[Patentpractice] question re submission under 35 USC 301/37 CFR 1.501

[Dan Feigelson]

Client has what it believes to be a US patent that anticipates several
claims of a competitor's US patent.  The patent to be cited was only
published after the filing of the competitor patent, the patent to be cited
has an earliest date (provisional application filing date) that precedes
the earliest date for the competitor patent, and thus is citable under 102
and 103.

A submission under 35 USC 301/37 CFR 1.501 must contain a statement about
the relevance of the cited publication(s) to at least one claim of the
patent. No problem there, in this case.

What I'm wondering about is the following: the competitor patent claims the
benefit of a provisional that discloses X, but the patent also discloses
X+Y, which means that the competitor patent is only entitled to the actual
non-prov filing date for any claims on X+Y.

We think the anticipatory patent already shows X+Y from its earliest date,
viz. from before the filing of the competitor provisional. Thus, to make
our case, it's not necessary to show that the competitor patent is only
entitled to the later filing date for X+Y.  I think it would nevertheless
be worthwhile to point this out in the 35 USC 301/37 CFR 1.501 submission,
if only to have that statement in the record in order to weaken the
competitor's position.

What I'm wondering is, since showing that X+Y isn't necessary in order to
get the anticipatory patent admitted as prior art and to make the showing
of anticipation, might the PTO bounce our submission for including
extraneous material? As I read the statute and rule, I don't think we're
precluded form including the extra information, but if anyone knows for
sure the PTO will frown on this, I'd like to know beforehand.

(And FWIW, the client is still weighing whether or not to pony up the ex
parte reexamination fee. It does not have the funds for an IPR.)

Relevant parts of 35 USC 301:


   - (a) IN GENERAL.—Any person at any time may cite to the Office in
   writing—
      - (1) prior art consisting of patents or printed publications which
      that person believes to have a bearing on the patentability of
any claim of
      a particular patent; * * *
      - (b) OFFICIAL FILE.—If the person citing prior art or written
   statements pursuant to subsection (a) explains in writing the pertinence
   and manner of applying the prior art or written statements to at least 1
   claim of the patent, the citation of the prior art or written statements
   and the explanation thereof shall become a part of the official file of the
   patent.


Relevant parts of 37 CFR 1.501:


   - (a) *Information content of submission:* At any time during the period
   of enforceability of a patent, any person may file a written submission
   with the Office under this section, which is directed to the following
   information:
      - (1) Prior art consisting of patents or printed publications which
      the person making the submission believes to have a bearing on the
      patentability of any claim of the patent; * * *
      - (b) *Explanation:* A submission pursuant to paragraph (a) of this
   section:
      - (1) Must include an explanation in writing of the pertinence and
      manner of applying any prior art submitted under paragraph (a)(1) of this
      section and any written statement and accompanying information submitted
      under paragraph (a)(2) of this section to at least one claim of
the patent,
      in order for the submission to become a part of the official file of the
      patent * * *


Dan

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