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PRIMA FACIE CASE: Examiners rejection is vague.

posted Jan 13, 2013, 4:36 PM by Robert Crownover
When the Examiner fails to clearly use the references to reject claims there are a few good arguments that should be made using the MPEP, case law, and statutes cited below.

The problem can arise when the Examiner slackly cites FIGs. and paragraphs from a reference under 102 or 103 without investing the time to explain how the Examiner believes the reference anticipates or obviates the claims.

Case Law:
The examiner cannot sit mum, leaving the applicant to shoot arrows into the dark hoping to somehow hit a secret objection harbored by the examiner. The `prima facie case' notion ... seemingly was intended to leave no doubt among examiners that they must state clearly and specifically any objections (the prima facie case) to patentability, and give the applicant fair opportunity to meet those objections with evidence and argument. To that extent the concept serves to level the playing field and reduces the likelihood of administrative arbitrariness. [deletions for clarity]

Statutory Law:
In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.

The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity.