What to do when the prior art has errors October 24, 2013Posted 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A recent nonprecedential PTAB case provided excellent guidance to applicant as to how to handle that situation.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.