Tuesday, July 8, 2008

Claim Rejections Based On Large References

Can an Examiner reject a claim by selecting from a patent reference a large number of widely separated and logically unrelated passages, in cookie-cutter fashion, in order to cover the various concepts recited by the claims? The PTO Rules of Practice require the examiner to cite only what he considers the best references. Multiplying references, any one of which is as good as, but no better than, the others, adds to the burden and cost of prosecution and should therefore be avoided.

The Appeals Board held that similar observations apply to citing parts of an individual reference. "The Examiner is not called upon to cite all parts of a reference that may be available but only the best. Multiplying citations to parts or a reference, any one of which is as good as, but no better than, the others, adds to the burden and cost of prosecution." So the answer is no.

See: Ex Parte Dewing et al Appeal No. 2008-0026 (BPAI July 9, 2008)

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1 Comments:

At February 13, 2012 at 6:24 PM , Anonymous Anonymous said...

Yeah, but if he doesn't cite all those in the reference application you'll argue the one he did and then demand a 2nd action non-final because he didn't cite the "correct" portion of the reference. Better to just cite everything.

 

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