(c) 2004, David Schnapf, Sheppard Mullin Richter & Hampton LLP 1 Examiner Use of Background Statements David Schnapf Sheppard Mullin Richter & Hampton LLP

(c) 2004, David Schnapf, Sheppard Mullin Richter & Hampton LLP 2 37 CFR §1.77 “Arrangement of application elements.” (a) The elements of the application, if applicable, should appear in the following order:... (4) Specification. (b) The specification should include the following sections in order:... (5) Background of the invention.

(c) 2004, David Schnapf, Sheppard Mullin Richter & Hampton LLP 3 MPEP § (a) “ Arrangement of Application” : (e) Background of the Invention: See MPEP § (c). The specification should set forth the Background of the Invention in two parts: … (2) Description of the Related Art: A description of the related art known to the applicant and including, if applicable, references to specific related art and problems involved in the prior art which are solved by the applicant’s invention. This item may also be titled “Background Art.”

(c) 2004, David Schnapf, Sheppard Mullin Richter & Hampton LLP 4 MPEP § (c) “ Background of the Invention” :... (2) Description of the related art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98: A paragraph(s) describing to the extent practical the state of the prior art or other information disclosed known to the applicant, including references to specific prior art or other information where appropriate.

(c) 2004, David Schnapf, Sheppard Mullin Richter & Hampton LLP 5 MPEP § (p) “ Completeness”... “While the prior art setting may be mentioned in general terms, the essential novelty, the essence of the invention, must be described in such details, including proportions and techniques, where necessary, as to enable those persons skilled in the art to make and utilize the invention.”

(c) 2004, David Schnapf, Sheppard Mullin Richter & Hampton LLP 6 There Is No Legal Requirement To Discuss The Prior Art In The Background Of The Invention There Are Substantial Risks Associated With Doing So

(c) 2004, David Schnapf, Sheppard Mullin Richter & Hampton LLP 7 Risks of Discussing Prior Art “Applicant Admitted Prior Art” - “AAPA” Failure to properly delineate what is prior art in Background Inequitable Conduct

(c) 2004, David Schnapf, Sheppard Mullin Richter & Hampton LLP 8 MPEP § 2129 “Admissions as Prior Art - ADMISSIONS BY APPLICANT CONSTITUTE PRIOR ART” –“When applicant states that something is prior art, it is taken as being available as prior art against the claims. Admitted prior art can be used in obviousness rejections. In re Nomiya, 509 F.2d 566, 184 USPQ 607, 610 (CCPA 1975) (Figures in the application labeled “prior art” held to be an admission that what was pictured was prior art relative to applicant’s invention.).”

(c) 2004, David Schnapf, Sheppard Mullin Richter & Hampton LLP 9 AAPA Increased reliance on AAPA in obviousness rejections. Easy for examiner to rely on something that is admitted than to search prior art Risk: Often reasons why combination would not be made are not discussed Risk: Statements often taken out of context

(c) 2004, David Schnapf, Sheppard Mullin Richter & Hampton LLP 10 “Background” Not Always Prior Art Background discussions not always “prior art” –Problems being solved may not be appreciated –Applicant’s own prior work may be described Care required to properly characterize this type of background information

(c) 2004, David Schnapf, Sheppard Mullin Richter & Hampton LLP 11 Inequitable Conduct The following can lead to allegations of Inequitable conduct: –Inaccurate or incorrect discussion of prior art –Failure to discuss most pertinent aspect of prior art reference –Problem compounded if prior art is in Japanese and is understandable to inventors or Japanese patent agents.

(c) 2004, David Schnapf, Sheppard Mullin Richter & Hampton LLP 12 Inequitable Conduct Semiconductor Energy Laboratory Co. v. Samsung Electronics Co. (CAFC 2000) 204 F.3d 1368, 54 USPQ2d 1001 –Patent applicant that submitted … one-page partial translation of entire 29-page reference, since applicant, by submitting partial translation focusing on less material portions of reference, as well as concise statement directed to these less material portions, deliberately deceived examiner into thinking that reference was less material than it really was …

(c) 2004, David Schnapf, Sheppard Mullin Richter & Hampton LLP 13 Inequitable Conduct Semiconductor Energy Laboratory Co. v. Samsung Electronics Co. (CAFC 2000) 204 F.3d 1368, 54 USPQ2d 1001 –The duty of candor … require[s] … that the applicant refrain from submitting partial translations and concise explanations that it knows will misdirect the examiner's attention from the reference's relevant teaching.