Takeaway: An Applicant argued on appeal that a reference was not prior art because the application on appeal "asserted" priority to a PCT application. The BPAI found that the priority claim was ineffective because it did not specify a relationship between the application on appeal and the PCT application. (Ex parte Gidwani, BPAI 2011.)
Details:
Ex parte Gidwani
Appeal 2010-005181
Application 10/272,812
Technology Center 1600
Decided June 28, 2011
The application involved claims to metformin, a drug used to treat diabetes. The Examiner rejected the independent claims as obvious over Matharu in view of Igari or Timmins.
During prosecution, the Applicant argued the merits of the primary Matharu reference. In a footnote, the Applicant also argued that Matharu was not prior art: "MATHARAU was filed 27 June 2002. In contrast, the instant application asserts priority from a PCT application Serial No. PCT/IB2000/01404, filed on 2 October 2000. MATHARU thus does not qualify as prior art."
The Examiner responded in an Office Acton by indicating that "a review of the application does not reveal any evidence of national stage filing other than the first sentence of the spec. It is not claimed in the oath." The Office Action then reproduced portions of the MPEP referencing a petition for a delayed benefit claim under § 1.78.
The Applicant appealed the obviousness rejection, and once again argued both the merits of Matharu and its status as prior art. In the Appeal Brief, the Applicant argued that the specification contains a "specific reference to the prior application" as required by § 120 and "accordingly asserts an October 2000 effective filing date." The Appeal Brief reproduced the first paragraph of the specification:
CROSS-REFERENCE TO RELATED APPLICATIONS
Serial No. 09/857,077, filed April 2, 2002, for SUSTAINED RELEASE PHARMACEUTICAL COMPOSITIONS CONTAINING METFORMIN AND METHOD OF THEIR PRODUCTION, now pending, which is a national phase entry under 35 U.S.C. § 371 of PCT/IB00/01404 filed October 2, 2000, now pending.
The Applicant also addressed the Examiner's comment that national stage filing was not claimed in the oath:
The Examiner, however, ignores applicant's priority assertion, arguing that the Applicant must include its priority assertion not the Specification, but in the Inventors' Oath. Applicant respectfully disagrees because the Office's own procedural manual merely requires the priority assertion be made in "the application" - that is, in the oath, or in the specification, or in an application data sheet. See 35 U.S.C. § 120; MAN. PAT. EXAM. PROC. § 201.11. Applicant did precisely what the statute and the Office's own procedural manual requires. Matharu is thus not eligible as prior art.
In the Answer, the Examiner responded to the issue of Matharu's prior art status by pointing out that the statement in the specification did not identify "the relationship between the instant application and the application over which the priority has been claimed."
The BPAI found that the Applicant's specification did not identify a relationship between the application under appeal and the application mentioned in the Cross Reference section, as required by § 1.78. "Contrary to Appellants' contention, without a relationship, the Specification does not 'assert' an effective filing date for the invention claimed other than the filing date of the Application on appeal." The Board concluded that the claim to priority was not perfected, so that Matharu was prior art.
The Board then found that the Examiner had presented a prima facie case of obviousness, and so affirmed the rejection.
My two cents: Not really a lesson about appeal, but about claiming priority. It appears that this Applicant simply didn't understand the rules for claiming priority. Didn't do it right in the specification as originally flied. Didn't do it in the application transmittal as originally filed. Didn't file an ADS at filing. Didn't file a petition for a delayed benefit claim, which is how you fix this error if you don't catch it right after filing.
It appears that the Applicant realized the mistake after filing the appeal, since an ADS with a priority claim was filed while the case was awaiting a Board decision. Unfortunately, it was way too late for correction via an ADS. The Applicant should have filed a § 1.78 petition to perfect the priority claim, then filed an RCE to pull from Appeal and to tell the Examiner about the perfected claim. I'll bet the Examiner would have removed the Matharu reference.
This goes to show how absolutely lazy Examiners have become. Back in the day when I was an Examiner, you were expected to check the priority claim. If a priority claim appeared at the beginning of the spec, you checked the declaration and other papers to make sure that priority was properly claimed.
ReplyDelete>when I was an Examiner, you checked ... to make
ReplyDelete>sure that priority was properly claimed.
Hmmm. The Examiner did check, and told the Applicant the claim wasn't proper.
I'm not sure if the Examiner waited until the Applicant argued "not prior art" to do so. Is your point that the Examiner should have notified the Applicant when examination began that the claim wasn't proper?
Looking at what they put in the spec at filing the examiner had no obligation to tell him that anything was wrong. That's because nothing was wrong. The applicant told them about a supposedly "related application", they didn't even bother to make a priority claim. Keep in mind there is a difference between listing a related application and in making a priority claim to an application.
ReplyDeleteThis was pure attorney mistake, and the funny thing is they didn't even catch themselves when they got the rejection. The examiner has no duty to ensure that they claim priority to an application which they could possibly claim priority to.
>examiner has no duty to ensure that >they claim priority to an application
Delete>which they could possibly claim
>priority to.
Yeah, I agree with you here. When the applicant finally did indicate that a priority claim was intended (by arguing "not prior art"), the Examiner pointed out what was wrong.
"Is your point that the Examiner should have notified the Applicant when examination began that the claim wasn't proper?"
ReplyDeleteYep, in the First OA, the Examiner should have stated that a priority claim had been made in the spec but no support found in the declaration or other documents.
"The examiner has no duty to ensure that they claim priority to an application which they could possibly claim priority to."
The Examiner has a duty to correlate a claim to priority made in the spec with supporting documents, especially if the filewrapper cover sheet (or its modern equivalent) doesn't indicate a priority claim has been made.
"Yep, in the First OA, the Examiner should have stated that a priority claim had been made in the spec but no support found in the declaration or other documents. "
DeleteYou should read the document, no priority claim was made.
"The Examiner has a duty to correlate a claim to priority made in the spec with supporting documents"
There was no claim to priority made in the spec you tard.
"especially if the filewrapper cover sheet (or its modern equivalent) "
There is no modern equivalent ya oldtimertard.
"You should read the document, no priority claim was made."
DeleteYou must have a reading comprehension problem.
"Ser. No. 09/857,077, filed Apr. 2, 2002, for SUSTAINED RELEASE PHARMACEUTICAL COMPOSITIONS CONTAINING METFORMIN AND METHOD OF THEIR PRODUCTION, now pending, which is a national phase entry under 35 U.S.C. .sctn. 371 of PCT/IB00/01404 filed Oct. 2, 2000, now pending."
See the published application and gon on PAIR to see the spec as filed.
Thanks for completely undermining your credibility. Looks like you are now hoist upon your own peTARD.
"There is no modern equivalent ya oldtimertard."
The Bibliographic Data Sheet, peTARDed one.
Alright tard, where in that listing of a RELATED APP does he say he would like to claim priority to the app he is talking about? Go ahead, try to find where. When you come up empty then try to use that as a learning experience to teach yourself the difference between a claim for priority and a listing of a related application.
Delete"See the published application and gon on PAIR to see the spec as filed.
"
Why ya tard? He hasn't claimed priority ya tard. He may feel free to write down any application he feels is related.
Thanks for proving my point, peTARDed one.
Delete>difference between a claim for
Delete>priority and a listing of a related >application.
I'm curious as to why folks list "related applications" in the Cross Ref section. Is it simply to put the Examiner on notice? Or is there something else I'm missing?
If it's to put the Examiner an notice, surely an IDS is much better way to accomplish this. I say that because while both may actually serve the purpose of notice, an IDS clearly fulfills your duty to disclose under 1.56. Where a court may find that listing an app in the Cross Ref section does NOT fulfill 1.56. Right?
I have been a patent practitioner for well over a decade and have done a great deal of prosecution. I have NEVER filed a patent application or been cited a patent as prior art that contains a cross-reference to related application where the cross-reference WAS NOT a claim for priority.
DeleteThanks for the data point.
DeleteI don't do it myself, but I have come across plenty of files where others did it. In some of these files, the practitioner also filed an IDS. In some of them, no IDS was filed.
Like I said, I'm really curious as to why you would use the Cross Reference section to mention related apps for which no claim to priority is made.
I took a look at the prosecution history and there was some turnover on legal representation. Due to attorney turnover, I myself have inherited cases where I had to fix priority claims, mostly where the claim to a parent application was made but not to the provisional application from which the parent claimed priority.
DeleteThe Spec as filed indicated that it was a 371 filing. The very first OA indicated that the International Search Report listed in the IDS was not being considered because it wasn't in the file. The Bibliographic Data sheet was initialed by the Examiner (no listing of a priority claim under 119). The cover sheet of the Office Action was left blank where it came to priority claims under 119 (not even a notation that a claim had been made but no papers were on file; this should also have clued in the attorneys that something was wrong). As mentioned, the First OA indicated awareness of an international filing and the spec stated that it was a 371 filing yet the Examiner failed to inform the Applicant that they either had to make a proper claim or they had to delete the paragraph from the spec. Yes, this was an attorney screw up but it was also a screw-up on the Examiner's part for not doing their job. The Examiner sees the priority claim in the spec. The Examiner must take action.
ReplyDelete"As mentioned, the First OA indicated awareness of an international filing and the spec stated that it was a 371 filing yet the Examiner failed to inform the Applicant that they either had to make a proper claim or they had to delete the paragraph from the spec. "
DeleteThey most certainly did not need to delete the paragraph from the spec and they most certainly did not have to make a priority claim. The examiner had no business telling them to do either one. Come off your highhorse oldtimertard.
"Yes, this was an attorney screw up but it was also a screw-up on the Examiner's part for not doing their job. "
Dictating to the applicant that they can't simply list a document that they COULD claim priority to as a "related application" instead is an examiner's job? No, tard, it is not.
"Examiner sees the priority claim in the spec."
There is no priority claim in the spec ya tard.
"They most certainly did not need to delete the paragraph from the spec and they most certainly did not have to make a priority claim.The examiner had no business telling them to do either one."
DeleteActually, they do, peTARDed one. It IS the business of Examiners to do more than reject claims.
"There is no priority claim in the spec ya tard."
All in the Eye of the Beholder, peTARDed one. It's like Examiners who are incapable of recognizing means plus function language under 112(6) unless they see the magic word "means" when Courts have recognized that 112(6) is applicable even when the magic word "means" is not used.
It certainly is not the business of examiners to tell people to not list what they feel are related apps in their spec ya tard.
ReplyDelete"All in the Eye of the Beholder, peTARDed one."
True, if the beholder is a tard then they take an improper action like you would. If the beholder is not a tard then they do what the examiner in the case did.
"It's like Examiners who are incapable of recognizing means plus function language under 112(6) unless they see the magic word "means" when Courts have recognized that 112(6) is applicable even when the magic word "means" is not used."
Are you that kind of tard too?
Thanks for proving my point, peTARDed one.
ReplyDelete"Thanks for proving my point, peTARDed one."
ReplyDeleteWhat "point" is that? That you are a tard? I didn't catch you making that point, but I did prove it for you.
"I'm curious as to why folks list "related applications" in the Cross Ref section. Is it simply to put the Examiner on notice? Or is there something else I'm missing? "
ReplyDeleteIt is a fundamental thing your app "should" include.
http://www.uspto.gov/web/offices/pac/mpep/documents/0600_608_01_a.htm
According to some people it is a req.
http://www.patentlens.net/daisy/patentlens/2341.html
However, it appears there is no real requirement to put it in, so many people do not. It does help to keep things tidy though, especially if you're filing 10 apps all related to the same client's work on what amounts to the same subject. And of course it does help to put the examiner on notice.
That is all I know about it. Oh, I guess also I now know that there are a substantial amount of tards that don't understand what it is or the difference between it and claiming priority, and at least one attorney that has never done it before, even after a decade of practice.
"I don't do it myself, but I have come across plenty of files where others did it. In some of these files, the practitioner also filed an IDS. In some of them, no IDS was filed. "
That is because sometimes the related applications may be prior art and need to be brought up on an IDS, and other times they're only co-filed (or even later filed) applications that were all going to be filed with the instant app.
"If it's to put the Examiner an notice, surely an IDS is much better way to accomplish this. I say that because while both may actually serve the purpose of notice, an IDS clearly fulfills your duty to disclose under 1.56. Where a court may find that listing an app in the Cross Ref section does NOT fulfill 1.56. Right?"
That sounds correct, but a co-filed app usually doesn't necessarily need to be on an IDS. For instance, the co-filed app might be for an apparatus that, in the real world, performs the methods claimed in the instant app. But that relationship might not even be disclosed in either of the apps (best mode ring a bell anyone?)
>It is a fundamental thing your app
Delete>"should" include.
"Should" be included IF claiming priority. My comment was about the practice of listing related apps for which there is no claim to priority. AFAIK, the MPEP doesn't say the Cross Ref section should be used for this purpose.
>sometimes the related applications may
>be prior art and need to be brought up
>on an IDS ...
>other times they're only
>co-filed (or even later filed)
>applications
I still don't get it.
Either the "related" app is material to patentability -- in which case it should be submitted in an IDS -- or it's not material to patentability, in which case there is no need to inform the Examiner about it at all. In either case, no reason to list in Cross Ref section.
>co-filed app usually doesn't
>necessarily need to be on an IDS.
>it might be for an apparatus that >performs the methods claimed in
>the instant app.
Then why inform the Examiner about it?
"My comment was about the practice of listing related apps for which there is no claim to priority."
ReplyDeleteYou still "should" include it. Any app you know of that is "related" (whatever you want to call that) "should" go there.
And yes, the MPEP and the office FAQ on the MPEP does address those kinds of applications. They "should" be included in that section.
"Either the "related" app is material to patentability -- in which case it should be submitted in an IDS -- or it's not material to patentability, in which case there is no need to inform the Examiner about it at all."
That is all correct, but if you subjectively believe the app to be related to the instant app then it "should" go in the related apps section. Period. There's nothing more to understand Karen, it is that simple.
"Then why inform the Examiner about it?"
Because they subjectively believe the app to be related to the instant app and when such a thing occurs then it "should" be put in that section. It really is as simple as that Karen.
Keep in mind the only reason you're having a hard time with this is because of your indoctrination, ahem, I meant drafting training that taught you not to include anything you didn't need to. The whole related app section is a nicety except for when you want to claim priority.
I have seen it done a few times (adding a cross ref section but not claiming priority to those apps) because you want the examiner to know that there are other apps that share subject matter. What if you file the same spec for multiple apps on the same day, but they don't claim priority to the same doc? How can I convey to Examiner #1 that any OA (and prior art) that comes in for app #2 should also be considered for app #1? IDS doesn't have a good spot to submit such "related" apps, I dont think.
ReplyDelete