Therasense

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OMG IP:

--- Quote from: JimIvey on 05-31-11 at 02:00 pm ---
--- Quote from: OMG IP on 05-31-11 at 11:46 am ---FWIW, I do not see how an office action, in the general sense, can be considered "material" (when the Office Action includes examiner opinion, and nothing more).

--- End quote ---

I'll give two quick anecdotes.

Years ago, I was studying a file history for an opinion letter. It was a very convoluted history. A parent application was going nowhere getting around 102(b) prior art. The CIP was originally filed as a stand-alone application, citing the references of the 102(b) rejection of the parent and then, after issuance, priority to the parent was claimed in a reissue application.

While I don't know the specific intent of the applicant, the relationship between the two application was kept secret until after issuance and, more importantly in my opinion, the real importance of the references was masked as the time the IDS was filed by not pointing out that very similar claims were rejected under 102(b) and the manner in which the referenced were applied to the claims.

FWIW, I don't think the rules would let this happen now.

In a similar situation in which I was on the other side, a corresponding foreign application cited a reference that was good enough to force me to amend the claims. I cited both the reference and the foreign OA in the USPTO. The examiner ignored it and maintained more or less the same lame rejections that didn't force me to amend the claims.

My thinking in citing the foreign OA is exactly as above: the argument for inequitable conduct based on supplying the reference without citing the very information that indicates how material the reference is and in what manner.

Regards.

--- End quote ---

So here it is: you don't consider the OA "material" per the standard of materiality; instead, you consider the failure to submit the OA could be problematic. To me, it's narrower: a practitioner either deems it material or does not (liberally stated).

OMG IP:
In other words, I think the system is now problematic to itself.

Practioners/inventors are supposed to submit that which is material to patentability, but not cummualitive to what is already disclosed (as per the law and MPEP [loosely stated here]). Presumably this will be a limited disclosure and will be relevant/material to the claimed invention, intended to rely on the word of the attorney/inventor and streamline examination.

Instead, practioners now submit anything and everything that might be problematic out of fear of the IC standard, which leads to an overabundance of garbage/cummulative disclosures, doing anything but streamlining examination.

I digress...

Purely my viewpoint and philosophy based on my limited experience, as well as getting into the IC standard a year or so ago (pre-therasense)

JimIvey:

--- Quote from: OMG IP on 05-31-11 at 03:39 pm ---So here it is: you don't consider the OA "material" per the standard of materiality; instead, you consider the failure to submit the OA could be problematic. To me, it's narrower: a practitioner either deems it material or does not (liberally stated).

--- End quote ---

No, not at all. I think that the OA can be material in and of itself.

The OA can include Official Notice.

In some circumstances, we're required to specify which parts of a given reference caused us to cite it. The OA itself is often the reason a reference is cited and often specifies the passages that gave rise to its citation.

The OA could contain findings of fact regarding the level of ordinary skill in the art at the time the invention was made. (don't laugh; it could happen!)

Stepping back a bit and looking at the big picture.... Imagine you have an OA in a related case that points out a specific teaching overlooked by the examiner in a different application for which you're preparing a response. Are you going to not cite the OA and continue to argue that "the examiner has identified no teaching or suggestion" of the overlooked teaching pointed out by the OA? Do you think you can really not cite the OA and not be reasonably considered to have intended to deceive?

Regardless of Therasense, I still think the best practice is to just cite everything all the time, including OAs.

Regards.

OMG IP:
I don't disagree with you on any of that in terms of "real life" and best practice.

But you said it yourself: there are instances where an OA may be material... if that is the case, you should submit it. that's what we're required to do: use our judgement, act accordingly.

That said, if the USPTO truly wanted everything cited all the time, the MPEP/case law would expressly say so, wouldn't you think?

I always submit anything and everything I deem material. I do not submit anything and everything as precaution.

JimIvey:

--- Quote from: OMG IP on 06-01-11 at 11:33 am ---That said, if the USPTO truly wanted everything cited all the time, the MPEP/case law would expressly say so, wouldn't you think?

--- End quote ---

Sure. What's the penalty for citing something that is not material? Compare that to the penalty for not citing something that turns out to be highly material but you didn't think it was.

I think that comparison illustrates what behavior the case law favors.

--- Quote from: OMG IP on 06-01-11 at 11:33 am ---I always submit anything and everything I deem material. I do not submit anything and everything as precaution.

--- End quote ---

I'm betting you've never been deposed trying to explain in a mildly aggressive exchange with a litigator that citation does not imply materiality.

Regardless, you can do what you want. For me, I believe my approach makes my life better and my work more defensible in court.

Regards.

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