I have an outstanding patent application that has gone through 5 Office Actions, 9 prior art citations, and one improper final office action withdrawn by the TC Director over the past 3 years. On the last Office Action, the Examiner cited art in a 102 and 103 rejection that I clearly disclosed in my specification in the original application. I am not sure the Examiner realizes it was cited originally, but aside from pointing out the mistake, are there any positions I can take to eliminate this art from consideration because she didn't address it for 5 office actions? It's worth noting this art is easily traversable (which I will address in the OA response), and was cited on claims that were previously allowed. (IMHO she cited the art as a punitive measure for my refusal to negotiate with her on claim scope, but I can't put that in the OA response). I think there is an argument that because the Examiner didn't previously see the 103 combination even though the art was known to her, it can't be obvious, but is there a legal argument to be made for estoppel, laches, or something similar?
As a starting point, the USPTO is under an obligation to ensure that an application meets the various requirements before a patent is issued. That is, 35 USC § 131 provides:
The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.
The converse of this is that if an examiner does not believe the application meets the requirements, they cannot allow the patent to be issued.
Thus, until prosecution has been closed, there is no prohibition on raising a rejection based on new art, and indeed there is an obligation to do so. As such, there could be no basis for equitable procedural limits, like estoppel or laches.
Neverthless, if you believe there has been some procedural impropriety, there are two options. You could contact the examiner's supervisor (reasonably informal), or you could file an appeal to an office action (formal and costly).