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?

  • If you could link to the cited patent we might be able to better help you. – Eric S Jun 13 at 16:28
  • I filed the response yesterday, so we'll see. – Lou Jun 14 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 9 hours ago

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.

  • 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 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 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 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 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 at 15:10

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