Patent It Yourself - PDF Archive

358 | Patent it YOURSELF
instructions can be found at the PTO website (www.uspto.
gov/ebc).
After you obtain copies of the cited references, check
all of them carefully to make sure you’ve received all the
correct references listed in the Notice of References Cited.
If there’s any discrepancy, or if any seem irrelevant, call or
write the examiner at once. This call will not count as an
interview. (You are usually limited to two interviews.)
If you sent in an IDS and PTO/SB/08, the examiner will
send, with your first OA, a copy of your PTO/SB/08, with
the blank adjacent each reference initialed to show that the
examiner has considered it. If you don’t get the PTO/SB/08
back with every reference initialed, check with your examiner.
Otherwise, the references you cited on your PTO/SB/08
won’t be listed on your patent when it’s printed.
Next, read the OA carefully and make a detailed written
summary of it so that you’ll have it impressed in your mind.
After that, reread your application, noting all grammatical
and other errors in the specification, claims, and drawings
that you would like to correct or improve. Remember,
however, that you can’t add any “new matter” to your
application.
3. Read and Analyze Each Cited
Reference, Except Patent Claims
Next, read every applied prior-art reference (except the
claims of patent references) completely and carefully. (You
don’t have to read the nonapplied references carefully, but
you should review them to be sure none is more relevant
than an applied reference.) Make sure that you take enough
time to understand each reference completely, including
all of the structure involved and how it works. Write a brief
summary of each reference, preferably on the reference itself,
even if it has an adequate abstract, in order to familiarize
yourself with it in your own words.
CAUTION
Don’t Fall Into a Claims Trap. As I mentioned
in Chapter 6 in connection with conducting a patentability
search, don’t read the claims of any patent cited as a reference.
Why not? Because the patent has not been cited for what it
claims, but rather for what it shows about the prior art. The
claims generally only repeat parts of the specification and are
not directly relevant to the patent prosecution process, since
they are only used to determine whether infringement exists. If
you think of cited patents as magazine articles, you’ll avoid this
“claims trap” that most laypersons fall into.
“Swearing Behind” References: Under the PTO’s Rule 131,
you can “swear behind” and thus eliminate certain cited
references as prior art to your application, provided you can
prove that your date of invention is earlier than the effective
date of the reference. (Remember from Chapter 5, Section
E, that your date of invention is the earliest of (1) your filing
date (regular or PPA), (2) your date of building and testing,
or (3) your date of conception followed by diligence. The
effective date of any U.S. patent reference is its filing date
and the effective date of any other reference is its publication
date.)
If the PTO cites a reference against your application that has
an effective date later than your date of invention, and you can
prove your date of invention (you’ll be able to if you’ve followed
my recording instructions in Chapter 3!), you’re in luck:
You can swear behind this reference and thereby completely
eliminate it from consideration. Typical references that you
can swear behind are U.S. patents with filing dates, and
other publications with publication dates earlier than your
filing date but later than your date of invention.
To swear behind such a reference, you must submit
a declaration containing facts with attached copies of
documents showing that you built and tested the invention,
or conceived the invention and were thereafter diligent in
building and testing it, or filing the patent application before
the effective date of the reference. See MPEP 715 for details.
If you’ve filed a PPA and need to rely on its filing date,
merely refer to it by its Serial Number and Filing Date and
point out to the examiner that a reference that the examiner
cited is ineffective because you have an earlier effective filing
date due to your PPA. Remember, however, that if your PPA
didn’t disclose your invention completely in accordance with
Sec. 112, 1, you won’t be entitled to rely on it.
One-Year Rule and Interference Limitations: Two
important limitations exist on your right to swear behind:
(1) Because of the “one-year rule” (Chapter 5, Section E),
you can’t swear behind any reference (U.S. patent or otherwise)
with a publication date over one year before your filing
date. (There’s no limitation as to how far you can swear
back if the reference is a U.S. patent which issued less than
one year before your filing date.) (2) You can’t swear behind
a U.S. patent which claims the same invention as yours;
the only way you can overcome such a patent is to get into
interference with it and win “priority.” (See Chapter 15.)
4. Make a Comparison Chart
Next, you’ll find it helpful to make a comparison chart
showing every feature of your invention across the top of
the chart and listing the references down the left-hand side
of the chart, as in Fig. 13B.