Submitting a reference to the PTO in an information disclosure statement constitutes a tacit admission that the reference is at least analogous art if not material. Here, for example, the patentee’s arguments that a cited reference was not analogous art for the purposes of obviousness under 35 U.S.C. § 103 was found to be unpersuasive at least in part because that reference was listed in an information disclosure statement submitted to the PTO. “[T]he nature of the prior art listed in an information disclosure statement can be informative as to the field of endeavor.” It may therefore be helpful to consider submitting a disclaimer to this effect, for example, at least for any references cited under effectively compulsory circumstances, such as those derived from foreign patent offices, pre-filing search results, and so on.
Background / Facts: The patents being asserted here are directed to various features of the iPhone, including the “slide to unlock” feature. Among the prior art references presented was a video/paper from a computer-human-interactivity conference that was submitted to the PTO in an information disclosure statement during the original prosecution. This reference describes a similar “slide to unlock” feature but for a wall-mounted device to control home appliances like air-conditioning units and heaters, rather than portable mobile phones.
Issue(s): Whether the cited reference can be considered analogous art for the purposes of obviousness under 35 U.S.C. § 103.
Holding(s): Yes. Citing the “Information Disclosure Statement filed May 13, 2011,” the court noted that “the patentee included as potentially relevant many prior art references relating generally to human-interface design, including the [cited] reference” at issue. While acknowledging that “submission of an information disclosure statement to the USPTO does not constitute an admission that the reference listed is material prior art,” the court went on to state, “[h]owever, the nature of the prior art listed in an information disclosure statement can be informative as to the field of endeavor.” The court pointed to other corroborating factors as well in this case, including the general portion of the field of the invention section of the specification.