2205 Content of Prior Art or Section 301 Written Statements [R-01.2024]
Information that may be submitted under 35 U.S.C. 301 and 37 CFR 1.501 is limited to prior art consisting of patents or printed publications or written statements of the patent owner filed in a proceeding before a federal court or the Office by the patent owner in which the patent owner took a position on the scope of any claim of the patent (written claim scope statements).
Pursuant to 35 U.S.C. 301(b) and 37 CFR 1.501(b), an explanation is required of the pertinence and manner of applying any cited prior art and written statements to at least one claim of the patent. The submission must, at a minimum, contain some broad statement of the pertinence and manner of applying the cited prior art or written statement as to the patentability of the claim(s) of the patent. The explanation must set forth, for at least one of the patent claims, how each item cited shows or teaches at least one claim limitation. Submissions by patent owners may also include an explanation of how the claims of the patent differ from the cited prior art or written statement.
It is preferred that copies of all the cited prior art patents or printed publications and any necessary English translation be included so that the value of the citations may be readily determined by persons inspecting the patent files and by the Office during any subsequent reissue, reexamination, or other post-patent proceeding. Copies of section 301 written statements must be submitted so that the value of the information may be readily determined by persons inspecting the patent files and so that the Office may determine the proper meaning of a patent claim after an ex parte reexamination, inter partes review, or post-grant review has been ordered or instituted. See 35 U.S.C. 301(d).
All submissions filed by persons other than the patent owner must include proper proof of service as required by 37 CFR 1.248(b) reflecting that a copy of the submission has been mailed to, or otherwise served upon, the patent owner at the correspondence address as defined under 37 CFR 1.33(c). 37 CFR 1.501(e).
All submissions filed should identify the patent to which the citation pertains by identifying the patent number, issue date, and patentee using a cover sheet. The documents themselves should also contain, or have placed thereon, an identification of the patent for which they are intended.
A submission that includes a written statement must also include any other accompanying information (documents, pleadings, or evidence) from the proceeding in which the statement was filed that addresses the written statement. The written statement and accompanying information must be submitted in redacted form to exclude information subject to any applicable protective order. 37 CFR 1.501(a)(2).
A submission that includes section 301 written statements must further include the identification of: (1) The forum and proceeding in which patent owner filed each statement (37 CFR 1.501(a)(3)(i)); (2) The specific papers and portions of the papers submitted that contain the statement (37 CFR 1.501(a)(3)(ii)); and (3) How each statement submitted is a statement in which patent owner took a position on the scope of any claim in the patent (37 CFR 1.501(a)(3)(iii)). Identification of the portions of the papers required by 37 CFR 1.501(a)(3)(ii) can be satisfied, for example, by citing to the documents and specific pages of those documents where the patent owner claim scope statements are found. The requirement of 37 CFR 1.501(a)(3)(iii) ensures that the statement is one in which patent owner has taken a position on claim scope in a proceeding and not merely a restatement of a position asserted by another party. Other information can be provided by the submitter to assist the Office in readily identifying the patent owner claim scope statement, such as (1) information regarding the status of the proceeding and (2) the relationship of the proceeding to the patent.
Affidavits or declarations or other written evidence relating to the submitted documents may accompany the 37 CFR 1.501 submission to explain the contents or pertinent dates in more detail. A commercial success affidavit tied in with a particular document may also be acceptable. For example, the patent owner may wish to cite a patent or printed publication which raises the issue of obviousness of at least one patent claim. Together with the cited art, the patent owner may file (A) an affidavit of commercial success or other evidence of nonobviousness, or (B) an affidavit which questions the enablement of the teachings of the cited prior art.
No fee is required for the submission under 37 CFR 1.501.
A submission under 37 CFR 1.501 is limited to patents, printed publications, or patent owner written statements, accompanying information and an explanation of the pertinency and the manner of applying them. This may include an explanation by the patent owner as to how the claims differ from the prior art patents or printed publications or written claim scope statements and accompanying information. It may also include affidavits and declarations. The submission cannot include any issue which is not directed to patents, printed publications or written claim scope statements and accompanying information. Thus, for example, a submission cannot include a statement as to the claims violating 35 U.S.C. 112, a statement as to the public use of the claimed invention, or a statement as to the conduct of the patent owner. The submission must be directed to patents, printed publications and/or written claim scope statements and accompanying information and cannot discuss what the patent owner did, or failed to do, with respect to submitting and/or describing patents and printed publications during examination, because that would be a statement as to the conduct of the patent owner. The submission also should not contain argument and discussion of references previously treated in the prosecution of the application which matured into the patent or references previously treated in a reexamination proceeding as to the patent.
If the submission contains any issue not directed to patents, printed publications or patent owner written claim scope statements, it should not be entered into the patent file, despite the fact that it may otherwise contain a complete submission of patents, printed publications and/or written statements and accompanying information with an explanation of the pertinency and manner of applying them. Rather, the submission should be returned to the sender, discarded, or closed as described in MPEP § 2206.
Examples of letters submitting prior art under 37 CFR 1.501 via either mail or hand-delivery follow. (In these examples, it is assumed that the application that matured into U.S. Patent No. 99,999,999 was examined under the first-inventor-to-file prior art regime. See, e.g., MPEP § 2258, subsection I. Also, see MPEP § 2206 for information regarding citing prior art or written statements via the USPTO patent electronic filing system.)
Submission by a third party:
| IN THE UNITED STATES PATENT AND TRADEMARK OFFICE |
| In re patent of Joseph Smith Patent No. 99,999,999 Issued: July 7, 2020 For: Cutting Tool |
| Submission of Prior Art Under 37 CFR 1.501 |
| Mail Stop Post Issue |
| Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 |
| Hon. Commissioner: |
| The undersigned herewith submits in the above-identified patent the following prior art (including copies thereof) which is pertinent and applicable to the patent and is believed to have a bearing on the patentability of at least claims 1 – 3 thereof: |
| Weid et al. U.S. 2,585,416 April 15, 1933; McGee U.S. 2,722,794 May 1, 1934; Paulk et al. U.S. 3,625,291 June 16, 1936 |
| Each of the references discloses a cutting tool strikingly similar to the device of Smith in having pivotal handles with cutting blades and a pair of dies. It is believed that each of the references has a bearing on the patentability of claims 1 – 3 of the Smith patent. |
| Insofar as claims 1 and 2 are concerned, each of the references anticipates the claimed subject matter under 35 U.S.C. 102. See Figure 2 and column 2 lines 20-45 of Weid et al., Figure 4 and column 3 lines 10-35 of Paulk et al., and Figure 2 and column 2 lines 12-25 of McGee. |
| As to claim 3, only Weid et al. is a relevant primary reference, and the differences between the subject matter of this claim and the cutting tool of Weid et al. are shown in the device of Paulk et al. Further, Weid et al. suggests that different cutting blades can be used in their device. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been led by the suggestion of Weid et al. to the cutting blades of Paulk et al. as obvious substitutes for the blades of Weid et al. |
| Respectfully submitted, (Signed) |
| Certificate of Service |
| I hereby certify on this first day of June 2023, that a true and correct copy of the foregoing “Submission of Prior Art” was mailed by first-class mail, postage paid, to: |
| John Roe, 555 Any Lane Anytown, VA 22202 |
| (Signed) |
| /John Jones/ |
Submission by the patent owner:
| IN THE UNITED STATES PATENT AND TRADEMARK OFFICE |
| In re patent of Joseph Smith Patent No. 99,999,999 Issued: July 7, 2020 For: Cutting Tool |
| Submission of Prior Art Under 37 CFR 1.501 |
| Mail Stop Post Issue |
| Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 |
| Hon. Commissioner: The undersigned herewith submits in the above-identified patent the following prior art (including copies thereof) which is pertinent and applicable to the patent and is believed to have a bearing on the patentability of at least claims 1-3 thereof: |
| Weid et al. U.S. 2,585,416 April 15, 1933; McGee U.S. 2,722,794 May 1, 1934; Paulk et al. U.S. 3,625,291 June 16, 1936 |
| Each of the references discloses a cutting tool strikingly similar to the device of Smith in having pivotal handles with cutting blades and a pair of dies. See Figure 2 and column 2 lines 20-45 of Weid et al., Figure 4 and column 3 lines 10-35 of Paulk et al., and Figure 2 and column 2 lines 12-25 of McGee; limitations (a) – (c) and (e) of Smith claim 1 are visible in the figures, and are described in the disclosures. While it is believed that each of the references has a bearing on the patentability of claims 1 – 3 of the Smith patent, the subject matter claimed differs from the references and is believed patentable thereover. |
| Insofar as claims 1 and 2 are concerned, none of the references show the particular die (limitation (d) of Smith claim 1) claimed and the structure of these claimed dies would not have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention. |
| As to claim 3, only Weid et al. is a relevant primary reference, and the cutting blades required by claim 3 are shown in Paulk et al.; however, the remainder of the claimed structure is found only in Weid et al. A person of ordinary skill in the art before the effective filing date of the claimed invention would not have found it obvious to substitute the cutting blades of Paulk et al. for those of Weid et al. In fact, the disclosure of Weid et al. would lead a person of ordinary skill in the art away from the use of cutting blades such as shown in Paulk et al. |
| Respectfully submitted, |
| (Signed) John Doe Attorney for Patent Owner Reg. No. 29760 |
