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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patent application that has gone through 5 Office Actions, 9 prior art citations, and one improper final office action withdrawn by the TC Director over the past 3 years.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?

  • Are you saying the specific cited art in the 102 and 103 rejections predate your filing? If you cited them in your application then, I assume, it predates your application. – George White Nov 8 '17 at 0:45
  • The art is 15 years old. I cited it in the specification and explained why our art is different per USPTO rules. The Examiner cited the same art on the fifth action, after citing nine other pieces of art which were all traversed. – bgmaster Nov 8 '17 at 1:01
  • Sorry - I must have been asleep when I wrote the previous post. I typed pre-date when I was thinking post-date. It doesn't matter how old it is or that you cited it. I agree with @Maca. While the concept of "compact prosecution" says they should throw everything at you on the first OA there is no rule protecting you from them later realizing something was more important than they thought initially. It is also possible that the art you are talking about was not the best art to cite against your initial claims but later claim amendments or arguments changed that picture. – George White Nov 8 '17 at 1:17
  • @GeorgeWhite there weren't any claims amendments, so that didn't make a difference. The fact that claims were previously allowed is akin to a grant. Negation of a patent requires clear and convincing evidence of prior art. The Examiner has provided nothing more than a poorly cited recitation of our claim to parts of the prior art specification that don't match any sort of even remotely comparable elements. – bgmaster Nov 8 '17 at 2:22
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No.

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).

  • I already interviewed the Examiner and SPE and it was fruitless. They both essentially stated the claims were too broad, which is not a bar to patentability. Since then, it appears their goal has been to force appeal by issuing frivolous rejections. I filed pro se under a micro entity claim. Are there any other remedies? – bgmaster Nov 4 '17 at 21:37
  • @bgmaster In that case, there is little else you can do, other than appeal. There is no way to force a new examiner: even if you filed a continuation, it would almost certainly be assigned to the same examiner. – Maca Nov 5 '17 at 0:49

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