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[ManOfManyBadIdeas]

Another thing, can you tell if it's a design or a utility application? If it's a design application you are shooting yourself in the foot a little bit by citing it as relevant to your utility app (I assume yours is a utility app).

Citing something is not an admission that it is relevant.  I think your advice about citing is not the best.  Most likely the application is not secret right now.

Not contesting your assessment of my opinion (NOT advice ), but could you explain a bit? I will try to also further elaborate:
1) Citing is not an admission of relevance. However, since the duty to disclose only applies to possibly relevant references, citing something that clearly shouldn't be relevant to a meritorious utility application doesn't reflect well on that application. And I think that design patent is by definition a description of a "mere design choice", so it should not be relevant. That's what I meant by shooting himself in the foot. Of course I checked now, and the app prefix (12) shows that it's not a design application.
2) Based on the OP info, the application in question IS secret. He can't locate it in the allowed app, or in pending app databases. Do not you have to petition not to publish an abandoned application? It means that some time after the press release the request was made not to publish the application, which, however weakly, supports the assertion that the press release fails to disclose the invention (otherwise, what's the point of suppressing the publication?).
3) I think that taking up the position that the press release is not enabling can be advantageous over trying to argue that the application distinguishes. That is of course assuming that the press release truly doesn't enable. I think it's a much stronger argument because it would help eliminate the limitations that might be named (hinted at) but not properly described in the press release.

[Isaac]

And I think that design patent is by definition a description of a "mere design choice", so it should not be relevant.

I have no idea what you mean by "mere design choice".   "Mere design choice" is an obviousness concept that seems inapplicable here.   If the figure in a design patent discloses features of the invention, the design patent may be relevant prior art.

2) Based on the OP info, the application in question IS secret. He can't locate it in the allowed app, or in pending app databases.

It appears to me that the OP did not know how to search for an application using the application serial number and the OP's response to me suggests that the OP found the application after I described where to look.

[jachord]

Tanks for every one for the help.  I think I still have a good shot at it.  After thinking about it my invention takes a completely different method to get to a similar result.  I said they where similar because they had the same goal and reached similar results.  I have found a new attorney and will let him decide.  Once I get the CA back to him I can give him the description of my invention and the previous one in the press release. 

[khazzah]

1) Citing is not an admission of relevance. However, since the duty to disclose only applies to possibly relevant references, citing something that clearly shouldn't be relevant to a meritorious utility application doesn't reflect well on that application.

"Relevant" isn't the right term -- it's "material to patentability". There is case law interpreting what that phrase means.

I'm not sure what you mean by "does not reflect well on the application".

You have a *duty* to disclose information material to patentability. No inference should be drawn that a reference *is* material simply because you choose to submit it, because it's perfectly acceptable to go beyond that duty. In fact, there are many reasons why you might go beyond that duty and submit stuff that isn't clearly material.

3) I think that taking up the position that the press release is not enabling can be advantageous over trying to argue that the application distinguishes.

Depends on whether or not the facts support your position that "the press release is not enabling." The only facts we had to start off with were OP's statement that the press release described something "similar to" OP's invention. That tells me nothing about how enabling the press release is.

Also, generally speaking, saying that the "press release is not enabling" means something along the lines of "my claims include details not found in the press release." Then those details distinguish over the press release.

On the other hand, if the press release contains little detail, but your claims also lack detail, the press release probably is enabling, at least prima facie.

[Isaac]

Once I get the CA back to him I can give him the description of my invention and the previous one in the press release. 

CA= confidentiality agreement?

[ManOfManyBadIdeas]

1) Citing is not an admission of relevance. However, since the duty to disclose only applies to possibly relevant references, citing something that clearly shouldn't be relevant to a meritorious utility application doesn't reflect well on that application.

"Relevant" isn't the right term -- it's "material to patentability". There is case law interpreting what that phrase means.

I'm not sure what you mean by "does not reflect well on the application".

You have a *duty* to disclose information material to patentability. No inference should be drawn that a reference *is* material simply because you choose to submit it, because it's perfectly acceptable to go beyond that duty. In fact, there are many reasons why you might go beyond that duty and submit stuff that isn't clearly material.

I have tried to explain this in response to Isaac's comments. I do not expect a design patent to contain any features material to patentability. Things that are supposed to be in a design patent cannot patentably distinguish an invention, those things are referred to as "mere design choice" when reviewing a utility application. So I imagine any examiner's first reaction at an IDS with a design patent/app in it, would be "WHAT?". Because the expectation is that it should be clearly immaterial to patentability. This is just my expectation, I really do not know how open minded examiners are about things like that.

3) I think that taking up the position that the press release is not enabling can be advantageous over trying to argue that the application distinguishes.

Depends on whether or not the facts support your position that "the press release is not enabling." The only facts we had to start off with were OP's statement that the press release described something "similar to" OP's invention. That tells me nothing about how enabling the press release is.

Absolutely! An obvious factor in favor of it not being enabling is that those rarely are enabling. However, in this case there is another one I wanted to point out - that the patent application was (supposedly) withdrawn with non-publication request, hard to explain if the press release was considered enabling.

Also, generally speaking, saying that the "press release is not enabling" means something along the lines of "my claims include details not found in the press release." Then those details distinguish over the press release.

On the other hand, if the press release contains little detail, but your claims also lack detail, the press release probably is enabling, at least prima facie.

I think you mean the spec lacks detail. Either that or the claims are self-enabling. I am not exactly against pointing out whatever differences are between press release and the competing application. My concern is that doing so without first saying that press release is not enabling can be construed as an admission that it is enabling.

[Isaac]

So I imagine any examiner's first reaction at an IDS with a design patent/app in it, would be "WHAT?". Because the expectation is that it should be clearly immaterial to patentability. This is just my expectation, I really do not know how open minded examiners are about things like that.

A design patent claims non functional features, but it often discloses both functional and non-functional features in a figure.  Your expectations are not based on actual experience.  Besides all that, the reference is not a design patent application.   Why are you still defending your statement on that basis?

Absolutely! An obvious factor in favor of it not being enabling is that those rarely are enabling. However, in this case there is another one I wanted to point out - that the patent application was (supposedly) withdrawn with non-publication request, hard to explain if the press release was considered enabling.

Who said the application was withdrawn?   Who said there was a non publication request?   There is zero evidence of either.

[ManOfManyBadIdeas]

So I imagine any examiner's first reaction at an IDS with a design patent/app in it, would be "WHAT?". Because the expectation is that it should be clearly immaterial to patentability. This is just my expectation, I really do not know how open minded examiners are about things like that.

A design patent claims non functional features, but it often discloses those features in a figure.  I think your expectations are not based on actual experience.

You are right, my expectation is not based on experience. I can certainly imagine that some functional features can be deduced from a design patent figure. However, my (not based on experience) expectation is that the design patent is by far not the primary or the best reference for those features, practically any figure depicting the item whose design variation is being claimed in the design patent should be able to convey those functional features. So my (not based on experience) expectation is that it would stick out as a sore thumb in an IDS.

Absolutely! An obvious factor in favor of it not being enabling is that those rarely are enabling. However, in this case there is another one I wanted to point out - that the patent application was (supposedly) withdrawn with non-publication request, hard to explain if the press release was considered enabling.

Who said the application was withdrawn?   Who said there was a non publication request?

I stated it as an assumption in my post, based on the failure of the OP to locate the application in either patent or application publication database and the date of the press release. You have even said that the reasoning is most likely correct. I can't be 100% sure if it was really withdrawn, but OP hasn't mentioned the app even in the most recent post, only the press release is mentioned.

[Isaac]

However, my (not based on experience) expectation...

...is different from an expectation an experienced person would have? 

I stated it as an assumption in my post, based on the failure of the OP to locate the application in either patent or application publication database and the date of the press release. You have even said that the reasoning is most likely correct.

That's not what I agreed was correct.  I agreed that the 18 months prior to publishing had likely expired.  But I don't know if the application did publish.   But for the rest of that stuff you assume, you're out on your own limb.  You don't know how the OP searched.  If the OP thought that the application serial number was a patent number, the OP could easily have over looked the application even if he searched in the correct database.
 

[ManOfManyBadIdeas]

However, my (not based on experience) expectation...

...is different from an expectation an experienced person would have?

That very well may be. Lacking in experience, I have to fall back on trying to construct a rational argument. If my argument is not as rational as I hope, it would be helpful to point out where I erred. Alternatively, you could, relying on your experience, claim that you routinely and successfully use design patents in IDS. I do not see a point to repeatedly trying to rub my nose in my lack of experience.

I stated it as an assumption in my post, based on the failure of the OP to locate the application in either patent or application publication database and the date of the press release. You have even said that the reasoning is most likely correct.

That's not what I agreed was correct.  I agreed that the 18 months prior to publishing had likely expired.  But I don't know if the application did publish.   But for the rest of that stuff you assume, you're out on your own limb.  You don't know how the OP searched.  If the OP thought that the application serial number was a patent number, the OP could easily have over looked the application even if he searched in the correct database.

Sure, like I said, it's an assumption. That's the only thing one can do without explicit response to your PAIR search instructions. But it's not an unreasonable assumption by any means.

[jachord]

Ok, Look at it like this.  I invented the two stroke engine.  While searching for the two stroke engine patent I find that company Chicom Inc has invented the four stroke engine and got a patent on it supposedly.  Since my two stroke engine is not only a different design but also functions differently mechanically than the Chicom INC four stoke. Am I correct in assuming even though both inventions provide the same function, that I should still be able to file for a utility patent with out the four stroke engine causing problems with my application?

Obviously this is just an analogy,  but it helps me understand and feel more comfortable about investing the money.

[khazzah]

Chicom Inc has invented the four stroke engine and [that information is public]. Since my two stroke engine is not only a different design but also functions differently mechanically than the Chicom INC four stoke. Am I correct in assuming even though both inventions provide the same function, that I should still be able to file for a utility patent with out the four stroke engine causing problems with my application?

If you claim the details that make your two stroke different than the already-known four stroke, then the four stroke engine does not *anticipate* your two stroke engine. Put another way, in that case your two stroke engine is novel with respect to the four stroke engine.

Anticipation/novelty isn't your only concern. Obviousness also a concern. The Examiner may say the two-stroke is an obvious variation of the four-stroke. It depends on the differences. The more differences there are [number and/or degree], the more likely that your invention is not an obvious variation, and is thus deserving of a patent.