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[IPLoya]

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?

[Isaac]

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?

I normally use the term "Related Art" in the application, so I just use the same term (perhaps abbreviated ARA) in my response.  On occasion, I have indicated that my response does not admit that the "related art" is prior art under 35 USC 102.  Of course if the background section notes that "Nixon has resigned", I don't make silly disclaimers.   I've also refered to the material as text from the Background Section of Applicant's disclosure.

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.

[Robert K S]

There's nothing particularly dirty about the term "prior art".  It still has to be anticipatory or render the claimed invention obvious in order to be used in a rejection.  Citing it in your Background only means you are unlikely to be able to antedate it through evidence.

[ChrisWhewell]

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?

If something is prior art, then it doesn't matter whether its called prior art or "chicken scratch".   One can call a peach tree an apple tree but if at the end of the growing season the thing drops peaches, the lexicography is moot.

Admitting that prior art is prior art is of no consequence that I can see, any more than saying that US Patent 1,234,567 is prior art.  It is a redundancy.   

One problem could be where an applicant wrongfully alleges something to be prior art, that is demonstrably not prior art.  In such instance, one can argue it was a Mistake (see Black's) and rescind the statement.

Regardless of whether a peach tree is called a peach tree, the arguments used to refute a wrongfully-levied rejection should be the same.  If the thing isn't prior art, then it can be disqualified.  I hope I'm making sense...

[Isaac]

There's nothing particularly dirty about the term "prior art".  It still has to be anticipatory or render the claimed invention obvious in order to be used in a rejection.  Citing it in your Background only means you are unlikely to be able to antedate it through evidence.

Callling a reference "prior art" that is unambigously prior art isn't a problem.  However, sometimes statements in the background section are intended to help with understanding the invention.  Such statements may not be prior art and may even be attributable to the inventor such that they could not be applied under 102(a).   If the examiner calls that stuff AAPA, perhaps you should avoid confirming the examiner's assumption by calling it AAPA.

"In such instance, one can argue it was a Mistake (see Black's) and rescind the statement."

I don't believe admissions so easily overcome.  In some cases evidence rather than argument may be required which adds time and expense.

[horsespatoot]

"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?"

If it is indeed prior art, you're needlessly delaying prosecution by making the Examiner go find the same feature in the prior art.  Good luck explaining that to the client.

IMHO, "related art" or "conventional art" is still prior art and qualifies under 102(a).  If anyone knows applicable case law to the contrary, I'd love to hear it.

Maybe it's possible to draft the background section with a statement that the work is the inventors own unpublished work.  Since AAPA qualifies as prior art under 102(a), you'd exclude the rejection based on both it being unpublished and not by "others".  I'm surprised I don't see this more.

[smgsmc]

So, the statement "If it's in the Background section, it's admitted prior art."  is not correct?

[ChrisWhewell]

"In such instance, one can argue it was a Mistake (see Black's) and rescind the statement."

I don't believe admissions so easily overcome.  In some cases evidence rather than argument may be required which adds time and expense.

Depends on circumstance of course, point was that Mistake is cognized in Law and if demonstrably a Mistake, for example ambiguous language interprable as admitting one's own work as "prior art" when its demonstrably not, a remedy could be effected.   Prior art is prior art.   An admission that non-prior art is prior art can't convert non-prior art into prior art.  Otherwise, unscrupulous persons could file long specs in which non-prior art is alleged as being prior art, and assert the publication to have bearing on patentability of other cases filed just subsequent thereto.  For example, Caligula hears that Prickter and Grumbly are working on a new paint composition including modified soybean oil but haven't yet filed an application.   Caligula writes up a spec that states in the Background section that modified soy in paint (however modified, at various concentrations, and in various types of paints) is prior art and requests early publication.  The spec publishes with a filing date earlier than Prickter's app.  Does Caligula's admission that soy in paint is prior art have bearing on the patentability of Prickter's development ?   I doubt it, although as you suggest it may take resources to disprove it but that would be a nuisance.   Calling something that which it isn't is of no effect but maybe heartburn.   I once saw where an examiner cited a reference that stated a fatty acid triglyceride is a surfactant, and used it in assembling a rejection.  Of course it's not, its an oil and lacks requisites of surfactants.  Many patents contain mis-statements.   Mistake.

[Isaac]

Depends on circumstance of course, point was that Mistake is cognized in Law and if demonstrably a Mistake, for example ambiguous language interprable as admitting one's own work as "prior art" when its demonstrably not, a remedy could be effected.   Prior art is prior art.   An admission that non-prior art is prior art can't convert non-prior art into prior art.

Admissions, and in particular admissions of facts contrary to the speaker's interest have special legal significance.  Remaining silent in the face of the examiner's statement against your interest can consitute an admission.  Admissions against interest can be used against the speaker even when they aren't any good against anyone else.   You may find yourself working very hard to overcome an admission, and in some cases, you might be legally precluded from challenging an unambigous admission. 

Also consider the standard of review once your case gets off the examiner's desk.  If the review is simply whether examiner's rejection is supported by substantial evidence, your admission *is* evidence that the examiner is entitled to rely on.  He doesn't have to even bother providing evidence of facts that you admit to.

 Otherwise, unscrupulous persons could file long specs in which non-prior art is alleged as being prior art, and assert the publication to have bearing on patentability of other cases filed just subsequent thereto.  For example, Caligula hears that Prickter and Grumbly are working on a new paint composition including modified soybean oil but haven't yet filed an application.   Caligula writes up a spec that states in the Background section that modified soy in paint (however modified, at various concentrations, and in various types of paints) is prior art and requests early publication.  The spec publishes with a filing date earlier than Prickter's app.

A statement made by an unrelated party is not an admission with respect to the first parties case.  But that may not matter here.

Cal's spec contains info about soy in paint, and an assertion that the info was known prior to Cal's filing.  If the spec contains enough detail, the soy in paint info correctly gets a 102(e) date even if the statements that soy in paint was known prior to C's filing date are not accepted.  Prickter and Grumbly may or may not be able to swear behind the 102(e) date or show that the info came from Prickter and Grumbly to begin with.  If they cannot make the required showing, then they may not get a patent they actually deserve.

[ChrisWhewell]

Purely hypothetical, but lets say Joe files a patent application 1/1/01.   On 1/1/03, the Office Action rejects various claims under 102, 103 and combined 102/103, relying on the Smith publication, published 6/30/02.  Joe is overworked and instead of arguing the reference to be inapplicable, submits eloquent yarns 3/30/03 in an attempt to refute the merits of the various rejections in the 1/1/03 paper, which are deemed insufficient in a Final rejection dated 5/1/03.

Joe later reviews the case and then realizes the Smith publication does not qualify as a reference.   Is Joe estopped ?   Has he breathed life into an otherwise nonbona-fide rejection ?

[Isaac]

Joe later reviews the case and then realizes the Smith publication does not qualify as a reference.   Is Joe estopped ?   Has he breathed life into an otherwise nonbona-fide rejection ?

Assuming that Smith was not available under 102(e) which isn't ruled out by the facts you give here, my answer would be No.