Push API PAG and PTO File Wrappers

At the PAPAG meeting this morning I volunteered to give the group pointers
to the file wrapper data base at the US PTO.

 

Follow these steps to see the file wrapper for US 7,366,529:

 

1.       Go to www.uspto.gov.

2.       Click on PATENTS, then Patent Search.

3.       Click on Patent Application Information Retrieval (PAIR).

4.       Click on Public Pair (you may have to enter Captcha information to
get on the system).

5.       Check Patent Number, enter 7,366,529, and click on Search.

6.       The Bibliographic Data for that patent is displayed.

7.       Click on Image File Wrapper.

8.       Scroll to the bottom of that page and read the chronological list
from bottom to top.

 

I will try to summarize some of the interesting information in that file
wrapper, starting with the oldest entries.

 

.         The application was filed on 2-18-2005.

.         Starting on 5-23-2005, applicant filed a slew of prior art
disclosures including non-patent literature and foreign references. Click on
any of those links to read those specific references. (Note that most
non-patent literature references are not digitized in the PTO files.) A
complete list of disclosures is contained in the Information Disclosure
Statement dated 5-23-2005.

.         The applicant disclosed additional references on 6-14-2005.

.         The application sat on someone's desk for about 8 months before
being picked up by an examiner. You can review the examiner's prior art data
base search in his report dated 3-6-2006.

.         The important documents at this point are the Non-Final Rejection
by the examiner dated 3-9-2006, and the Final Rejection dated 11-14-2006
(although there are references to those rejections in intervening
documents). These rejections refer to specific works of prior art that the
examiner used to reject the patent claims. Was the patent examiner right or
wrong to focus on those specific works of prior art? Did the examiner miss
or misunderstand anything important? This is the best place to start our own
prior art search, because the examiner may have done most of our work for us
already. But note, the examiner ultimately changed his mind and allowed the
claims. It is essential that we try to understand the examiner's reasoning.

.         On 4-20-2006 the applicant filed arguments opposing the examiner's
Final Rejection. The applicant disclosed more prior art, and filed a Request
for Continued Examination.

.         On 5-16-2007 the examiner rejected the claims again.

.         On 10-16-2007 the applicant again argued for allowance.

.         On 11-30-2007 the examiner relented and allowed the amended
claims. 

.         On 1-7-2008 the applicant submitted even more prior art and asked
the examiner to consider that prior art also.

.         On 1-23-2008 the examiner allowed the claims in light of the prior
art.

 

You can download copies of most of those documents to read them alongside
the patent actually issued, particularly its specification and claims. To
view that issued patent, scroll to the top of the PAIR page and click on
Published Documents. Click to View the Issued Patents.

 

You can do this for each of the US patents listed by Nokia. But look at this
7,366,529 patent first, because it is the most recent one. See if you can
identify any prior art that the applicant and/or the examiner identified but
perhaps didn't fully understand. Perhaps we can refine the examiner's search
strategy?

 

/Larry

 

Lawrence Rosen

Rosenlaw & Einschlag, a technology law firm (www.rosenlaw.com
<http://www.rosenlaw.com/> )

3001 King Ranch Rd., Ukiah, CA 95482

Office: 707-485-1242

Linkedin profile: http://linkd.in/XXpHyu