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

[Jeffrey Semprebon]

No positive experience with 3rd party submissions, but I'd be tempted in
the explanation to state what the prior art discloses and that it predates
the earliest effective filing date for the claimed X+Y combination, with a
note that the combination is first disclosed in the non-provisional. If X
alone is not claimed, then there's no reason to mention the provisional at
all. If X is claimed, then the remarks on the prior art can address the
claim to X separately from the claim to X+Y.



-Jeff

Jeffrey E. Semprebon
Semprebon Patent Services
www.semprebonps.com
72 Myrtle Street
Claremont, New Hampshire 03743

On Mon, May 20, 2024 at 7:06 AM Dan Feigelson via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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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>
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>
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