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

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.