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A.  Prior Art Issues

General PA Issues
1.1:  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?
1.2 Must the cited PA enable the claim in order to be valid PA?
Anticipation -- 35 USC 102
2.1
Obviousness -- 35 USC 103
3.1

 

A1.  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.

35USC132(a)
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.

37CFR 1.104(c)(2)
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.

CAFC, 1991.  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 claim. 

CAFC, Oct13.1992  In re Oetiker 977 F2d 1443  [This was an obviousness case. Hose clamp.  Rejection rversed because non-analogous art applied]
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 obviousness.

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 held:
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 possession. 

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 didnt 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 hasnt 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 valid PA?

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 obviousness..
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 2121.01. 

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 provide translation?

MPEP 707.05.  Yes.  And he must be clear as to whether examiner is relying on full text or abstract. 



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A2.  Anticipation

A2.1:  

 

 

  

 


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