There is no Time Limit for Disqualifying a Reference
Sometimes an Applicant may realize that a reference from a rejection first presented in a previous Office Action is not actually prior art. Fortunately, it is never too
late to disqualify such a reference. However, Examiners sometimes respond to an attempt to disqualify such a reference by making the interesting (and incorrect)
assertion that since the previous attorney had not disqualified the reference in a previous Response, the right to disqualify the reference had bene waived. However,
this is incorrect and such an assertion may be addressed along the lines of the following.
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In the previous Office Action, Appellant [In this case, the arguments on which this post is based were presented in a Pre-Appeal Brief Request for Review] argued
that [REFERENCE] is not prior art under [SECTION OF 35 U.S.C. § 102] because [REASON]. In response to Appellant's arguments, the Advisory Action stated on page
[PAGE NUMBER] that “the Applicant never submitted an argument against the validity of the cited document’s filing/publishing date in any previous Response, therefore, admitted that the
cited document is a valid prior art [sic].” [OR SIMILAR ASSERTION BY EXAMINER] However, it is respectfully submitted that Appellant made no admission that the cited document
is prior art with respect to the present application at any point during prosecution. Also, Appellant is under no duty to identify every error in each rejection at the
earliest time during prosecution. Appellant notes that patent prosecution is an ex parte process that is not intended to be adversarial, and Appellant does not
forfeit the right to present certain arguments if they are not presented at a certain time, unlike litigation. Further, Appellant respectfully submits that there is no
duty created under U.S. law or regulation, or USPTO rule with respect to patent prosecution that mandates otherwise.
Accordingly, the cited document is not prior art with respect to the present application under any section of 35 U.S.C. § 102 and the rejection constitutes clear error
in the outstanding Office Action.