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

the USPTO involving an obviousness...
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.
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Answered in 25 minutes by:
10/20/2013
saramandel
saramandel, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 13
Experience: expertise in all stages of protecting intellectual property: patents, trademarks, copyrights, trade secrets
Verified
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.
Ask Your Own Intellectual Property Law Question
Customer reply replied 4 years 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 ...

 

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
saramandel, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 13
Experience: expertise in all stages of protecting intellectual property: patents, trademarks, copyrights, trade secrets
Verified
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Category: Intellectual Property Law
Satisfied Customers: 13
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