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Previously, I showed how to access USPTO PAIR to examine public records of a patent application’s prosecution as well as identify any related US patent documents. PAIR is an important part of any prior art searcher’s tool belt because the US patent system is such a large store of information and PAIR gives users limited access to the inner-workings of that store, providing info on related documents that a given search system may not have as well as making available the file history which contains a treasure trove of information that can be mined for help on your search.
As commenter Mike pointed out on our last post, the file histories on PAIR are not searchable (or in one file, even). This problem can be rectified by learning to look in the right place or better yet, by acquiring a fully searchable file history from a third party. Landon IP offers patent file histories with fully searchable and bookmarked contents (disclaimer: Landon IP is the parent company of Intellogist). Additionally, Landon IP checks the accuracy of every page, notifies you of papers or pages that are missing from the master file, directs your attention to important papers and attachments and drafts a professional file cover that identifies all of the references that were considered by the examiner.
Let’s say that you are doing a Validity Search (sometimes called an Invalidity Search) — trying to invalidate an issued patent by finding prior art. In this case it’s helpful to acquire the file history.
In the file history, you’ll want to look for a document called the “Non-Final Rejection.” This may be its own document if you got it from PAIR or it may be bookmarked within the entire searchable file history if you got it from Landon IP, for example. This is a rejection by the examiner in the back and forth of the prosecution that explicitly details why the examiner thought that the submitted patent application did not clear all the hurdles of patentability. In the end, the argument was won by the applicant or the claims were amended to clear the hurdles of patentability, resulting in the final document. It is important to note that the “Non-Final Rejection” is a rejection of certain claims from a previous version of the application and/or claims and cannot be expressly used to find prior art that summarily rejects the same patent in your Validity study. However, the “Non-Final Rejection” may be used to identify key prior art that can help build a case of invalidity (perhaps by searching citations or classifications of this key patent document). Also recall that the prosecution history can be used to construe claims should the written description not be sufficient, so reviewing this file history can be very important in understanding the claims!
Here’s an example of the text of a “Non-Final Rejection” for Application/Control Number 10/758,909 – “Lightweight Composite Tailgate”
Claim Rejections – 35 USC § 102
4. The following is a quotation of the appropriate paragraphs of35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
5. Claims 10-12 are rejected under 35 U.S.C. 102(b) as being anticipated by Furubayashi et al.
Furubayashi et al. disclose an inner structural panel (door guard bar 11) comprising: a support surface (main body portion 12) having a plurality of ribs (parallel grooves 12a) extending laterally along the support surface; and a reinforcing panel (patch 16) secured to the ribs to box the inner structural panel.
The Furubayashi et al. document may therefore be useful to invalidate the “Lightweight Composite Tailgate” granted patent or to find additional prior art, depending on the claim change after the “Non-Final Rejection.” The patent number of the Furubayashi et al. patent (or a similar patent in the same situation) will be found in the file history in a document on the same date called “List of references cited by examiner.” This list is another good starting point to acquire helpful information such as related classifications, assignees, and inventors (most search systems use a version of this data for their citation fields).
For further information, I want to thank Stanley D. Schwartz (visit the link for his public profile on LinkedIn with all of his qualifications), who wrote a very illuminating post on LinkedIn in response to my initial PAIR article. Mr. Schwartz discloses his tips and trips for using rebuttals to office actions and finding non-patent literature art in this insightful comment. To view the whole comment you must be signed in to LinkedIn and a member of the Patent Searching group, but here is an excerpt:
Similarly, details or information in an earlier filed application or information that may be present, in a declaration filed under 35 U.S.C. 132, that provides comparative experimental data submitted to rebut a presumption of obviousness, could be available as a prior art reference as of the date of publication of the issued patent. I once used the information in such an declaration to establish the invalidity of a patent directed to a structurally related chemical compound.
I hope you found the information in this post useful–please let us know in the comments if you did! Also feel free to give us your favorite PAIR tips. We might just have another one of these articles if everyone is on their best behavior.
This post was contributed by Intellogist Team member Chris Jagalla.