Content of Prior Art or Section 301 Written Statements

Information that may be submitted under

35 U.S.C.

301

and

37 CFR 1.501

is limited to prior art

consisting of patents or printed publications or written statements of the patent owner

filed in a proceeding before a federal court or the Office by the patent owner in which the

patent owner took a position on the scope of any claim of the patent (written claim scope

statements).

Pursuant to

35 U.S.C. 301(b)

and

37 CFR 1.501(b)

, an

explanation is required of the pertinence and manner of applying any cited prior art and

written statements to at least one claim of the patent. The submission must, at a minimum,

contain some broad statement of the pertinence and manner of applying the cited prior art

or written statement as to the patentability of the claim(s) of the patent. The explanation

must set forth, for at least one of the patent claims, how each item cited shows or teaches

at least one claim limitation. Submissions by patent owners may also include an explanation

of how the claims of the patent differ from the cited prior art or written statement.

It is preferred that copies of all the cited prior art patents or printed

publications and any necessary English translation be included so that the value of the

citations may be readily determined by persons inspecting the patent files and by the

Office during any subsequent reissue, reexamination, or other post-patent proceeding.

Copies of

section 301

written statements must be submitted so that the value

of the information may be readily determined by persons inspecting the patent files and so

that the Office may determine the proper meaning of a patent claim after an

ex

parte

reexamination,

inter partes

review, or post-grant

review has been ordered or instituted. See

35 U.S.C. 301(d)

on, or other post-patent proceeding.

Copies of

section 301

written statements must be submitted so that the value

of the information may be readily determined by persons inspecting the patent files and so

that the Office may determine the proper meaning of a patent claim after an

ex

parte

reexamination,

inter partes

review, or post-grant

review has been ordered or instituted. See

35 U.S.C. 301(d)

.

All submissions filed by persons other than the patent owner must include

proper proof of service as required by

37 CFR 1.248(b)

reflecting that a copy

of the submission has been mailed to, or otherwise served upon, the patent owner at the

correspondence address as defined under

37 CFR 1.33(c)

.

37 CFR

1.501(e)

.

All submissions filed should identify the patent to which the citation

pertains by identifying the patent number, issue date, and patentee using a cover sheet.

The documents themselves should also contain, or have placed thereon, an identification of

the patent for which they are intended.

A submission that includes a written statement must also include any other

accompanying information (documents, pleadings, or evidence) from the proceeding in which

the statement was filed that addresses the written statement. The written statement and

accompanying information must be submitted in redacted form to exclude information subject

to any applicable protective order.

37 CFR 1.501(a)(2)

.

A submission that includes

section 301

written statements must further include the identification of: (1) The forum and proceeding

in which patent owner filed each statement (

37 CFR 1.501(a)(3)(i)

); (2) The

specific papers and portions of the papers submitted that contain the statement

(

37 CFR

1.501(a)(3)(ii)

); and (3) How each statement submitted is a statement

in which patent owner took a position on the scope of any claim in the patent

(

37 CFR

1.501(a)(3)(iii)

)

lude the identification of: (1) The forum and proceeding

in which patent owner filed each statement (

37 CFR 1.501(a)(3)(i)

); (2) The

specific papers and portions of the papers submitted that contain the statement

(

37 CFR

1.501(a)(3)(ii)

); and (3) How each statement submitted is a statement

in which patent owner took a position on the scope of any claim in the patent

(

37 CFR

1.501(a)(3)(iii)

). Identification of the portions of the papers

required by

37

CFR 1.501(a)(3)(ii)

can be satisfied, for example, by citing to the

documents and specific pages of those documents where the patent owner claim scope

statements are found. The requirement of

37 CFR 1.501(a)(3)(iii)

ensures that

the statement is one in which patent owner has taken a position on claim scope in a

proceeding and not merely a restatement of a position asserted by another party. Other

information can be provided by the submitter to assist the Office in readily identifying

the patent owner claim scope statement, such as (1) information regarding the status of the

proceeding and (2) the relationship of the proceeding to the patent.

Affidavits or declarations or other written evidence relating to the

submitted documents may accompany the

37 CFR 1.501

submission to explain the

contents or pertinent dates in more detail. A commercial success affidavit tied in with a

particular document may also be acceptable. For example, the patent owner may wish to cite

a patent or printed publication which raises the issue of obviousness of at least one

patent claim. Together with the cited art, the patent owner may file (A) an affidavit of

commercial success or other evidence of nonobviousness, or (B) an affidavit which questions

the enablement of the teachings of the cited prior art.

No fee is required for the submission under

37 CFR 1.501

.

A submission under

37 CFR 1.501

is limited to patents,

printed publications, or patent owner written statements, accompanying information and an

explanation of the pertinency and the manner of applying them

ccess or other evidence of nonobviousness, or (B) an affidavit which questions

the enablement of the teachings of the cited prior art.

No fee is required for the submission under

37 CFR 1.501

.

A submission under

37 CFR 1.501

is limited to patents,

printed publications, or patent owner written statements, accompanying information and an

explanation of the pertinency and the manner of applying them. This may include an

explanation by the patent owner as to how the claims differ from the prior art patents or

printed publications or written claim scope statements and accompanying information. It may

also include affidavits and declarations. The submission cannot include any issue which is

not directed to patents, printed publications or written claim scope statements and

accompanying information. Thus, for example, a submission cannot include a statement as to

the claims violating

35 U.S.C. 112

, a statement as to the public use of the claimed

invention, or a statement as to the conduct of the patent owner. The submission must be

directed to patents, printed publications and/or written claim scope statements and

accompanying information and cannot discuss what the patent owner did, or failed to do,

with respect to submitting and/or describing patents and printed publications during

examination, because that would be a statement as to the conduct of the patent owner. The

submission also should not contain argument and discussion of references previously treated

in the prosecution of the application which matured into the patent or references

previously treated in a reexamination proceeding as to the patent.

If the submission contains any issue not directed to patents, printed

publications or patent owner written claim scope statements, it should not be entered into

the patent file, despite the fact that it may otherwise contain a complete submission of

patents, printed publications and/or written statements and accompanying information with

an explanation of the pertinency and manner of applying them

If the submission contains any issue not directed to patents, printed

publications or patent owner written claim scope statements, it should not be entered into

the patent file, despite the fact that it may otherwise contain a complete submission of

patents, printed publications and/or written statements and accompanying information with

an explanation of the pertinency and manner of applying them. Rather, the submission should

be returned to the sender, discarded, or closed as described in

MPEP § 2206

.

Examples of letters submitting prior art under

37 CFR 1.501

via

either mail or hand-delivery follow. (In these examples, it is assumed that the application

that matured into U.S. Patent No. 99,999,999 was examined under the first-inventor-to-file

prior art regime. See, e.g.,

MPEP § 2258

, subsection I. Also, see

MPEP § 2206

for

information regarding citing prior art or written statements via the USPTO patent

electronic filing system.)

EXAMPLE I

Submission by a third party:

IN THE UNITED STATES PATENT AND TRADEMARK

OFFICE

In re patent of Joseph Smith Patent No.

99,999,999 Issued: July 7, 2020 For: Cutting Tool

Submission of Prior Art Under 37 CFR

1.501

Mail Stop Post

Issue

Commissioner for Patents P.O. Box 1450

Alexandria, VA 22313-1450

Hon. Commissioner:

The undersigned herewith submits in the

above-identified patent the following prior art (including copies thereof)

which is pertinent and applicable to the patent and is believed to have a

bearing on the patentability of at least claims 1 – 3 thereof:

Weid et al. U.S. 2,585,416 April 15, 1933;

McGee U.S. 2,722,794 May 1, 1934; Paulk et al. U.S. 3,625,291 June 16,

1936

Each of the references discloses a cutting

tool strikingly similar to the device of Smith in having pivotal handles

with cutting blades and a pair of dies. It is believed that each of the

references has a bearing on the patentability of claims 1 – 3 of the Smith

patent.

Insofar as claims 1 and 2 are concerned,

each of the references anticipates the claimed subject matter under 35

U.S.C. 102

,

1936

Each of the references discloses a cutting

tool strikingly similar to the device of Smith in having pivotal handles

with cutting blades and a pair of dies. It is believed that each of the

references has a bearing on the patentability of claims 1 – 3 of the Smith

patent.

Insofar as claims 1 and 2 are concerned,

each of the references anticipates the claimed subject matter under 35

U.S.C. 102. See Figure 2 and column 2 lines 20-45 of Weid et al., Figure 4

and column 3 lines 10-35 of Paulk et al., and Figure 2 and column 2 lines

12-25 of McGee.

As to claim 3, only Weid et al. is a

relevant primary reference, and the differences between the subject matter

of this claim and the cutting tool of Weid et al. are shown in the device of

Paulk et al. Further, Weid et al. suggests that different cutting blades can

be used in their device. A person of ordinary skill in the art before the

effective filing date of the claimed invention would have been led by the

suggestion of Weid et al. to the cutting blades of Paulk et al. as obvious

substitutes for the blades of Weid et al.

Respectfully submitted, (Signed)

Certificate of Service

I hereby certify on this first day of June

2023, that a true and correct copy of the foregoing “Submission of Prior

Art” was mailed by first-class mail, postage paid, to:

John Roe, 555 Any Lane Anytown, VA

22202

(Signed)

/John Jones/

EXAMPLE II

Submission by the patent owner:

IN THE UNITED STATES PATENT AND TRADEMARK

OFFICE

In re patent of Joseph Smith Patent No.

99,999,999 Issued: July 7, 2020 For: Cutting Tool

Submission of Prior Art Under 37 CFR

1.501

Mail Stop Post

Issue

Commissioner for Patents P.O. Box 1450

Alexandria, VA 22313-1450

Hon. Commissioner: The undersigned herewith

submits in the above-identified patent the following prior art (including

copies thereof) which is pertinent and applicable to the patent and is

believed to have a bearing on the patentability of at least claims 1-3

thereof:

Weid et al. U.S. 2,585,416 April 15, 1933;

McGee U.S. 2,722,794 May 1, 1934; Paulk et al

ts P.O. Box 1450

Alexandria, VA 22313-1450

Hon. Commissioner: The undersigned herewith

submits in the above-identified patent the following prior art (including

copies thereof) which is pertinent and applicable to the patent and is

believed to have a bearing on the patentability of at least claims 1-3

thereof:

Weid et al. U.S. 2,585,416 April 15, 1933;

McGee U.S. 2,722,794 May 1, 1934; Paulk et al. U.S. 3,625,291 June 16,

1936

Each of the references discloses a cutting

tool strikingly similar to the device of Smith in having pivotal handles

with cutting blades and a pair of dies. See Figure 2 and column 2 lines

20-45 of Weid et al., Figure 4 and column 3 lines 10-35 of Paulk et al., and

Figure 2 and column 2 lines 12-25 of McGee; limitations (a) – (c) and (e) of

Smith claim 1 are visible in the figures, and are described in the

disclosures. While it is believed that each of the references has a bearing

on the patentability of claims 1 – 3 of the Smith patent, the subject matter

claimed differs from the references and is believed patentable

thereover.

Insofar as claims 1 and 2 are concerned,

none of the references show the particular die (limitation (d) of Smith

claim 1) claimed and the structure of these claimed dies would not have been

obvious to a person of ordinary skill in the art before the effective filing

date of the claimed invention.

As to claim 3, only Weid et al. is a

relevant primary reference, and the cutting blades required by claim 3 are

shown in Paulk et al.; however, the remainder of the claimed structure is

found only in Weid et al. A person of ordinary skill in the art before the

effective filing date of the claimed invention would not have found it

obvious to substitute the cutting blades of Paulk et al. for those of Weid

et al. In fact, the disclosure of Weid et al. would lead a person of

ordinary skill in the art away from the use of cutting blades such as shown

in Paulk et al.

Respectfully submitted,

(Signed) John Doe Attorney for Patent Owner

Reg. No. 29760

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