|
|
Is My Claim Anticipated?
Posted by Anonymous . updated on 2/26/2009
Assume my invention immediately below is to A, B, C, and D.
1. A device, comprising:
A;
B;
C; and
D.
The examiner finds the following "related art" reference having the two claims below. Assume both the related art and my invention are fully enabled.
1. A device, comprising:
A;
B; and
C.
2. The device of claim 1, further comprising D.
What is the examiner likely to cite? Anticipation? and/or Obviousness?
According to 2131 of the MPEP, ?A claim is anticipated only if each and every element is set forth in the claim is found either expressly or inherently described in a single prior art reference.?
Here, I presume that only obviousness would be the issue. I?m not sure.
Thanks!
Answers (8)
| |
|
Bill Ri...
|
Quote What is the examiner likely to cite? ?Anticipation? and/or Obviousness?
Anticipation. All the elements of your invention are found in the cited reference. (Not just the claims. But, see below.)
Here, I presume that only obviousness would be the issue. ?I?m not sure.
Nope. It's not relevant to anticipation, but note that claim 2 is A+B+C+D.
An example of obviousness would be A+B+C in one reference and D in another.
Sorry!
|
|
| |
|
Wiscagent
|
When considering prior art that may anticipate or render obvious, a (prior art) patent's claims are no more or less important than any other part of the patent; or any other publication for that matter.
|
|
| |
|
patag2001
|
Richard,
Thanks for your input!
However, I?m not sure I understand your response. I understood your input in considering prior art (i.e., anticipation) to mean the claims of the prior art reference are no more or less important than any other part of the patent.
I was taught only to argue the 102 rejected base claim(s). My example pulls in the D element with the dependant claim 2. Generally, dependant claims are not argued, only the base claim from which they depend. Is this an exception? Must I argue the dependant claim in combination with its base claim?
Can you really say the claims are no more important ant any other portion of the application?
Many thanks!!!
|
|
| |
|
Wiscagent
|
Let's assume there are 3 documents, each published early enough so that there is no question regarding the priority date of a patent application.
Document 1 - a magazine article that has an enabling disclosure on how to make gadget #1, comprising A + B + C.
Document 2 - a patent that has an enabling disclosure on how to make gadget #2, comprising D + E + F.
Document 3 - a patent that claims gadget #3, comprising G + H + I. But the patent does not actually enable (i.e. teach one skilled in the art) how to make the gadget.
In that scenario:
- document 1 anticipates a claim to gadget #1, comprising A + B + C;
- document 2 anticipates a claim to gadget #2, comprising D + E + F; but
- document 3 does NOT anticipate a claim to gadget #3, comprising G + H + I.
Putting aside complications related to priority dates, for a prior art reference to anticipate a patent claim, the reference must provide an enabling disclosure of the claimed invention; each element of the claim must expressly or inherently be disclosed in the reference.
Whether the reference is a magazine article, a patent, or a scholarly journal is irrelevant.
|
|
| |
|
JimIvey
|
Quote I was taught only to argue the 102 rejected base claim(s). My example pulls in the D element with the dependant claim 2. Generally, dependant claims are not argued, only the base claim from which they depend. Is this an exception? Must I argue the dependant claim in combination with its base claim?
Unless I'm reading your question incorrectly, you're confusing what you ought to argue with what the examiner can and probably will argue. You asking what the examiner can and probably will argue using the context of what you've been instructed to argue. I don't think it's helpful to think in those terms.
In dealing with anticipation and obviousness, the relevant inquiry is whether anything described in a printed publication that qualifies as prior art would infringe your claims. What is claimed in a prior patent or application is only relevant for interference analysis. So, comparing their claims to your claims is really not helpful here.
Since their Claim 2 recites "A+B+C+D", the descriptive portion(s) of the specification most likely describes A+B+C+D. If that's true, your Claim 1 is anticipated regardless of what the prior art recites in the claims. If that's not described, Claim 2 effectively describes that and therefore anticipates as well -- assuming arguendo that Claim 2 in the context of the prior art reference enables A+B+C+D.
It is important to note that the comparison is not claim-to-claim; it's your claims compared to what's described in printed publications.
I forget who said it, so I'll attribute this quote to Ben Franklin or maybe Mark Twain (because so much else they didn't say is attributed to them, so they're more or less a default quote source):
That which infringes if later anticipates if earlier.
So, anticipation analysis is, in effect, infringement analysis.
I hope that helps.
And, I'd respectfully submit that the inherent wisdom in your training to argue only independent claims is a bit dubious. In the past (pre-1995), it made sense to drag out prosecution by arguing in series (only a single ground for allowance at a time) and to simultaneously avoid excessive prosecution history for later estoppel. Now, especially for many of my clients who need enforceable rights ASAP, the accelerated prosecution of arguing in parallel (arguing multiple grounds for allowability, presumably including dependent claims) can outweigh any likely problems from the additional prosecution history. Arguing in parallel stacks up the work an examiner must do and can lead to early allowance of some claims -- in poker parlance, it's a way to "raise" the stakes.
Regards.
|
|
| |
|
patag2001
|
Jim,
Thanks for your response!
I have read your response carefully, and I?m not sure I fully comprehend everything.
I understand from your response that infringement is a claim-to-claim comparison, while a claim is anticipated when every element of the claim is found in a prior art reference.
Is this correct so far?
Looking back through my old notes, I noticed that the patent attorney who trained me actually said that dependant claims are rarely argued. My error, I believe that I said only independent claims are argued.
I suppose one could also argue that an element within a cited prior art reference is not enabled. However, I believe one of the respondents (i.e., Richard) indicated that even if an element is inherently disclosed then that element is enabled.
An example of an inherently disclosed element would be helpful.
Many thanks!
|
|
| |
|
JimIvey
|
Quote I understand from your response that infringement is a claim-to-claim comparison, while a claim is anticipated when every element of the claim is found in a prior art reference.
Is this correct so far?
No, it's more a claim-to-specification comparison. Do/es the described embodiment/s infringe you claim?
I suppose one could also argue that an element within a cited prior art reference is not enabled. However, I believe one of the respondents (i.e., Richard) indicated that even if an element is inherently disclosed then that element is enabled.
Yes, that's true in theory that the prior art teaching must be enabling. However, the standard for enablement in prior art documents is substantially relaxed relative to the standard you must meet in preparing your specification.
An example of an inherently disclosed element would be helpful.
A simple example: A child holds a string attached to a balloon to hold the balloon in close proximity to the child. Then, the balloon is allowed to float away from the child. Inherent teaching: release of the string by the child. Although, I suppose the string could be severed without the child releasing the string.
An example probably more close to my work: A computer process executing in a processor of a bus-architecture computer reading data from a memory. Inherent teaching: sending a read command and address data through a bus to the memory and receiving read data through the bus.
Personally, I don't see why the examiner can't cite a simple document explaining that data is read in exactly that way and having to rely on "inherent" teaching.
Regards.
|
|
| |
|
pentazole
|
Quote Assume my invention immediately below is to A, B, C, and D.
1. A device, comprising:
? ? ?A;
? ? ?B;
? ? ?C; and
? ? ?D.
The examiner finds the following "related art" reference having the two claims below. ?Assume both the related art and my invention are fully enabled.
1. A device, comprising:
? ? ?A;
? ? ?B; and
? ? ?C.
2. The device of claim 1, further comprising D.
What is the examiner likely to cite? ?Anticipation? and/or Obviousness?
According to 2131 of the MPEP, ?A claim is anticipated only if each and every element is set forth in the claim is found either expressly or inherently described in a single prior art reference.?
Here, I presume that only obviousness would be the issue. ?I?m not sure.
Thanks!
Patag,
yes, you are anticipated. It doesn't matter even if D was an optional element. Basically, if the spec of the reference gives any possibility that A, B, C, and D can exist together at the same time, you are anticipated.
For example, if the reference was A, B, and C, and then somewhere int he spec they say you can have an additive selected from: M, N, O, P, *D*, Q, etc. then the fact that you may have D along with A, B, and C means you are anticipated.
|
|
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 |
|
- 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.
|