Appeal No. 2000-1703
Application No. 08/963,545
presumption.” Schricker, at 1731. Additionally, in
circumstances similar to those present in this case, a rule 196
rejection is usually based upon
“a reference already of record in the file of the case but
which has been ‘considered’ by the examiner but not applied
by the examiner. The reference not applied often appears in
an information disclosure statement filed late in
prosecution and ultimately must be applied in a Rule 196
rejection. A Rule 196 rejection based on prior art generally
means that prosecution often starts over after an applicant
has waited for some time for a decision by this board.”
Id.
We note that Examiners must appreciate that reexamination
cannot be effectively sought if a reference had been cited, even
if it had not been applied. We further advocate a more careful
review of information disclosure statements by referring to
Schricker which states that:
The public cannot effectively seek reexamination if a
reference has been cited, apart from whether it was applied.
... Examiners also need to remember that an invalidity
defense in an infringement action takes place under a burden
of proof higher than that under which an examiner labors in
ex parte prosecution. Accordingly, we take this opportunity
to urge the examiner, indeed all examiners, to give careful
and thorough attention to information disclosure statements.
Id.
OTHER ISSUES
In the event the prior art rejections are overcome, we
recommend the Examiner consider rejecting claims 20-23 of this
application under obviousness-type double patenting over the
19
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