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A. Prior Art Issues
examiner required to point out how the cited PA meets each and every
element and limitation? In other words, what is a prima facie case?
||Must the cited PA enable the claim in order to be valid PA?
General PA Issues
A1.1: Is the
examiner required to point out how the cited PA meets each and every element and
limitation? In other words, what is a prima facie case?
This issue might
be referred to as The All Elements Rule II (AER II) -- designated "II"
because the first, and original AER applies to infringement. In AER I, in
order for an infringer to infringe, the infringing device must meet each and
every of the claim elements and limitations [cite]
AER II is
derived from AER I by the inverse of the principle that "What what would
anticipate before [patenting] infringes after," which operates as as
setting anticipation equal to infringement.
Whenever, on examination, any claim for a patent is
rejected, or any objection or requirement made, the Director shall notify the
applicant thereof, stating the reasons for such rejection, or objection or
requirement, together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of his application; and
if after receiving such notice, the applicant persists in his claim for a
patent, with or without amendment, the application shall be reexamined. No
amendment shall introduce new matter into the disclosure of the invention.
In rejecting claims for want of novelty or for obviousness, the examiner must
cite the best references at his or her command. When a reference is complex or
shows or describes inventions other than that claimed by the applicant, the
particular part relied on must be designated as nearly as practicable. The
pertinence of each reference, if not apparent, must be clearly explained and
each rejected claim specified.
In re Bond. 910 F.2d 831. The PTO is required under the Administrative
Procedures Act to make a written record of every reason for rejecting each
CAFC, Oct13.1992 In re Oetiker 977 F2d 1443 [This was an obviousness case. Hose clamp.
Rejection rversed because non-analogous
The examiner bears the burden of making a PFC. This is
true in all arts. The applicant must respond. The standard is
preponderance of the evidence. If examination at initial stage does not
produce PFC, the applicant is entitled to a patent. The examiner does not findings
of "prima facie obvious" because obviousness is not determined until
after applicant answers. The examiner makes a prima facie case FOR
The examiner cannot sit mum, leaving the applicant to shoot arrows into the dark
hoping to somehow hit a secret objection harbored by the examiner. The 'prima
facie case' notion, the exact origin of which appears obscure (see In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.Cir.1984)), seemingly was
intended to leave no doubt among examiners that they must state clearly and
specifically any objections (the prima facie case) to patentability, and give
the applicant fair opportunity to meet those objections with evidence and
argument. Pflager, concurring, In re Oetiker 977 F.2d 1443, 24 USPQ 2d
14434, 1447 (Fed. Cir., 1992).
CAFC Jun28.2007 Hyatt v Dudas, (CAFC 2006-1171)
Rather than address the merits, Hyatt argued lack of PFC in rejections on lack
of written description. BPAI upheld examiner. Hyatt filed Section
145 case in USDC. USDC said lack of explanation of rejections insufficient
and remanded to PTO. PTO appealed. CAFC reversed.
In order to demand more information from applicant, Examiner
must first make PFC. Order to remand not normally
appealable, but they made an exception here [because the PTO lost]. Court
PFC is required for any type of rejection, including section
112. It's enough just to say that element A in Claim 1 is not supported by
spec. Then applicant has to show enough description to indicate he was in
CAFC. Mar28.2011 In Re Jung (CAFC 2010-1019, Mar 28.2011)
If the examiner fails to explain a gap between a claim and the cited PA,
applicant cannot merely cry "foul." Applicant must put PTO on
notice that there is an unfilled gap and that the PFC has not been made.
In In Re Jung and Wood, the examiner rejected all
claims as anticipated by ‘571 patent. Jung amended and examiner again rejected
all pending claims. Jung appealed to BAPI. According to CAFC here Jung for the
first time explained the differences between his claims and ‘571. The Board
affirmed the examiner on all but Claim 5. Board denied re-hearing and Jung
appealed to CAFC, limiting arguments to controller element of Claim 1.
Jung argued on appeal that examiner failed to make prima
facie case of anticipation. Gajarsa held:
1. PTO makes a PFC by "adequately explain[ing] the
shortcomings it perceives so that the applicant is properly notified and able to
respond." Hyatt, 492 F.3d 1365 at 1370. IOW, the PFC burden is
satisfied when 35 USC 132 is satisfied – notifying applicant of the reasons
for the rejection with enough information ". . . as may be useful in
judging of the propriety of continuing prosecution . . ." That section
"is violated when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection." Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
2. The conflict was that examiner said ‘571 taught the
controller but didn’t explain how or why. Jung said this was not a PFC and did
not explain why ‘571 failed to teach the controller. The CAFC complained that
it was Jung who failed to articulate the gaps between the PA and the claim that
needed filling in by the examiner.
3. Jung argued that until examiner made PFC, applicant had no
burden. CAFC disagreed. Applicant does not have any right to procedurally
challenge and appeal lack of PFC before having to substantively respond to the
merits. [This is a total fuck up. If examiner hasn’t made the PFC, how can
the applicant know how to respond substantively?] "There has never been a requirement
for an examiner to make an on-the-record claim construction of every term in
every rejected claim and to explain every possible difference between the prior
art and the claimed invention in order to make out a prima facie rejection. . .
As discussed above, all that is required of the office to meet its prima facie
burden of production is to set forth the statutory basis of the rejection and
the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132."
A1.2: Must the cited PA enable the claim in order to be
CAFC, 1989 Beckman v. LKB 892 F2d 1547 . PA must
teach how to make a device that works for its intended purpose, or if not, then
PHOSITA must be able to use PA to making a working apparatus.
CAFC, 1991, 935 F.2d 1569, 1578. Symbol
Techs. Inc. v. Opticon Inc., No, at least as far as
Even if the reference is inoperative it is still PA for what it discloses.
Beckman v. LKB 892 F2d 1547, CAFC, 1989. Therefore, a non-enabling
reference may qualify for PA in determining obviousness. MPEP
CAFC, 1991. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1562-63. Where the parent application of a CIP does not enable
the broad claims of the CIP, then those broad claims do not get the priority of
the parent. If the parent is published prior to filing the CIP, the parent
can act as PA because the PA need not be enabling as PA but it does need to be
enabling as a parent.
A1.3: If examiner cites PA in foreign language, must he
MPEP 707.05. Yes. And he must be clear as to
whether examiner is relying on full text or abstract.
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