The Intellectual Property Forum

I believe Detroit examiners live in Conestoga wagons out on the urban prairie.

It's not uncommon to see what I think of as an "upside down" rejection.  Reference 1 teaches claim limitations A and B, and Reference 2 teaches claim limitations A, C, D, and E.  Then, the examiner argues that it would have been obvious to combine C, D, and E with A+B, which appears to be a bit of a stretch on its face.  If they just turned it around, they'd start with A+C+D+E and only have to argue that addition of B is obvious.

Sometimes my search uncovers Reference 1 first, and it's five pages long and written in plain English. And sometimes Reference 2 is twenty five translated pages. I might not always notice that Reference 2 discloses claim limitations I'm not looking for because I've already found them.

Thank you Jim.

Continuation seems to provide the desired broadening of both the disclosure and claims of AB1 to include B2 (with a later priority date for claims involving B2).  But, this approach pertains only to the US national filing.  Is that right?

B2 was neither disclosed nor claimed in AB1.  Thomas Paine's suggestion that B2 might be protected under the DoE leaves the issue open to downstream interpretation.  I think that I'm groping for what might be called the continuation process at the PCT international phase.

Thanks again, Art Williams

I think I would file the response, include the IDS with the reference, make appropriate notations in the client file, and pay the IDS fee; and I'd consider another continuation depending on what the clients prefers for the particular family, strategy, product, etc.  Attempts to disclose, keep reasonable records, etc. should be enough.

J. Douglas Wells, Patent Attorney
doug@wellslegal.com

I had an examiner ask for an added figure that included only a single box with the non-pictured claim limitations typed in the box.  She said that's all she needed - a figure with the claim limitations properly disclosed and described but not particularly included in the original drawings.

J. Douglas Wells, Patent Attorney
doug@wellslegal.com

Just amend the drawings if the support is in the original application.  Add a block diagram or add a reference numeral and leader line. 

I usually start my application with my claims then base the spec around them so that everything in the claims is also in the specification.

If one files a CON for an application to claim an alternative embodiment, chances are those CON claim features may now be entirely shown in the drawings, especially after amending the claims. We've seen objections under 608.02(d) lately, and I think this is the first I've ever seen one. The main parts of the claim are shown, but some of the narrower features that are only in another embodiment are not shown in block diagrams or the flow charts.

How can the figures show every possible embodiment or narrowing feature of a claim? Especially since you may narrow the claim after an office action to add a feature that you may not have thought you would have to add.

Any suggestion on best way to handle these type of objections?

I agree the memo is a definite must. But Jim you are saying to go ahead and cite the references right? I just want to make sure I didn't misunderstand "too late to cite any reference cited in the OA."

The standard for Inequitable conduct is intent to deceive.

Yes.  Yes, it is.

However, we'd need telepathy and a time machine to look into one's actual knowledge and motivations.  What you'll end up with is a letter from the PTO to you (the Office Action and citation) more than three months before you filed any IDS.  The presumption will be (by the judge and jury) that you got the letter and you read it.  And, you're not going to be asked about it within a few months.  You'll be deposed about it 5-10 years later and you won't remember why you didn't cite it sooner.

So, let's suppose you pick up the Office Action in the 4th month -- knowing you'll eat the late fees and too late to cite any reference cited in the OA.  Here's what you do.  You immediately write a memo to the file that you never picked up the OA until now and you've just now become aware of a reference that ought to be cited in another case.  You write a companion memo to the file of the other case.  Those memos will be key when you're deposed years later.

Then, you don't sit on it for up to 3 months.  You handle it as soon as possible.  Years ago I did some research into inequitable conduct (and gave a talk on it).  If you look like you're really trying to comply with Rule 56 and are not motivated by someone else forcing your hand, you're more likely to be deemed to not have acted with deceptive intent.

Regards.

literally all the Examiner has done is switch the order. Isn't this just cumulative? 

Under your facts ... almost certainly. So what? Feel free to cite the MPEP section that Simpletown mentioned to tell the Exmainer he's not supposed to do that, and that you know this. But procedurally there is no mechanism to prevent an Examiner from pulling tricks like this.

Oh, and by the way, the Examiner has done something akin to this for every "A-B-C" combination in the application.  I have 9 rejections to respond to when I should have 3-4.

Annoying, for sure. The good news is that if the Examiner did a lot of cut and paste to get all those permutations that are essentially the same in substance, you can do the same in your response.

I don't think you can overcome a rejection by saying it's cumulative (or redundant).

I agree that you can't properly traverse by saying rejection is improper because it's cumulative. And I'd be afraid an Examiner -- and let's face it, this devious Examiner in particular -- would hold your reply non-responsive.

First, what role will AB1 play in the prosecution of AB2?  Will/can B1 in AB1 render B2 in AB2 obvious?

We don't have enough facts, I think.  Did the original application describe B1 and B2?  If so, you can file a continuation application (before the original application issues with AB1) and pursue AB2 with the effective filing date of the original application.  Accordingly, AB1 will not be prior art for AB2.

Second, if claims in AB2 related to B2 are NOT granted because of B1 in AB1, will the future use or sale of AB2 by a competitor constitute infringement?

This presupposes that AB2 is prior art for AB1, so I assume AB2 was pursued through a new application rather than a continuation.  If the original application described B2, no infringement.  Embodiments that are described but not claimed are considered to be dedicated to the public.  If the original application did not describe B2, you can only cover AB2 under the doctrine of equivalents (DoE).  Thomas Paine described some of the law regarding the DoE, but I consider that case law to reflect something close to a high-water mark for the DoE some years ago (a least the Wilson one -- pretty much overturned by Fesko).  I wouldn't place significant hopes on catching infringers through the DoE.

Regards.