Working with US Examiner Citations Trippe

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Patinformatics, LLC®
Data Driven Decisions
Patent Strategy and Analytics Services
Working with Examiner Citations from
US Patent Documents

Anthony Trippe

Managing Director – Patinformatics, LLC

PIUG NE Conference

New Brunswick, NJ – 01 October2013


Citations on US Patent Documents Come from
Several Sources

•  From the applicant – Form SB08 (aka an
Information Disclosure Statement or IDS)

•  From the examiner – Form 892

•  From third-party submissions – not common, yet,
and the details are still being worked out on these


In the US, there is a Duty of Disclosure

•  According to 37 C.F.R. 1.56, entitled Duty to disclose
information material to patentability, applicants for US
patents have a duty of disclosure, candor and good faith to
notify the Office of these references

•  The Manual of Patent Examining Procedures (MPEP)
provides the following guidance in this regard:

The Office encourages applicants to carefully examine:

•  Prior art cited in search reports of a foreign patent office in
a counterpart application

•  The closest information over which individuals associated
with the filing or prosecution of a patent application believe
any pending claim patentably defines, to make sure that any
material information contained therein is disclosed to the
Office


Analysts Need to Consider the Source when
Applying Citations to their Analyses

•  Ofﬁce requires the applicants to provide the “closest
information”

•  But citations on an IDS can sometimes be quite
lengthy

•  Some commentators have questioned how relevant
some of these citations are to the case at hand and
whether the examiner really considers them during
the case

•  Considering all citations can still be a valuable exercise
for exploring the development of a technology


Examiner Citations, on US Patents, are Likely to
be Closer to the Source Material

•  Form 892, referred to as the List of References Identified
by the Examiner, represent the prior art used for the
various office actions that take place during prosecution

•  These references can lead to rejections of various claims
within an office action or they can simply be mentioned as
being “made of record, but not considered”

•  In all cases, citations on Form 892 are hand-picked by the
examiner, based on their relevance to the application at
hand, and can be considered to be highly likely to be on the
same topic as the case

•  All of the citation forms can be found by referring to the
Display References tab when looking at a case in US Public
PAIR


Separating Types of Citations – a Case Study

•  A search on Thomson Innovation for Allure
Energy US patent documents generates ten
granted patents and twenty-nine pre-grant
applications for a total of 39 documents

•  28 of these document have at least one forward
patent citation associated with them according to
the database.


But First the Grants and the Pre-grant
Publications Need to be Reconciled

•  In the case of the ten granted Allure Energy patents, all ten
have pre-grant applications associated with them

•  In only one of the cases both the granted patent, and the
corresponding pre-grant application don’t have any forward
citations

•  Three of the granted patents have no citations themselves
but their corresponding pre-grant applications do

•  In the case of these nine granted patents the data
associated with the pre-grant application needs to be
added to the data associated with the grant so that it
represents the accumulated citations for the full lifecycle of
the document


The Following Table Demonstrates This


Data Needs to be Exported from Innovation and
Merged Before Analysis can be Conducted

•  Export Citing References Details – Patents ﬁeld

•  Field for US8,082,065 looks like this:

•  US20120029713A1,US, ,7 (Pre-search),
2010-08-02,GEN ELECTRIC |
US20120116597A1,US, ,7 (Pre-search),
2010-11-09,GEN ELECTRIC | US8386087B2,US, ,0
(Examiner),2010-08-02,GEN ELECTRIC,SPICER
LUCAS BRYANT,BESORE JOHN
K,WORTHINGTON TIMOTHY DALE,FINCH
MICHAEL FRANCIS


This single ﬁeld contains a tremendous amount
of information on the ‘065 document

•  The ‘065 patent has three forward citations associated
with it (so far) and, in this case, they are separated by
a vertical bar (|) between each entry

•  Within each entry we ﬁnd six pieces of information
associated with each of the three citations

•  These are separated by a comma and represent the
citing patent number, the citing patent country, the
type of citation (examiner or applicant) for
international reports (blank in this example) and for
the US, the citing patent application date and the citing
patent applicant


Continue Processing the Exported Data and
Send the CSV File to Open Reﬁne

•  If the application number is exported with the
publication number and the Cited Reference Details –
Patent it can be sorted on in MS Excel so that the pre-
grant applications are in the row next to the
corresponding granted patents

•  Simply copy the data from the Cited Reference Details
– Patent cell for the pre-grant application and paste it
on to the end of the data associated with the
corresponding granted patent

•  Remember to include a horizontal bar after the data in
the granted patent cell before pasting in the data from
the pre-grant application


The Data Associated with the ‘605 Patent Now
Looks Like This:

•  US20120029713A1,US, ,7 (Pre-search),2010-08-02,GEN ELECTRIC |
US20120116597A1,US, ,7 (Pre-search),2010-11-09,GEN ELECTRIC |
US8386087B2,US, ,0 (Examiner),2010-08-02,GEN ELECTRIC,SPICER
LUCAS BRYANT,BESORE JOHN K,WORTHINGTON TIMOTHY
DALE,FINCH MICHAEL FRANCIS | US20110122798A1,US, ,7 (Pre-
search),2009-11-24,SILVER SPRING NETWORKS INC |
US20110257804A1,US, ,7 (Pre-search),2010-04-14,RAYTHEON CO |
US20120023225A1,US, ,7 (Pre-search),2009-07-20, |
US20120130513A1,US, ,7 (Pre-search),2010-11-18,VERIZON PATENT
& LICENSING INC | US20120198083A1,US, ,7 (Pre-search),
2011-01-27,OPENPEAK INC | US8375118B2,US, ,0 (Examiner),
2010-11-18,VERIZON PATENT & LICENSING INC |
US8396602B2,US, ,11 (Examiner),2009-07-20,ALLURE ENERGY
INC,IMES KEVIN R,HOLLISTER JAMES | WO2012163901A1,WO,X, ,
2011-06-02,NOKIA SIEMENS NETWORKS GMBH,DE LA RUE
MICHAEL,SINGH ABHINAV,GULAK MACIEJ,NAKAMURAKARE
MANUEL,SOEIMA MARCO AURELIO,KJ BOBY


PROCESSING DATA WITH OPEN
REFINE


Create and Choose File in Open Reﬁne


Choose the Parsing Options


Created Project


Splitting multi-value cells using Open Reﬁne


Fill down operation in Open Reﬁne


Splitting multi-value cell into several columns


Let’s Clean up a Few Items Before Exporting
Out of Open Reﬁne and Into Excel

•  Rename column Citing References Details – Patents 1
to Citing References Details – PN

to Citing References Details – Patents PC

to Citing References Details – Patents Citation Type

to Citing References Details – Patents AD

to Citing References Details – Patents Citing Assignee


How Does the Allure Energy Portfolio Look
with Regards to Examiner Citations?

•  Citation type 7 refers to citations on Form
892 for pre-grant applications that have
not issued yet

•  Looking at the totals for examiner vs.
Applicant it can be seen that 144 of the
147 citations are coming from the
examiner

•  90 of these are associated with pre-grant
applications and 30 are associated with US
granted patents

•  The A, Y, X and XP types are coming
from a handful of cases where the Allure
Energy documents were used in an
International Search Report from WO
documents


Which Companies are Having Allure Energy
Documents Cited Against them by Examiners

•  Allure Energy has their own art
cited against them most frequently

•  Coming in a close second is Verizon

•  GE, Sony, Aruba and IBM are also
seeing Allure Energy documents
being cited against them

•  Nest, who is the object of the
Allure Energy patent infringement
suit also makes an appearance


While US Doesn’t Have X & Y Documents
There are Different Types of Rejections

•  Category “X” is applicable where a document is
such that when taken alone, a claimed invention
cannot be considered novel or cannot be
considered to involve an inventive step

•  Category “Y” is applicable where a document is
such that a claimed invention cannot be
considered to involve an inventive step when the
document is combined with one or more other
such documents, such combination being obvious
to a person skilled in the art



•  Claim Rejections – 35 USC §102

•  The following is a quotation of the appropriate paragraphs of 35 U.S.C.
102 that form the basis for the rejections under this section made in
this Office action:

A person shall be entitled to a patent unless -

(e) the invention was described in (1) an application for patent, published
under section 122(b), by another filed in the United States before the
invention by the applicant for patent or (2) a patent granted on an
application for patent by another filed in the United States before the
invention by the applicant for patent, except that an international application
filed under the treaty defined in section 351(a) shall have the effects for
purposes of this subsection of an application filed in the United States only if
the international application designated the United States and was published
under Article 21(2) of such treaty in the English language



•  Claim Rejections – 35 USC § 103

•  The following is a quotation of 35 U.S.C. 103(a) which
forms the basis for all obviousness rejections set forth in
this Ofﬁce action:

(a) A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of
this title, if the differences between the subject matter sought
to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art
to which said subject matter pertains. Patentability shall not be
negatived by the manner in which the invention was made


102 and 103 Rejections are not Listed on Form
892 and are not in Online Databases

•  Rejections previously had to be looked up by
downloading non-final and final Office Actions from
Public PAIR

•  Recently, a service called Patent River, has launched
that provides information on blocking citations, or
Forward Rejections, for US patent documents

•  Company accomplishes this by collecting data from a
variety of public sources and compiling reports on the
102 and 103 rejections associated with a patent or
portfolio of interest


Forward Rejections Report from Patent River
Provides the Details on Examiner Citations

•  The report provides the Allure Energy document that led
to the rejection, the assignee of the application at issue, the
application number at issue and the current status of the
document

•  Also provides the type of rejection, when the rejection was
generated, whether it was a final or non-final rejection,
whether the claims were amended in the response and if
the rejection led to an abandonment

•  Finally, and perhaps most importantly, the report contains
a link for downloading the specific Office Action

•  Applicant response and amended claims are also available
for download


Example of Patent River Report


Conclusions

•  Over the past decade the US has moved from a point
where there were no asterisks and no electronic file
wrappers so citations from the examiner or the
applicant could not be distinguished from one another
without looking at the file wrapper by hand

•  Trying to distinguish examiner from applicant citations
under those circumstances was nearly impossible and
so it simply wasn’t done unless it was absolutely
imperative to do so, say for litigation

•  The situation is much better today, where citations
can be filtered or searched for, by whether they came
from the examiner or the applicant and the source of
the citation can be seen in most database records
showing the citation data

Working with US Examiner Citations Trippe

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