Conflicts  (Read 1045 times)
ChrisWhewell
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Examiner-generated Prior Art - Conflicts
« on: May 23rd, 2007, 9:32am »
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Hip-shots for a Wednesday.....
 
1) If an Examiner improperly combines two or more references from the prior art in an attempt to make a prima facie case of obviousness, but Applicant successfully argues and is later awarded a patent, since the Examiner's suggestion to combine, even though in the absence of a T, S, or M, isn't such combination made by the Examiner (the Office Action) then not subsequently available itself as a piece of prior art that other future-filed applictions could be rejected on, under 35 USC 102 or 103 ?
 
2) To the extent that the combination suggested by the Examiner is itself patentable, who owns the rights in and to such combination ?  The Examiner personally ?  The PTO ?  Are such combinations dedicated to the public ?   In certain cases, should they be screened for security purposes ?
One might argue that the Examiner has asserted such combinations as being obvious, but even an Examiner can make a wrongful obviousness assertion.
 
3) Importantly, if the file wrappers of pending, abandoned, and allowed patent cases are in the public domain, and if combinations suggested by Examiners are available as prior art to reject future-filed Applications by other Applicants, then why isn't the PTO requiring these combinations suggested by Examiners, to be classified as the PTO does with other prior art ?  What basis does the PTO have for not classifying as prior art the combinations which its Examiner's generate ?
 
by raising so many such questions, the PTO shoudl stringently enforce prohibition against Examiners wrongfully assembling combinations for the purposes of making section 103 rejections in the absence of some T, S, M, or else begin adding the contents of the combinations Examiner's assemble to the classification index, along with all of the other prior art that the PTO is aware of.
 
 
 
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Chris Whewell, M.S.
ChrisWhewell
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Re: Examiner-generated Prior Art - Conflicts
« Reply #1 on: May 23rd, 2007, 12:13pm »
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This gives you a potential gold mine of prior art, if you have the time, but is do-able with the PAIR system.
 
Imagine, your client is being sued for patent infringment of claim 1 by XYZ Corp.  The trusty agent you've hired to find novelty-destroying prior art pulls the file wrapper of an expired patent owned by PDQ, in which the Examiner had made a wrongful 103 rejection that was successfully argued around.  You find that the combination asserted in the wrongful 103 rejection is anticipatory to claim 1 of XYZ's patent.    Could it happen ?? !!!
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Chris Whewell, M.S.
MikeM
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Re: Examiner-generated Prior Art - Conflicts
« Reply #2 on: Jun 7th, 2007, 2:24pm »
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It's in the public domain, so I don't see why it couldn't be used as prior art...  After all, just because the rejection was overcome doesn't mean that the examiner didn't disclose a good idea that the current invention was taken from!
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