Appeal 2006-2328
Application 10/131,049
"prior art." Applicants should not have the option saying that they are without
knowledge of whether it is "prior art" because they alone have the necessary
information to make the prior art determination. Applicants should not be
able to hide behind vague and legally imprecise characterizations such as
"background art," or "related art," or "conventional art," or other terms. The
USPTO should not be required to presume that subject matter labeled
"background art" (or some other term) is not "prior art."
The three petition decisions cited by Appellant, while evidently
intended to persuade us that Appellant is not required to make an admissions
as to what is prior art, point out the problem faced by the USPTO. In each
case, an applicant petitioned from an examiner's requirement for the applicant
to label figures described as "conventional" to be designated "prior art." The
petitions were granted stating that there was no requirement for an applicant
to label figures as "prior art" where there is no express admission in the
specification, and that the examiners' requirements that the figures be
designated "prior art" were incorrect and were withdrawn. Two of the
petition decisions stated that whether the subject matter of the figures is prior
art is an appealable issue, but do not explain how the examiner would raise
such an issue in a rejection. There is no indication that the applicants denied
that the figures were prior art: they evidently relied solely on the argument
that the characterization of "conventional" was not an express admission. The
USPTO is, of course, entitled to rely on applicant's duty of disclosure under
Rule 56 to presume that any subject matter not expressly designated "prior
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