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720.02 Examiner Determination of - 700 Examination of Applications
720.02 Examiner Determination of Prima Facie Showing [R-2]
Once the Office of Patent Legal Administration (OPLA) staff member has determined that the petition meets the formal requirements of 37 CFR 1.292, and the application's status warrants consideration of the petition, he or she will prepare a letter ** forwarding the petition and the application file to the examiner for determination of whether a prima facie case of public use or sale in this country of the claimed subject matter is established by the petition. Any other papers that have been filed by the parties involved, such as a reply by the applicant or additional submissions by the petitioner, will also be forwarded to the examiner. Whether additional papers are accepted is within the discretion of the OPLA staff member. However, protracted paper filing is discouraged since the parties should endeavor to present their best case as to the prima facie showing at the earliest possible time. No oral hearings or interviews will be granted at this stage, and the examiner is cautioned not to answer any inquiries by the petitioner or applicant.
A prima facie case is established by the petition if the examiner finds that the facts asserted in the affidavit(s) or declaration(s), as supported by the exhibits, if later proved true by testimony taken in the public use proceeding, would result in a statutory bar to the claims under 35 U.S.C. 102(b) alone or in combination with 35 U.S.C. 103. See MPEP § 2133.03 et seq.
To make this determination, the examiner must identify exactly what was in public use or on sale, whether it was in use or on sale in this country more than 1 year before the effective filing date, and whether the pending claims "read" on or are obvious over what has been shown to be in public use or on sale. On this last point, the examiner should compare all pending claims with the matter alleged to have been in use or on sale, not just the claims identified by petitioner.
In situations where the petition alleges only that the claims are obvious over subject matter asserted to be in public use or on sale, the petition should include prior art or other information on which it relies and explain how the prior art or other information in combination with the subject matter asserted to be in public use or on sale renders the claims obvious. The examiner is not expected to make a search of the prior art in evaluating the petition. If, however, the examiner determines that a prima facie case of anticipation under 35 U.S.C. 102(b) has not been established but, at the time of evaluating the petition, the examiner is aware of prior art or other information which, in his or her opinion, renders the claims obvious over the subject matter asserted to be in public use or on sale the examiner may determine that a prima facie case is made out, even if the petition alleged only that the claims were anticipated under 35 U.S.C. 102(b).
After having made his/her determination, the examiner will forward a memorandum to the **>OPLA staff member<, stating his or her findings and his or her decision as to whether a prima facie case has been established. The findings should include a summary of the alleged facts, a comparison of at least one claim with the device alleged to be in public use or on sale, and any other pertinent facts which will aid the **>OPLA staff member< in conducting the preliminary hearing. The report should be prepared in triplicate and addressed to the **>OPLA staff member<.
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