RE: [PIUG List] A Question relating to Replying to Office Actions

Bhaskar - Evidence is evidence. It relevance in each case depends upon
the facts of the case. I do not know your facts, nor would I provide
specific advice over the Internet and outside of a client confidence and
engagement. However, I can give you two anecdotes.
 
In one case, the BPAI in an appeal decision entered a new ground of
rejection based upon their own characterization of a passage in a
reference. However, the passage was itself a characterization of a
specified US application number. The BPAI failed to appreciate this, at
least in their new ground they failed to appreciate it. The reference
number was not for a published application. However, it was upon
diligent research found to be off by one digit from an application
number for an earlier application having a common inventor and disclosed
the subject matter having the same reference numbers in the relevant
figure as the reference applied by the examiner, and then reapplied by
the BPAI in a new ground or rejection. By identifying the referenced
document, by arguing that it was a self evident error, we got the BPAI
to reconsider their new ground of rejection, upon rehearing. The case
is still pending, so I can say no more.
 
In one case, the examiner applied a reference, a US patent, improperly,
for disclosure not contained in the CIP parent application resulting in
the US patent, and the US patent was not prior art based upon its actual
filing date. This is an over simplification since the US patent family
was more complex. However, under Wertheim, the reference was not prior
art for the limitations and features upon which the examiner relied.
See for discussions of Wertheim,
http://www.neifeld.com/PriorityMatters.htm and
http://www.neifeld.com/PPLT_files/frame.htm#slide0021.htm and in more
detail http://www.neifeld.com/pppt_paper_040624.htm.
 
Please note: I am not going to respond further on the list serve on this
topic because I am getting too many "Out of Office" email responses.
thanks, RICK
 
 
.
-----Original Message-----
From: bhaskar pandey [mailto:bhaskar.patent_at_gmail.com]
Sent: Tuesday, April 15, 2008 1:41 PM
To: Rick Neifeld
Cc: PIUG Discussion List @ Listbox
Subject: Re: [PIUG List] A Question relating to Replying to Office
Actions


Dear Rick,
 
Thanks for your reply. I will be highly obliged if you can kindly throw
some light on, how seriously the Examiner took your argument, which was
based on prosecution history and further did you use the prosecution
history argument to provide support to another stronger argument for the
same claim, or that was the only argument you were banking on. Thanks a
lot for taking out time to reply to my question. Thanks again
 
Thanks and regards,
Bhaskar


On Tue, Apr 15, 2008 at 10:04 PM, Rick Neifeld <rneifeld_at_neifeld.com>
wrote:


Bhaskar - That is a legal question. The answer depends upon the facts.
However, I have used the prosecution history of a reference in such
situations. Thanks, RICK
 
Rick Neifeld, Ph.D. Patent Attorney
President
Neifeld IP Law, PC URL: www.Neifeld.com <http://www.neifeld.com/>
StockPricePredictor.com, LLC URL: www.PatentValuePredictor.com
<http://www.patentvaluepredictor.com/>
4813-B Eisenhower Avenue
Alexandria Virginia 22304
Tel: 703-415-0012
Fax: 703-415-0013
This email may contain privileged and confidential information. If you
are not the intended recipient, delete this email and notify the sender.






-----Original Message-----
From: bhaskar pandey [mailto:bhaskar.patent_at_gmail.com]

Sent: Tuesday, April 15, 2008 1:05 AM
To: PIUG Discussion List @ Listbox
Subject: [PIUG List] A Question relating to Replying to Office Actions


Dear All,
 
I will be highly obliged if any one could please tell me, that whether
can we use the prosecution history of the reference cited by Examiner,
to show distinctness between our invention and the reference, and how
much weight does the argument based on prosecution history of the
reference holds.
 
Thanks in advance,
 
Thanks and regards,
Bhaskar
  _____




  _____

PIUG (r) -- Celebrating Our 20th Anniversary

PIUG Discussion List @ Listbox
List owner: Patent Information Users' Group Inc., http://www.piug.org
<http://www.piug.org/>
List rules and guidelines: http://www.piug.org/list.php
List admins: piug_discussion_list-owner(at)v2(dot)listbox(dot)com

Modify
<http://www.listbox.com/member/?&
a6b> Your Subscription | Unsubscribe Now
11-da8527> <http://www.listbox.com/>






-------------------------------------------
-------------------------------------------
PIUG ® -- Celebrating Our 20th Anniversary

PIUG Discussion List @ Listbox
List owner: Patent Information Users' Group Inc., http://www.piug.org
List rules and guidelines: http://www.piug.org/list.php
List admins: piug_discussion_list-owner(at)v2(dot)listbox(dot)com

3&id_secret=98839165-54a246
_secret=101483107-69b265


Received on Tue Apr 15 2008 - 21:23:00