How JustAnswer Works:

  • Ask an Expert
    Experts are full of valuable knowledge and are ready to help with any question. Credentials confirmed by a Fortune 500 verification firm.
  • Get a Professional Answer
    Via email, text message, or notification as you wait on our site.
    Ask follow up questions if you need to.
  • 100% Satisfaction Guarantee
    Rate the answer you receive.

Ask saramandel Your Own Question

saramandel
saramandel, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 13
Experience:  expertise in all stages of protecting intellectual property: patents, trademarks, copyrights, trade secrets
75500459
Type Your Intellectual Property Law Question Here...
saramandel is online now
A new question is answered every 9 seconds

I am preparing a two part response to an office action from

Resolved Question:

I am preparing a two part response to an office action from the USPTO involving an obviousness rejection under 35 USC 103.

The first part of the response is on the inoperability of the combined references. I believe that applying the teachings of the secondary reference to the primary reference would make the primary reference inoperable. My argument is that, hence, the independent claim (IC) is not obvious and therefore should not be subject to 35 USC 103.

The second part involves adding a new dependent claim (DC) to “apply” a new limitation to the parent claim, which was the claim mentioned above. This is because I have read somewhere that if a claim is not amended during prosecution it is entitled to the “doctrine of equivalences” which I think translates to the effect that even though a product is not within the literal scope of the claim it is covered by the claim if it operates and functions substantially in the same way.

I thought that adding the limitation to the parent claim right away would be giving up a valuable entitlement before it has proven its usefulness to help overcome the rejection. Adding it through a dependent claim would allow testing its viability before actually making the amendment to the parent claim, since from my previous post I understand that a limitation in a dependent claim cannot be imported into its parent claim.

I would like to get your advice on this strategy.
Submitted: 10 months ago.
Category: Intellectual Property Law
Expert:  saramandel replied 10 months ago.
Hello
If you assert "inoperablity" of a disclosure in a reference you invite being required to demonstrate this (get an expert opinion/declaration) etc.
You should explain why each cited referenced does not "describe or suggest" an element or elements of your claim in question. And then state that combining reference Y with reference X doesn't solve the deficiency of reference X.
If you wish to add a dependent claim to another limitation/feature/structure/function,
that is fine...and you can add it into independent claim later during prosecution if necessary.
Your question is really underpriced, but I wanted to help!
Good luck.
Customer: replied 10 months ago.

Thank you so much for helping me out.

 

Does the assertion "inoperability" requires proof because it is a technical term that has a special meaning, like "comprising?" Is explaining it as a deficiency a workaround?

 

How far can an adversary go with obviousness? Could a solution, that none of the references teach, to correct the deficiency also be obvious, considering that just about anything is obvious in hindsight?

 

I apologize for the underpricing. I am a DIY filer with no patent education working on a shoestring budget. I usually post my more generic questions on the public newsgroups but I feel bad for not being able to compensate the responders for their kindness, and that's why I thought that Just Answer would be a place that is convenient for both parties.

 

Perhaps, if you could suggest a more appropriate price I could try my best to make it up with the tip.

 

Thank you in advance ...

 

Expert:  saramandel replied 10 months ago.
here are my responses (below your questions)...no tip necessary and you are welcome...good luck

Does the assertion "inoperability" requires proof because it is a technical term that has a special meaning, like "comprising?" Is explaining it as a deficiency a workaround?

"inoperable" is a "term of art"...but my point is that if you say something disclosed in a publication "did not work" than you may have to "prove it" to the US Patent office.

And if you are incorrect...it could mean problems later on, including fraud on the patent office.

But you can point out what is "missing" from the other references that you have...ie deficiencies as you state below.


 


How far can an adversary go with obviousness? Could a solution, that none of the references teach, to correct the deficiency also be obvious, considering that just about everything is obvious in hindsight?

The Examiners are not supposed to use "hindsight" to reconstruct the invention
by picking and choosing elements of your invention from several references.

 


I apologize for the underpricing. I am a DIY filer with no patent education working on a shoestring budget. I usually post my more generic questions on the public newsgroups but I feel bad for not being able to compensate the responders for their kindness, and that's why I thought that Just Answer would be a place that is convenient for both parties.

No problem,

saramandel, Lawyer
Satisfied Customers: 13
Experience: expertise in all stages of protecting intellectual property: patents, trademarks, copyrights, trade secrets
saramandel and other Intellectual Property Law Specialists are ready to help you

JustAnswer in the News:

 
 
 
Ask-a-doc Web sites: If you've got a quick question, you can try to get an answer from sites that say they have various specialists on hand to give quick answers... Justanswer.com.
JustAnswer.com...has seen a spike since October in legal questions from readers about layoffs, unemployment and severance.
Web sites like justanswer.com/legal
...leave nothing to chance.
Traffic on JustAnswer rose 14 percent...and had nearly 400,000 page views in 30 days...inquiries related to stress, high blood pressure, drinking and heart pain jumped 33 percent.
Tory Johnson, GMA Workplace Contributor, discusses work-from-home jobs, such as JustAnswer in which verified Experts answer people’s questions.
I will tell you that...the things you have to go through to be an Expert are quite rigorous.
 
 
 

What Customers are Saying:

 
 
 
  • Mr. Kaplun clearly had an exceptional understanding of the issue and was able to explain it concisely. I would recommend JustAnswer to anyone. Great service that lives up to its promises! Gary B. Edmond, OK
< Last | Next >
  • Mr. Kaplun clearly had an exceptional understanding of the issue and was able to explain it concisely. I would recommend JustAnswer to anyone. Great service that lives up to its promises! Gary B. Edmond, OK
  • My Expert was fast and seemed to have the answer to my taser question at the tips of her fingers. Communication was excellent. I left feeling confident in her answer. Eric Redwood City, CA
  • I am very pleased with JustAnswer as a place to go for divorce or criminal law knowledge and insight. Michael Wichita, KS
  • PaulMJD helped me with questions I had regarding an urgent legal matter. His answers were excellent. Three H. Houston, TX
  • Anne was extremely helpful. Her information put me in the right direction for action that kept me legal, possible saving me a ton of money in the future. Thank you again, Anne!! Elaine Atlanta, GA
  • It worked great. I had the facts and I presented them to my ex-landlord and she folded and returned my deposit. The 50 bucks I spent with you solved my problem. Tony Apopka, FL
  • Wonderful service, prompt, efficient, and accurate. Couldn't have asked for more. I cannot thank you enough for your help. Mary C. Freshfield, Liverpool, UK
 
 
 

Meet The Experts:

 
 
 
  • Alex Reese

    Lawyer

    Satisfied Customers:

    2588
    Experienced in intellectual property law
< Last | Next >
  • http://ww2.justanswer.com/uploads/sosolid007/2010-08-05_070536_Suitpic.jpg Alex Reese's Avatar

    Alex Reese

    Lawyer

    Satisfied Customers:

    2588
    Experienced in intellectual property law
  • http://ww2.justanswer.com/uploads/scottymacesq/2009-6-10_221523_small.jpg Robert McEwen, Esq.'s Avatar

    Robert McEwen, Esq.

    Lawyer

    Satisfied Customers:

    387
    Licensed Texas General Practice Attorney
  • http://ww2.justanswer.com/uploads/tswartz123/2010-02-08_225658_Tommy.jpg Thomas Swartz's Avatar

    Thomas Swartz

    Lawyer

    Satisfied Customers:

    374
    Twenty one years experience as a lawyer in New York and New Jersey. Former Appellate Law Clerk.
  • http://ww2.justanswer.com/uploads/dkaplun/2009-05-17_173121_headshot_1_2.jpg Dimitry K., Esq.'s Avatar

    Dimitry K., Esq.

    Attorney

    Satisfied Customers:

    371
    I assist my clients with IP questions that arise in their daily course of doing business.
  • http://ww2.justanswer.com/uploads/personwilt/2010-1-10_164828_person1.jpg Wilton A. Person's Avatar

    Wilton A. Person

    Lawyer

    Satisfied Customers:

    339
    MBA, Experienced and Knowledgeable in Intellectual Property Law
  • http://ww2.justanswer.com/uploads/BA/bart0358/2012-1-23_232424_1056.64x64.JPG BartEsq's Avatar

    BartEsq

    Researcher

    Satisfied Customers:

    192
    Juris Doctor
  • http://ww2.justanswer.com/uploads/IP/ipesq/2012-1-9_164431_RetouchPortraitHighResCopy.64x64.jpg ipesq's Avatar

    ipesq

    Lawyer

    Satisfied Customers:

    134
    Specializing in patent prosecution, trademark and copyright registration/enforcement.
 
 
 

Related Intellectual Property Law Questions