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Patent Law

: Patently Obvious

Responding to Examiner?s Charge of Burying Reference

By Dennis Crouch, Esq.

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In another recent first office action, the Examiner complained of the "voluminous references" submitted by the applicant. In this case just over 75 references were submitted.

[T]he cloaking of a clearly relevant reference by inclusion in a long list of citations may not comply with the Applicant's duty of disclosure. Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948 (S.D. Fla. 1972). . . . accord with dicta from Molins PLC v. Textron, Inc., 48 F.3d 1172 (Fed. Cir. 1995), stating that forcing the Examiner to find "a needle in a haystack" is "probative of bad faith." Id. [The Molins] case presented a situation where the disclosure was in excess of 700 pages and contained more than fifty references.

Therefore, it is recommended that if any information that has been cited by Applicants in the previous disclosure statements is known to be material for patentability as defined by 37 C.F.R. § 1.56, applicant should present a concise statement as to the relevance of that/those particular documents therein cited.

The Examiner here appears to only recommend more detailed statements about the submissions. Under 37 C.F.R. § 1.105 and Star Fruits, the Examiner could have instead officially requested such information.

Earlier in the year Shell Oil proposed an alternative rule that would allow an Examiner to "decline consideration of [a] reference" when the reference's relevance could not be determined. In response, the "attorney could concisely point out the section or portion of the reference believed to be relevant or submit a concise statement of the relevance of the reference as a whole." [Link]

Full post as published by Patently Obvious on November 07, 2008 (boomark / email).

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