The Patent and Trademark, in the decision issued on May 11, acknowledges Enercon's contention that prior art had not been considered when the patent was first issued. The examiner, Nestor Ramirez, says, however, that the patent in question is not obvious from the prior art-basically because the art would still have to be combined in a "unique and unusual" way to achieve the invention. And the combination is only obvious with hindsight, adds Ramirez in a statement by the Patent Office, a division of the US Department of Commerce. The decision is in the public record.
"It's a very surprising decision," says a disappointed Mary Helen Sears, Enercon's lawyer. "We made a very strong case." Enercon immediately challenged the Patent Office's decision in a petition, arguing that it was "arbitrary and capricious" and that the examiner cannot have thoroughly examined the matter. It questions the Patent Office taking seven months to make a decision, from when it agreed the review the matter, and five months after the statement from Enron was due. Furthermore Enercon could be damaged substantively and perhaps irrevocably. There is no indication of when the Patent Office will-or must-respond to Enercon's petition.