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Mr.Fiction · 11-18-2003, 02:08 PM

DOES THE ACACIA '702 PATENT HAVE FILE HISTORY PROBLEMS?

A PATNEWS reader sent me the following bit of gossip about the Acacia '702 patent. You will have to get a copy of the filewrapper to analyze this for yourself. ----

Greg,

If you want an excellent example of poor patent quality, the Acacia '702 patent (6,144,702) stands very tall. In the course of the file history, the examiner issued an office action rejecting all of the claims based on a DeBey patent (5,701,582). In the corresponding reply, the applicant swore behind DeBey '582 because the reference was a CIP, which was not entitled to the earlier priority date of its parent application because of the new matter. The examiner subsequently allowed the claims.

What the examiner did not do was look to the DeBey parent application (5,421,031) which of course contains the verbatim disclosure relied upon by the examiner in the earlier rejection of the claims under DeBey '582. So when the applicant argued that under 102(e) the examiner couldn't use the earliest priority date of the DeBey '582 CIP application to reject the claims, the examiner didn't go back to the parent case to see if the rejection could be maintained based on DeBey '031. Instead, the examiner allowed the claims. And if you look on the face of the '702 patent, only the later DeBey '582 patent is a cited reference. DeBey '031 is not even cited.

As a side note, the Acacia '702 patent is very likely unenforceable because the DeBey '031 patent was not submitted to the PTO in an IDS, since the applicant must have known about the parent case in order to make the argument that the DeBey '582 CIP was not entitled to the earlier priority date.

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11-18-2003, 02:08 PM
Mr.Fiction Confirmed User Join Date: Feb 2002 Location: Free Speech Land Posts: 9,484	Acacia '702 patent may be unenforceable DOES THE ACACIA '702 PATENT HAVE FILE HISTORY PROBLEMS? A PATNEWS reader sent me the following bit of gossip about the Acacia '702 patent. You will have to get a copy of the filewrapper to analyze this for yourself. ---- Greg, If you want an excellent example of poor patent quality, the Acacia '702 patent (6,144,702) stands very tall. In the course of the file history, the examiner issued an office action rejecting all of the claims based on a DeBey patent (5,701,582). In the corresponding reply, the applicant swore behind DeBey '582 because the reference was a CIP, which was not entitled to the earlier priority date of its parent application because of the new matter. The examiner subsequently allowed the claims. What the examiner did not do was look to the DeBey parent application (5,421,031) which of course contains the verbatim disclosure relied upon by the examiner in the earlier rejection of the claims under DeBey '582. So when the applicant argued that under 102(e) the examiner couldn't use the earliest priority date of the DeBey '582 CIP application to reject the claims, the examiner didn't go back to the parent case to see if the rejection could be maintained based on DeBey '031. Instead, the examiner allowed the claims. And if you look on the face of the '702 patent, only the later DeBey '582 patent is a cited reference. DeBey '031 is not even cited. As a side note, the Acacia '702 patent is very likely unenforceable because the DeBey '031 patent was not submitted to the PTO in an IDS, since the applicant must have known about the parent case in order to make the argument that the DeBey '582 CIP was not entitled to the earlier priority date. http://www.bustpatents.com/ From the Bust Patents newsletter.