|
|
102 rejection vs. non-obviousness
Posted by Anonymous . updated on 2/26/2009
I am working with a patent attorney who is pretty much convinced that the examiner has found a PCT reference that provides a strong 102e rejection for the most significant embodiments of my device. So far he has been able to successfully argue against previous 102 rejections created by the examiner slicing a feature out of a reference and claiming similar physical appearance to the features of my device. The counter arguments have been either that the physical structure is actually different or that the function contemplated by my device cannot be accomplished by the examiners structure. Now I am sure my attorney thinks he has adequately explained why the current rejection is strong, but 102 has always been somewhat of a puzzle to me, probably because of the absurd constructs the examiner is allowed to create to produce a rejection. Perhaps someone here can shed a little more light on this topic.
The device in question is an extremely simple mechanical device: a recess in a closure that accepts and centrally positions an external extractor on the face of the closure. The current reference patent incidentally shows in the drawings a nearly identical centrally located recess in a closure that accepts the same extractor (described in the disclosure but not shown in the drawings), but does not necessarilly centrally position the extractor with respect to the closure face. The critical difference, as I see it, is that the reference does not claim, show or disclose central positioning of the extractor as a characteristic of the recess. This in my understanding of invention satisfies both novelty and usefulness. Another way to describe the situation is that there is nearly identical structure with a non-obvious functional difference that is expressed in my disclosure and claims, but is not apparent from my drawings...primarilly because I don't know how to depict that in a drawings. I don't understand why the functional rebuttals worked before, but not this time.
Finally, the question. Is it sufficient that a 102 rejection need only note physical similarities to a reference without acknowledging functional limitations contained in the disclosure and claims?
Answers (11)
| |
|
JimIvey
|
I'm not going to touch on the specifics of your example, mainly because I don't have time to really sit down and think about it. But I'll note that I see a common misunderstanding sort of floating around in subtext in your post. In the mix, you're focusing on what the reference claims and on what you describe; neither of those is of much significance in your situation.
Examination compares what you claim to what's described in the prior art. The "my invention is better and more important than their invention" argument is just a waste of everyone's time. You have to convince the examiner that the claims you want would not be infringed by anything in the prior art. In essence, you're doing an infringement analysis of something that came before your application.
So, why does function matter sometimes and not others? Because sometimes your claims have functional language. If you're arguing functionality based on what's described in your specification, that's not good enough. Sometimes function described in the spec is important -- you mentioned something about being positioned centrally. An examiner might say that the prior art teaches that the positioning can be anywhere, including centrally. Your spec might teach that, in other systems, central positioning in undesireable (and preferrably infeasible) for this or that reason -- and that your spec teaches a previously unappreciated benefit (or enabling configuration) makes central positioning desireable and/or at least feasible. So, the teachings of the spec can be useful, but only in showing that something actually in your claims is non-obvious over the prior art -- not in showing novelty.
Regards.
|
|
| |
|
jesse
|
So even if the specification discloses that central positioning is desirable, it is irrelevant to a 102 rejection based on a structure that does not actively promote central postioning, but with no constraints preventing that configuration.
I think I may be beginning to comprehend the logic. It is the non-negative condition that makes the 102 rejection valid.
Thanks for the response.
|
|
| |
|
JimIvey
|
In a 102 rejection, only what the claim says matters.
That's a bit of an over-simplification, but until you have that firmly burned into your brain and solidly "get it", you're not ready for the nuances that soften that a bit.
For now, you need to understand that you can argue all the language you want, but arguing any language other than the language of the claim(s) at issue is wasting your time and, more importantly, the time of the examiner.
In sum, in a 102 rejection, only what the claim says matters.
Regards.
|
|
| |
|
Isaac
|
Quote For now, you need to understand that you can argue all the language you want, but arguing any language other than the language of the claim(s) at issue is wasting your time and, more importantly, the time of the examiner.
One examiner I know told me that a repeated arguing of things that are not in the claim tempts him to issue 35 USC 112 rejections for failing to claim the subject matter which the applicant regards as his invention. He admits yielding to such temptation on one occasion.
|
|
| |
|
JimIvey
|
Wow, Isaac. Didn't consider that. Luckily, I don't have that problem (not arguing the claims).
One little afterthought: if you really need to argue language that's not in the claims to get around a rejection, add that language to the claims, then argue it. In other words, when I say that, in a 102 rejection, only what the claim says matters, I mean what the claim as currently amended says.
The way this works out is this: if you can't argue any language already in the claim, try to figure out what language you wish was in the claim. Make sure that language is supported by the specification as filed (and identify that support in the Remarks of your response). Then, incorporate that language into the claim and then argue that language.
But you're not going to get anywhere arguing language that is important to you but not in the claim.
Regards.
|
|
| |
|
Isaac
|
Quote Wow, Isaac. ?Didn't consider that. ?Luckily, I don't have that problem (not arguing the claims).
One reason an examiner would not yield to such temptation very often is that he cannot make the office action final if he adds a new rejection that he cannot claim was required by your amendment.
|
|
| |
|
jesse
|
Quote
You have to convince the examiner that the claims you want would not be infringed by anything in the prior art. ?In essence, you're doing an infringement analysis of something that came before your application.
Even if I take "infringement" in a generic and not legal sense, in my mind this statement implies that the examiner is ?looking for features that are positively asserted in the previous art as opposed to "not prohibited". ?The former condition is understandable as a limitation on novelty, but the latter condition, as exemplified ?by your statement
An examiner might say that the prior art teaches that the positioning can be anywhere, including centrally.
is difficult to understand since there is no argument that can refute "what might be" especially when the feature is incidental and not part of the claims. ?It seems that such an interpretation with repect to prior art is more powerful and all-encompassing than a legal claim of that prior art. ?
Let me make it clear that I have not been nattering about information not contained in the claims, although your discussion makes it clear that I should have made it clear. ?That being said, I take it that this distinguishing feature does not rise to novelty and is still irrelevant with respect to a 102 rejection that is based on a reference with apparent, although incidental, similarities that do not expressly prohibit central positioning. ?
So, the teachings of the spec can be useful, but only in showing that something actually in your claims is non-obvious over the prior art -- not in showing novelty.
This discussion has been educational even if I still am inclined to think 102 rejections can be capricious and unsatisfying to my non-legal mind. ?I thank you for taking the time to respond.
|
|
| |
|
Wiscagent
|
Should this claim be rejected as being not novel (102) or obvious (103)?
A US patent application claims a process comprising A, B and C.
- Prior art reference R1 clearly discloses ?A? in the same art, i.e. similar materials, processes, and products.
- Prior art reference R2 clearly discloses ?B? in a related art, i.e. a material used in the claimed process.
- Prior art reference R3 clearly discloses ?C? in a related art, i.e. a material used in the claimed process.
All the references are US patents granted before the priority date of the application.
If I stop there, it is clear that the rejection should be based on obviousness (103). But of course life is not that simple. It so happens that both R2 and R3 are ?incorporated by reference in their entirety? into R1. Given that R2 & R3 are part of R1?s disclosure, isn?t it appropriate to consider the rejection to be based on lack of novelty (102)?
|
|
| |
|
Isaac
|
Quote Given that R2 & R3 are part of R1?s disclosure, isn?t it appropriate to consider the rejection to be based on lack of novelty (102)?
Not necessarily. Just because X, Y,and Z are all disclosed in one publication (by reference or even explicitly) does not mean that the reference discloses X+Y+Z.
There may be cases when it is not proper to combine even separate embodiments disclosed in a single reference to reject a claim under 102.
|
|
| |
|
TataBox...
|
It would seem that an arugment to that effect would be a very very difficult argument to make. You would think that any reference would be drafted to the same kind of subject matter and somewhat related.
|
|
Related Questions
 |
My question concerns patent laws specifically if claim 1 is an independent claim and claim 2 is a dependent claim of claim 1 would it be considered infringement of the patent if one were to copy claim 2 with... Read More |
|
re patent term extension application: facts: 1. PTO rejects initial application for patent term extension, 2. applicant requests reconsideration, 3. PTO again rejects application, making it a ''final agency ... Read More |
|
If a patent was issued in 2004 dated from 2001 that was a continuation in part of a 98 patent app, now abandoned that was a Continuation of a 96 patent app, now abandoned does the ''first to invent'' date go... Read More |
|
My question concerns patent law, specifically claims. If claim A is an indpendent claim and claims B through J are dependent claims of claim A is it necessary for all dependent claims B through J to be prese... Read More |
|
How can one protect Medical Indication Inventions and what is and how can one use in this context the so called "swiss claims format" Read More |
Page 1 of
2
|
12
|
|
- Patent Express is the fastest and easiest way for an individual inventor to file a U.S. Patent or Trademark Application.
- Patent Express fills the gap for those who cannot afford a U.S. patent attorney or agent, but want to have their patent drafted and issued.
- Patent Express is backed by a 100% money back guarantee.
|