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2205 Content of Prior Art Citation [R-7] - 2200 Citation of Prior Art and Ex Parte Reexamination of Patents
2205 Content of Prior Art Citation [R-7]
The prior art which may be submitted under 35 U.S.C. 301 is limited to "written prior art consisting of patents or printed publications."
*>Pursuant to 35 U.S.C. 301, an< explanation is required of how the person submitting the prior art considers it to be pertinent and applicable to the patent, as well as an explanation of why it is believed that the prior art has a bearing on the patentability of any claim of the patent. The prior art citation must, at a minimum, contain some broad statement of the pertinency and applicability of the art submitted to the patentability of the claims of the patent for which the prior art citation is made. *>The explanation of why it is believed that the prior art has a bearing on the patentability of any claim of the patent< would be met, for example, by a statement that the art submitted in the prior art citation under 37 CFR 1.501 was made of record in a foreign or domestic application having the same or related invention to that of the patent. >The explanation of how the person submitting the prior art considers it to be pertinent and applicable to the patent would set forth, for at least one of the patent claims, how each item cited shows or teaches at least one limitation of the claim.< Citations of prior art by patent owners may also include an explanation of how the claims of the patent differ from the prior art cited.
It is preferred that copies of all the cited prior art patents or printed publications and any necessary English translation be included so that the value of the citations may be readily determined by persons inspecting the patent files and by the examiner during any subsequent reissue or reexamination proceeding.
All prior art citations filed by persons other than the patent owner must either indicate that a copy of the citation has been mailed to, or otherwise served on, the patent owner at the correspondence address as defined under 37 CFR 1.33(c), or if for some reason service on the patent owner is not possible, a duplicate copy of the citation must be filed with the Office along with an explanation as to why the service was not possible. The most recent address of the attorney or agent of record may be obtained from the Office's register of registered patent attorneys and agents maintained by the Office of Enrollment and Discipline pursuant to 37 CFR 10.5 and 10.11(a).
All prior art citations submitted should identify the patent in which the citation is to be placed by the patent number, issue date, and patentee.
A cover sheet with an identification of the patent should have firmly attached to it all other documents relating to the citation so that the documents will not become separated during processing. The documents themselves should also contain, or have placed thereon, an identification of the patent for which they are intended.
Affidavits or declarations or other written evidence relating to the prior art documents submitted may accompany the citation to explain the contents or pertinent dates in more detail. A commercial success affidavit tied in with a particular prior art document may also be acceptable. For example, the patent owner may wish to cite a patent or printed publication which raises the issue of obviousness of at least one patent claim. Together with the cited art, the patent owner may file (A) an affidavit of commercial success or other evidence of nonobviousness, or (B) an affidavit which questions the enablement of the teachings of the cited prior art.
No fee is required for the submission of citations under 37 CFR 1.501.
A prior art citation is limited to the citation of patents and printed publications and an explanation of the pertinency and applicability of the patents and printed publications. This may include an explanation by the patent owner as to how the claims differ from the prior art. It may also include affidavits and declarations. The prior art citation cannot include any issue which is not directed to patents and printed publications. Thus, for example, a prior art citation cannot include a statement as to the claims violating 35 U.S.C. 112, a statement as to the public use of the claimed invention, or a statement as to the conduct of the patent owner. A prior art citation must be directed to patents and printed publications and cannot discuss what the patent owner did, or failed to do, with respect to submitting and/or describing patents and printed publications, because that would be a statement as to the conduct of the patent owner. The citation also should not contain argument and discussion of references previously treated in the prosecution of the invention which matured into the patent or references previously treated in a reexamination proceeding as to the patent.
If the prior art citation contains any issue not directed to patents and printed publications, it should not be entered into the patent file, despite the fact that it may otherwise contain a complete submission of patents and printed publications with an explanation of the pertinency and applicability. Rather, the prior art citation should be returned to the sender as described in MPEP § 2206.
Examples of letters submitting prior art under 37 CFR 1.501 follow.
EXAMPLE I
Submission by a third party:
Example I (Submission by a third party) [Page 1 of 5]
IN THE UNITED STATESPATENT AND TRADEMARK OFFICE In re patent of
Joseph Smith
Patent No. 9,999,999
Issued: July 7, 2000
For: Cutting ToolSubmission of Prior Art Under 37 CFR1.501 Hon. Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Sir: The undersigned herewith submits in the above-identified patent the following prior art (including copies thereof) which is pertinent and applicable to the patent and is believed to have a bearing on the patentability of at least claims 1 - 3 thereof: Weid et al U.S. 2,585,416 April 15, 1933
McGee U.S. 2,722,794 May 1, 1934
Paulk et al U.S. 3,625,291 June 16, 1936Each of the references discloses a cutting tool strikingly similar to the device of Smith in having pivotal handles with cutting blades and a pair of dies. It is believed that each of the references has a bearing on the patentability of claims
1 - 3 of the Smith patent.Insofar as claims 1 and 2 are concerned, each of the references clearly anticipates the claimed subject matter under 35 U.S.C. 102. As to claim 3, the differences between the subject matter of this claim and the cutting tool of Weid et al are shown in the device of Paulk et al. Further, Weid et al suggests that different cutting blades can be used in their device. A person of ordinary skill in the art at the time the invention was made would have been led by the suggestion of Weid et al to the cutting blades of Paulk et al as obvious substitutes for the blades of Weid et al. Respectfully submitted,
(Signed)
Certificate of Service I hereby certify on this first day of June 1982, that a true and correct copy of the foregoing "Submission of Prior Art" was mailed by first-class mail, postage paid, to: Ben Schor
555 Any Lane
Anytown,VA 22202(Signed) John Jones EXAMPLE II
Submission by the patent owner:
Example II (Submission by the patent owner) [Page 1 of 3]
IN THE UNITED STATESPATENT AND TRADEMARK OFFICE In re patent ofJoseph SmithPatent No. 9,999,999Issued: July 7, 2000For: Cutting Tool Submission of Prior Art Under 37 CFR1.501 Hon. Commissioner for PatentsP.O. Box 1450Alexandria, VA 22313-1450 Sir:
The undersigned herewith submits in the above identified patent the following prior art (including copies thereof) which is pertinent and applicable to the patent and is believed to have a bearing on the patentability of at least claims 1-3 thereof:
Example II (Submission by the patent owner) [Page 1 of 3]
Weid et al U.S. 2,585,416 April 15, 1933
McGee U.S. 2,722,794 May 1, 1934
Paulk et al U.S. 3,625,291 June 16, 1936Each of the references discloses a cutting tool strikingly similar to the device of Smith in having pivotal handles with cutting blades and a pair of dies. While it is believed that each of the references has a bearing on the patentability of claims 1 - 3 of the Smith patent, the subject matter claimed differs from the references and is believed patentable thereover. Insofar as claims 1 and 2 are concerned, none of the references show the particular die claimed and the structure of these claimed dies would not have been obvious to a person
of ordinary skill in the art at the time the invention was made.
As to claim 3, while the cutting blades required by this claim are shown in Paulk et al, the remainder of the claimed structure is found only in Weid et al. A person of ordinary skill in the art at the time the invention was made would not have found it obvious to substitute the cutting blades of Paulk et al for those of Weid et al. In fact, the disclosure of Weid et al would lead a person of ordinary skill in the art away from the use of cutting blades such as shown in Paulk et al. The reference to McGee, while generally similar, lacks the particular cooperation between the elements which is specifically set forth in each of claims 1-3. Respectfully submitted, (Signed)
William GreenAttorney for Patent OwnerReg. No. 29760
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