Appeal No. 2000-1703
Application No. 08/963,545
The assumption made in Portola surely has been overcome
in this case. Having said he considered the information
disclosure statements after his final rejection and before
his answer, we are at a complete loss to understand why
prosecution was not reopened and rejections made on the
basis of the prior art.
We think that it is important for examiners to
understand that the Portola assumption is difficult, if not
impossible, to undermine. Evidence is essentially
unavailable from the examiner. Western Electric Co. v.
Piezo Technology, Inc. v. Quigg, 860 F.2d 428, 8 USPQ2d 1853
(Fed. Cir. 1988). Moreover, just recently a case was
reported in the USPQ2d where a court did not permit a
so-called expert to state why an examiner missed the boat.
Bausch & Lomb, Inc. v. Alcon Laboratories, Inc., 53 USPQ2d
1682, 1685(W.D.N.Y. 2000) (expert not allowed to testify
generally about problems in the examining of patent
applications).
We cannot determine the reasons for overlooking the prior
art cited in this application when the Examiner was notified
prior to mailing of the advisory action. It is also puzzling as
to why the prosecution was not reopened after the Examiner became
aware of the prior art present in the information disclosure
statement after preparing the answer.3
Having shown the limitations imposed by the Portola
presumption, it is clear that “[r]eexamination is not possible
because every reference cited is ‘presumed’ to have been
considered and there is no practical way to get around the
3 The application was remanded to the Examiner on October 31, 2001 for
consideration of the information disclosure statement filed May 10, 1999.
18
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007