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What to do when the prior art has errors October 24, 2013

Posted by Brian Schar in General, Patent prosecution, USPTO.

Anyone who’s been in the patent profession for any amount of time has run across the situation where the Examiner cites a piece of prior art that is simply wrong.  The cited portion may have a typo, may be badly written or translated to mean something different than context would indicate, or may in some other way be inoperative.  However, there is little case law concerning this situation.

A recent nonprecedential PTAB case provided excellent guidance to applicant as to how to handle that situation.  The appeal in Ex parte Darr centered on Table 3 of an issued patent cited as a prior art reference.  The claims at issue had a limitation of a specific length, and the cited Table 3 read on that length.  However,  Appellants contended that the units of length in Table 3 were obviously in error, and one skilled in the art would immediately know that those units should have been inches, rather than millimeters.  Appellants provided a declaration to that effect, as well as argument.

The PTAB noted that the presumption of operability of an issued patent flows from the presumption of validity, and provided some helpful citations.  (Lacking Lexis, however, I sadly cannot link you, the reader, to a 1935 D.C. Circuit case relied upon by the PTAB.)  However, that presumption is rebuttable by a preponderance of the evidence.  Here, the appellants did so, by providing a declaration and pointing out the clear-cut typographical error. 

Similarly, if the reference were not an issued patent, I would think the same holding would apply.  If the applicant can show by a preponderance of the evidence that there is error in a cited reference, that should overcome a rejection over that reference.

The next time you are faced with this situation, it’s worth taking 5 minutes and reading Ex parte Darr before responding to the Examiner.


1. JohnPDarling - October 29, 2013

This situation raises an interesting question on how to address a clear error in the prior art relied upon to reject the claims. The only burden of proof that I’m aware of that rests with applicant during prosecution is the burden of proof that the prior art is non-enabling with respect to the claimed inventions. It is a preponderance of the evidence standard. All other burdens of proof during prosecution remain with the examiner throughout prosecution, and are of course a preponderance also. (I’m speaking off the top of my head, but I haven’t found any other burden that rests on applicant.)

In this case it may have made sense to attack the rejection by arguing that the examiner had not met the burden to correctly resolve the factual inquiry into the scope and content of the prior art. In other words, the examiner has the burden to establish that all of the claimed elements/features were within the scope and content of the prior art, and by relying on a clearly erroneous prior art reference, the examiner failed to carry that burden. A Declaration, just like the one applicant submitted in this case, should do the trick. Otherwise, the examiner, and maybe even the Board, could/may dismiss the response as attorney argument.

As obviousness is a question of law based on underlying factual determinations, any determination of obviousness predicated on an incorrect factual determination would be legally improper.

I prefer to stress the examiner’s burdens and explain why the examiner has failed to meet them. I think that would have been a successful approach in this case. However, this applicant took a different approach and was successful.

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