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I've received a first rejection that cites 2 patents, but only one is a problem as it claims an entire drugstore of possible combinations for treating a likewise enormous number of diseases, but without specifically citing my combination. My examiner issued an obviousness rejection based on that reference. But when I looked at the file wrapper, all the claims were initially rejected with the following language –

“...the skilled artisan would be burdened with undue experimentation in determining what substrates of the instant invention would be effective at treating/preventing ANY disease or disorder.”

The emphasis on “any” was the examiner’s. Thus it seems to me that if the examiner of the reference rejected it on that basis, my examiner couldn’t then claim it would be obvious, right? Or at a minimum it would give me grounds to appeal.

So, bottom line, is it kosher to quote this, or might it somehow do me more harm than good?

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  • If you could link to the cited patent we might be able to better help you.
    – Eric S ♦
    Jun 13, 2021 at 16:28
  • I filed the response yesterday, so we'll see.
    – Lou
    Jun 14, 2021 at 17:24
  • Turned out it didn't hurt. I can't say if it helped as the enablement argument was just a blip in an 18 page response, but today the examiner called with some suggested amendments to the claims that would actually make them shorter and stronger, and with my ok would issue a notice of allowance.
    – Lou
    Jun 23, 2021 at 18:08
  • At the epo this argument is legally valid. Doesn't mean it will work, but something that is not workable is not prior art.
    – user18033
    Jun 27, 2021 at 21:37

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The claims of an application might or might not be patentable. That, itself, has no bearing on the document's value as a reference. Poor claim drafting or overly broad claiming would lead to a rejection but not be any indication that the specification did not contain useful information. A journal article can be prior art - it has no claims.

Prior art documents are "good for what they teach". Not every part of a publication or published patent application needs to be solid for some parts of it to indicate that an idea was already known.

And, as one cite in an obviousness rejection, what the examiner us relying on might be a small subset of what it contains. The OA should make that clear.

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  • It's a grain of sand compared to what the reference contains. The reference is like a Walmart full of drugs and a lot of handwaving about embodiments, thus I thought the previous examiner's take on it would be of value. Yes, my compounds appear in the reference, but but not together. My examiner says it's obvious to combine them, of course. I have a couple of arguments why it isn't obvious, but I thought this quote from the reference's examiner would add some extra punch. My question is, can I use it, or is that frowned upon?
    – Lou
    Jun 10, 2021 at 19:56
  • You could use something like that to try to show that a reference was not enabled, for example. The previous examiner's comment was about the claims. Your examiner presumably has quoted something from the specification, not the claims. How supported a claim likely irrelevant to what the specification teaches. In an obviousness rejection the examiner needs to cite references that, collectively, contain all of the elements of the claim they are rejecting.
    – George White ♦
    Jun 10, 2021 at 20:45
  • Prosecuting patents is a subtle, deep and ever changing discipline. You might look for a registered practitioner to help you.
    – George White ♦
    Jun 10, 2021 at 20:45
  • If your claim has an A, a B and a C then citations need to be found that have each of those elements. The C in a reference might be a grain of sand in that overall reference but it is needed to bring in the C.
    – George White ♦
    Jun 10, 2021 at 20:50
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    Enablement in a reference is important so that could be a logical use of the previous record.
    – George White ♦
    Jun 11, 2021 at 15:10
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Turned out quoting the file wrapper of the reference patent application didn't hurt. I can't say if it actually helped as the enablement argument was just a blip in an 18 page response. This is how it read--

In the Sabatini prosecution, the first Office Action contained the following assertion on page 12, third paragraph —

...the skilled artisan would be burdened with undue experimentation in determining what substrates of the instant invention would be effective at treating/preventing ANY disease or disorder.

The emphasis on “any” was the examiner’s. According to MPEP 2121.01 —

The disclosure in an assertedly anticipating reference must provide an enabling disclosure of the desired subject matter; mere naming or description of the subject matter is insufficient, if it cannot be produced without undue experimentation.

Under that standard, Sabatini is not enabling, and given that the present inventive combination produces a large decrease of exercise capacity before it ultimately effects a cure, the combination would not be obvious to pursue.

A few days later the examiner called with some suggested amendments to the claims that would streamline them. I agreed, and he said he would amend them and issue the NOA.

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  • Congratulations! Due to the first sentence, this can be looked at as an answer to your own question. Otherwise it would need to be posted as a comment, not as an answer.
    – George White ♦
    Jun 26, 2021 at 22:46

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