Free Trial Brief - District Court of Connecticut - Connecticut

Case 3:02-cv-01723-AVC Document 79-7 Filed O3/31/2004 Paget of 3
9B3.10 MANUAL. OF PAENT EXANDNHJG PROCEDURE
classt This designation, however, is not necessarily In all continuing applications, the parent applica~
the only pertinent class and subclass in which the tions should be reviewed by the examiner for perti-
design couid be properly classified since for some nent prior art. Where the cited prior art of a parent
U,St Design Classification designations, there is no application has been reviewed, this fact should be
direct parallel within the Locamo system, made of record in accordance with the procedure set
forth at paragraph lI..(E) of MPEP § 71905.
993-10 DUHBS of thi? Post Cl3$Slfi€I` The first search should be such that the examiner
need not ordinarily make a second search of the prior
EXE.H`lll'1BI"S Sl`iOLllCl CO1"1l.3ClZ ll'l€l3" post Cl&SSll`iC1' OH all an, umggg m3{‘_;3ggi{g{gd gmg¤dmgn[S ig [hg Claims
classification probiemst by the applicant in the first reply, except to check to
A POS; classifier is mspmsgbyc {Cr; determine whether any reference which would appear
to be substantially more pertinent than the prior art
(A) The technical accuracy, adequacy, and conn cited in the first Office action has become available
pleteness of all search systems in his or her group subsequent to the initiw prior art search`. The first
including the monitoring of any need for major and search should cover the invention as described and
minor reclassification proiects including mechanized claimed, including the inventive concepts toward
systems. which the claims appear to be directed., It should not
(B) The full range of classification administration bc Bxtndcd mcmly ta add lmmglmgi wmamsj _
functions, including the resolution of classification In Fhcflfsf MMDB UH the merits of an application,
disputes On pending applications, guidance On classy the examiner shall make an imtral endorsement in
mation matters tg both ammjmrs and the Public, black ink, in the space provided on the right outside
Omiining fields Of Search, and answering Gxamjnmy panel of the file wrapper, of the classes and subclasses
requests for advice as to the proper classification of Of d°m€’jU°_““d ¥0Y°’g_“ PammS· abstract °_°H°°“°“S·
allowed applications. and §>¤l¤l1C€1UO¤S IH Which the Search for prior an was
_ _ , _ _ _ _ made. Other information collections and sources in
(Ci The mspmémn Of lssumg apphlialwns to which the search for prior art was made mast also be
dcmfmmc the accmaclr and_ adfjqllacy O? Omgmai end identified by the examiner. The examiner must also
cross-reference classification, including . working indicate {hc dams) OH which thc Search was mm
closely with the superwsory patent exarruners and d¤CwdhNDw MPEP§ 719*05
Technology Center (TC) Directors to ensure feedback . p . _
[O Correct problem mmsr In subsequent actions, where the searcli is brought
up to date andlor where a further Search is made, the
(D) D€i€i"`ml¤¤ll0¤ Of {hg i¥3~l¤l¥'*g ¥1B*’¤d$ af ihc examiner rnust endorse and initial on the fiie wrapper
n§r‘f¤¤¤?i1;hi§ir¤1¤Et1i_v¤t¤i>iji¤— that the sen-ch has been updated andfor reentry are
Gil? BS 0 C 355* `icamn all SUPP Ymg l is Uimlmg additional field of search. See MPEP § 719.05. Any
illmugh f'¤¥`m¤l and ll"*f0l'm&l €h¤¤¤€i5· search updates should include all of the databases and
_ _ _ _ the search queries and classifications employed in the
Generally, the post classifiers are to aid the exam1n— waging} Smmh
ers in the use, maintenance, and perfection of the clas-
Sifi<>ati¤¤ Systm 904.01 Analysis of Claims
904 How to Search The breadth of the claims in the application should
always be carefully noted; that is, the examiner should
The examiner, after having obtained a thorough be fully aware of what the claims do not call for, as
understanding of the invention disclosed and claimed well as what they do require., During patent examina-
in the nonprovisional application, then searches the tion, the claims are given the broadest reasonable
prior art as disclosed in patents and other published interpretation consistent with the specification See In
documents, ie, nonpatent literature (NPL),. Any doc- ra Morris, 127 F..3d l04S, 44 US?Q2ci EOZB (Fed,. Cir,
ument used in the rejection of a claim is called a ref· l997). See MPEP § 2lli · § 23 E60} for case law per—
erence., tinent to claim analysis,
August 2001 9UO-50

Case 3:02-cv—O1723-AVC Document 79-7 Filed 03/31/2004 Page 2 of 3
PRIOR ART, CLASSIFICATION, SEARCH 904.02
9(]4_{)](3) Variant Embgdimgnts text of establishing a primafacfe case of obvioosness
Within SCOPE Of Claim under 35 U.S.C. 103.. See MPEP § 213}.iOd for a d1s~
cussion of analogous and norianalogous art in the con-
Substantialiy, every claim includes within its text of 35 UWSMCA lG2l
breadth or scope one or more variant embodiments _ _
that are not disclosed in the application, but which 904*02 General Search Guidelines
would anticipate the claimed invention if found in e . , . . .
_ . In the examination of an application for patent, an
reference The claim must be so analyzed and any . i _ .
. . _ examiner must conduct a thorough search of the prior
such variant encountered during the search should be . 4 y _. . _
mccgnimd arts Planning a thorough search oi she prior art
" t . _ requires three distinct steps by the examiner: (A)
In each type of sutqect matter capable of such treat- . . . . _ .
. . identifying the field of search, (B) seiecnng the
ment (eg., a machine or other apparatus), the subject _ t _
. . proper tooi(s) to perform th search, and (C) deter—
matter as defined by the claim may be sketched or . . _.
. . . . . mining the appropriate search strategy for each search
diagrammed in order to cicariy delineate the ]1n11ta~ . . .
. . _ i tool selected Each step is crmcal for a complete and
tions of the claim. Two or more sketches, each of Ehcmu h Search
which is as divergent from the particuiarldisclosure as Whg d { `, _ h f_ ld fl _ h h {
is permitted by claim recitation, will assist the exam- an 6 mmmmg { C Wd Od Scirc ’ l fcc re cp
iner in determining the claims actual breadth or CPC? ZQHFCBS mus; ascii?} cm b} mlwsuc Fmcpts
scope. However, an applicant will not be required to (ms U Egg pawns appcgcalmn pu Ifatlonsx xg?]
submit such sketches of claim structures In re Applied ga Cm fpglmcn S’ ei noniatcnp 1_t°m¤§t;_( hl
aaa jnaa Na»»amt»ar 16, 194.5, as uspo asc, 1951 °"#"h" E “S‘?hS°‘”°*"S_ mh E céminai? Wm i °
CAD L 646 OG 5 (Comm.!} Patn @51)- searc un ess} e examiner as an can justify a·rea·
sonabl certainty that no references, more pertinent
904.01(b) Equivalents than those already identified, are likely to be found in
_ _ _ the sourcc(s) eliminated The search should cover the
AH Suillmi mama? that IS thc cclulvalgm Of {hc nib- claimed subject matter and should also cover the dis-
ject matter as defined in the claim, even though spe· chased {Bam}-cs which Knight reasonably bc gxpgcwd
ciiically different from ahe definition in the claim, {O bc Cgagmcdq The field Of Search Shy-md bc p;iO1.i_
must be considered unless expressly excluded by the gjzgd, swaying with thc Mears) where the invcntion
cleaned subject marie; SBB MPE? § 2181 " § 2184 wouicl most likely be found in the prior art.
fm E discussim °f'°‘i“*‘{aI°‘“S llihcn 3 Chim Bmpbys Having determined the fieid of search, the exam~
means OF Emp Pius funcucn [Crmm°I°gy" iner should then determine what search tools should
904-OMC) Analogous Arts be enziplcpyed in ionducgng the £scar;:l;t lixamineris arg
provi e access 0 a wi e variey 0 ot manua an
Not oniy most the art be searched within which the automated search tools. Choice of search tools is a
invention claimed is ciassifiabie, but also all anaIo— key factor in ensuring that the most relevant prior art
goes arts regardless ofwhrc classifieds is found during the search. The choice of search tools
The determination of what arts are analogous to a to be used is based on the examinefs knowledge of
particular claimed invention is at times difficulty lt the coverage, strengths and weaknesses of the avail»
depends upon the necessary essential function or ntii— abie Search tools that are appropriate for use in an
ity of the subiect matter covered by die ciaims, and examiners assigned art For example, a search tool
not upon what it is called by the applicantr may cover foreign patent documents; but, if
Fg; gxgmplg, fg; gggygh puy·pggg5’ 3 {gg mjxgy and g [l`l&[ CO\’€I'3g& CIOSS DOI [DESK F.l`iB €XB.1'HlHSf’S ClJIT¤"$I`l[
concrete mixer may both be regarded as relaiing ro me Search needs, this shouid be taken into consideration
mixing art, this being the necessary function ofieachy by the examiner who will take recourse to employ
Similarly a briciocuiting machine and a biscuit can other search tools in order to remedy the deficiency.
ting machine may be considered as having the same Search tool knowledge is particoiarly important for
necessary function. See MPE? § 2I4l..Ol() for a dis— examiners in arts (eng., very active, high technology)
cussion of analogous and nonanalogoos an in the con- where patent documents may seriously lag invention
900-51 August 2001

Case 3:02-cv—O1723-AVC Document 79-7 Filed O3/31/2004 Page 3 of 3
904.02(a) MANUAL. Oi: PATENT EXAMINING PROCEDURE
and, consequently, represent a reference source of ing all patent documents in one or more
limited value. These examiners must take special care classifications will continue to be an important part of
to ensure that their searches inciuo consideration of the search strategy when it is difficult to express
NPL and employ the effective use of tools specialized search needs in textual terms.
[0 COVE? NPL Pgiljmm *0 {heir Scaich ¤€€dS~ Having determined what search tool(s) should be
Search needs in some technologies, eign, chemical used to conduct the search, the examiner should then
strucieres, DNA sequences, are very specialized and determine the appropriate search strategy for each
can oniy be met through use of specific search tools search tool selected. The appropriate search strategy
specially constructed and maintained to respond to should be determined by the examiner on a case-by-
those needs. These tools cover all three reference case basis along with consultation with other examin-
sources — domestic patents (including patent appiica— ers aridfor supervisory patent examiners, where appro-
tion publications), foreign patent documents, and NPL priate.
- myd their use wsa PB dssmsd S¤i“fi<=i_·‘=¤¤ fm Search ¤f In sara at- examiners is was-s Sptcaiizta sein
Clmmw mvmmons In Such t€ch”°]°g'cS* needed to determine an appropriate field of search in
IN f€€0E¤iii0¤ that ’4}i€F€ M6 m¤¤Y ¤V3cil¤bl€ NPL their specific arts, each Technology Center may
search lJDOlS Find lh€ii` USC is ORCH COIT1plCX, BX3i"1"liI'1Bl"S dgvgigp Sr]pp]gmg¤[g] Spgcific gujdgngg and {raining
h&V€ i¤€€¤ P1"¤Vid€d and BYE encouraged {D ¤S€ UWB S€F* for its examiners. This training will augment general
vices of trained professional on—iine search personnel mining and information on search tools that is nor-
iOC3.{€CliI`1 the T6Cl}l`lOlOgY CBIEIBIS (II'1f0I'['I'1El{lOI1 Tech— mgliy pygvjdgd {hygggh {hg Patent Agadgmy and
nviogy Resource PUSUH (ETRPD Had ifi $16 Scientific Search and information Resources Administration
and Technical Information Center (STIC) for NPL
searching. See MPE}? § 90l.€}6(a) for services avail- 9{]4_(}2(3) (jiasggfld Sgaych
able in STIC.
In gygwdgd, dgvdgpgd mtg whgyg mggt; A EJYOIDBF fifild of S€3J”Cl’1 1’l()I’I`l'l&lly lI'lClUd€S l.h€. Slibr
Grams. inventions me directed to improvements, class in which the civimcd subject matter ¤f an appli
patent documents, inciuding patent application ptibli- €¤i¥€>¤ Wfmid bt? PFOPBFIY ¤l?¤S$i5¤”¤d· il is ¤¤i ¤€¤€SS&1'Y
ggjjgggl may ggrvg as {hg primary ygfkgrgngg g{)u;·(;{;_ I0 SB&l'Cl`l HIGHS li'} Wl"1iCl'l it COLliCl 1“'C&SO31HiJly l’1F1V5 b€B1’}
Search tool seiection in such arts may focus heavily €l€¥¤1`¤`1i¤€d i-hai there WHS 310*** PI`0bP1biiiiY Of finding
ori those providing patent document coverage tht? best f€f¥¤¥‘¢¤¤€(Sl-r
Automated search tools covering patent documents In outlining a iieid of` search, the examiner should
usually provide both a classified and text search capa— note every class and subclass under the U.S. Patent
bility. Text search can be powerful, especially where Classification system and other organized systems of
the art includes weibestahiished terminology and the literature that may have material pertinent to the sub—
search need can be expressed with reasonable accu- ject matter as claimed Every subclass, digest, and
racy in textual terms, However, it is rare that at text cross—reference art coliection pertinent to each type of
search aione will constitute a thorough search of invention claimed should be included, from the iarg—
patent documents. Some combination of text search est combination through the various subcornbinatioris
with other criteria, in particular ciassiiicarion, would to the most elementary parts The field of search
be anormai expectation in most iechnologies. should extend to all probable areas relevant to the
Excmjncrs Wm recognize that it is Somgtimgs diizfp claimed subject matter and should cover the disclosed
cul; cc cxcrcsc Search cccds accurately in textual features which might reasonably be expected to be
terms This occurs often, though not exclusiveiy, in Ci3·imfi’d* The €XHmi¤°Y_ Shimld Cmwuh _Wilh Umm
mechanical arts where, for exampie, spatial relation- ¤>=¤mr¤¤rS Bndmi SUPBWNOYY Pawn; BX&mm€Y`S· ESP?
ships or shapes ofrnechanicai components constitute CiauY with mggid ic EPPHCBHOUS COVBHBE Subisst
important aspects of the claimed invention. In such mmm ulifamuiafto the Examinci
situations, text searching can stili be useful by The areas to he searched should he prioritized so
employing broader text terms, with or without ciassi—· that the most iikeiy areas of finding relevant prior art
fication parameters The traditional method of brows~ are searched firsts
August 20{JI 9(}G—52