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[ChrisWhewell]

I was wondering if at least for enablement purposes, I can write in the detailed description "US Patents Nos. 1-7,777,777 (the latest patent number whatever it is) are hereby incorporated by reference herein." Is there a specific rule proscribing that? Please comment away.

The answer is no.

Hiya Chris, glad to see you chiming in.  But which question were you answering "no"?  As in, "no" that won't help enablement; or, "no", there is not a specific rule proscribing such conduct?

Moochas grassias, (time to mow I guess), etc.

The answer is yes.

[ChrisWhewell]

DDPM I can't remember when exactly but I ran across this same situation where an applicant had actually tried to incorporate a range of US Patents by reference and it was objected to; I believe even supported by a case.  I came away convinced applicant was in error by doing so.  The mere dump of a list of patents tacitly includes an order to go and figure out which of them are relevant to what is claimed (since certainly, the vast majority will not be), and sifting through 7MM patents is unquestionably an undue burden.

[mnb]

someone just used 900 references. so why cant a class be incorporated? is this contrary to what was discussed before?
http://www.patentlyo.com/patent/2010/01/what-does-a-patent-examiner-do-with-900-references.html

[ChrisWhewell]

Surely the European patent attorney's chuckle from time to time when viewing the US patent system.  I haven't chuckled as much as I've pondered, why the heck some administrators and administrations connected to the USPTO seem so heck-bent on "harmonizing" the patent system with the rest of the world and has accomplished so much towards that goal, whilst neglecting to even utter a peep about doing away with Rule 56, which would seem to be necessary for any true "harmonization". 

Imagine the money expended annually on concerns over this.   Could many new examiner positions could be created, were the USPTO to devote its current resources pegged to Rule 56 over to HR, or is it really not that much of a financial burden to the Office to be significant ?

[DogDayPM 9er9er9er]

someone just used 900 references. so why cant a class be incorporated? is this contrary to what was discussed before?
http://www.patentlyo.com/patent/2010/01/what-does-a-patent-examiner-do-with-900-references.html

MNB, thanks for the link, it was interesting.

But yes, the situation does differ for them vs. what you've proposed for consideration (citing pats 1-7,111,111;  or citing an entire class).  As I understand it, the applicant in the article cited art and office actions from a multitude of its own related pending US and foreign cases.  So here's why it's different: the applicant in the article could arguable be held in court to have known of each of the references they cited.  That is, each citation was "known" to them in the sense of arguablly triggering their duty under 1.56.

Can you similarly argue that your client may be held to have known of each reference cited in a 7+ mio reference IDS?  Or even somewhat more simply, that each reference cited when citing a US or international classification, was a reference known to them and potentially material to patentability?

[dablueman]

someone just used 900 references. so why cant a class be incorporated? is this contrary to what was discussed before?
http://www.patentlyo.com/patent/2010/01/what-does-a-patent-examiner-do-with-900-references.html

Citing references is completely different than incorporating them by reference as you proposed. As an aside, are you a solo inventor trying to file an application or are you an agent?

But yes, the situation does differ for them vs. what you've proposed for consideration (citing pats 1-7,111,111;  or citing an entire class). 

@DogDay - he wanted to incorporate them by reference rather than just cite them.

[JimIvey]

Am I the only one who thinks the entire idea of incorporating everything ever written into a patent application to be a thoroughly ridiculous idea?  Why would anyone want to incorporate text into a patent application without knowing what that text says?

Sounds to me to be like the what-happens-if-I-beat-on-it-with-this-hammer theory of vehicle maintenance.

There really aren't any clever gimmicks or shortcuts to writing a good patent application.  Just write the patent application properly.

Regards.

[DogDayPM 9er9er9er]

Am I the only one who thinks the entire idea of incorporating everything ever written into a patent application to be a thoroughly ridiculous idea? 

Not at all alone... I think several of us have tried to point out some of the more ridiculous aspects... Here's my attempt: http://www.intelproplaw.com/ip_forum/index.php/topic,13530.msg65391.html#msg65391

[JustAnotherExaminer]

Am I the only one who thinks the entire idea of incorporating everything ever written into a patent application to be a thoroughly ridiculous idea?  Why would anyone want to incorporate text into a patent application without knowing what that text says?

Well he'd need to put it in the background section.

As an examiner I would love it, because it makes the 103 easy and near invincible.  Everything is AAPA.  Motivation for combining? Applicant asserts they're related (may be slightly more complicated than that, but you get the idea).

Also, I don't see a reason why you'd stop at just US patents.  I would think to be reasonable you'd need to incorporate all the JP and PCT and maybe even EP ones.

[ChrisWhewell]

My read on the OP was that they qualified the statement in terms of desiring to support enablement by such a proposed citation.  My recollection is that the MPEP is quite clear on what can be incorporated by reference.

[klaviernista]

Am I the only one who thinks the entire idea of incorporating everything ever written into a patent application to be a thoroughly ridiculous idea?  Why would anyone want to incorporate text into a patent application without knowing what that text says?

Well he'd need to put it in the background section.

Why?  No background section is even required by the patent rules.  

As an examiner I would love it, because it makes the 103 easy and near invincible.  Everything is AAPA.  Motivation for combining? Applicant asserts they're related (may be slightly more complicated than that, but you get the idea).

While I have a lot of respect for what you have to say in general (your posts are often spot on), I have to say that your suggestion in this instance is simply not tenable.  In the modern age, almost all inventions are derivations of earlier inventions.  The mere fact that an older technology might be "related" to a newer invention does not in any way make the newer invention obvious.  That's like saying that peas render green beans obvious because they are both legumes, when in fact they are actually quite different.  

I see similar arguments from examiners in chemical cases where the invention involves a novel combination of known ingredients.  Such is the case in the cosmetics industry, for example, where most inventions are the result of carefully controlling the ratio, manner of mixing, etc. of various known cosmetic ingredients.  I can't tell you how many times I've had examiner's argue that the combination is obvious because a document (possibly the specification) indicates that each individual component is known and useful for a specific purpose, but never suggests (or even hints at) the combination.  If the mere fact that certain components were known (or related) was sufficient to establish a prima facie case of obviousness, then an examiner could rely on the Handbook of Cosmetics (which identifies thousands of cosmetic ingredients and their functions) to reject 99.9999% of all cosmetic applications.  Thankfully, that is not the law.

Sorry for the rant.  But this particular argument is a giant pet peeve of mine, and one that I have appealed countless times with a significant amount of success.

[Isaac]

While I have a lot of respect for what you have to say in general (your posts are often spot on), I have to say that your suggestion in this instance is simply not tenable.

I agree.  In fact, the examiner is going to have to find the particular reference he wants to apply by doing a normal search.   Incorporating by reference all prior patents at most helps the examiner argue that a reference is prior art regardless of its publication/filing date, but won't do anything towards helping the examiner actually find a reference to apply or in arguing a reason to combine.

None of which is to say that incorporating all of those patents would be the least bit helpful. 

[JustAnotherExaminer]

Haha, yeah. I meant if he attacked my obviousness with one of those "not a similar field" arguments.