Patent Prosecution: 35 U.S.C. § 112(a) Must Be Raised Before a § 102 or § 103
|Written by Dale B. Halling
Law Offices of Dale B. Halling
Posted: March 11, 2013 @ 1:04 pm
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The Patent Office should be estopped from raising a § 112 (a) rejection after raising a § 102 or § 103 rejection in an earlier office action. 35 U.S.C. § 112 (a) states:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention
Logically, if the application does not describe an invention in terms that allows one skilled in the art to make and use it, then the Patent Office should not have sufficient information to suggest that the application is not novel or obvious. In order to determine something is not novel or obvious you first have to know what it is. I have no objection to the Patent Office putting a 35 U.S.C. § 112 (a) and novelty/obviousness rejection in the same Office Action, where the PTO explains that to the best of their understanding of the invention it would not be novel or obvious for the following reasons.
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However, when the Patent Office in a previous office action does not raise a 35 U.S.C. § 112 (a) rejection but does raise either § 102 or § 103 rejection of all the claims and then in a latter Office Action raises a 35 U.S.C. § 112 (a) this is illogical and the Patent Office should either: 1) be estopped from raising the 35 U.S.C. § 112 (a) or 2) provide an affidavit that the examiner is “one skilled in the art” and that they do not have the information necessary to make and use the invention. If the PTO does submit an affidavit, this should be able to be overcome by an affidavit provided by the applicant by “one skilled in the art.” The only grounds for the PTO to rebut this is to suggest the applicant’s affidavit does not show that the person is “one skilled in the art”, which should be a very high burden on the part of the PTO>
The particular circumstances that bring this to mind is a case that has been pending over a decade. The applicant has filed multiple responses, filed an appeal and won, was told that modifying the claims in a certain manner that would make the claims allowable, the applicant made the suggested changes and received new rejections, negotiated new amendments to the claims that they were told would make the claims allowable. They again submitted a response along the lines negotiated and then the Patent Office, after a decade of prosecution, raised a 35 U.S.C. § 112 (a) issue. Note all the amendments were based on incorporating dependent claims.
I would appreciate feedback on my proposed rule that the PTO be estopped from raising 35 U.S.C. § 112 (a) rejection after previous Office Action that had no 35 U.S.C. § 112 (a) rejection but did have a novelty/obviousness rejection of all the claims.