Intellectual Property Law
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Answered in 9 hours by:
4/28/2021
Jackie Schwartz, Judge
Category: Intellectual Property Law
Satisfied Customers: 211
Experience: Attorney/owner at Jack Schwartz & Associates, PLLC
VerifiedHi, my name is***** and I am an Intellectual Property Attorney. I assume you have a pending US Patent application and received an Office action citing a reference as prior art. One way to overcome a rejection over prior art is to amend the claim by adding features which are not shown by or teach the opposite of the cited prior art reference(s). You should also provide arguments explaining why the amendment distinguishes your claims from the cited prior art and why the prior art reference teaches away from the amended claim.
It is difficult to provide a full response in the abstract but, should 1 reference teach that you cannot do what the claim and application are teaching is performed, then you can argue as you mention that the reference teaches away from the present claimed invention and cannot be combined with another reference to show the present invention. when citing references, the examiner cannot cherry pick elements from a reference without regard to the purpose of the element and the invention described in the reference. Bear in mind that the examiner can cite any references hey deem relevant and you then have to provide sufficient arguments to show the reference is not validly cited.
Jackie Schwartz, Judge
Category: Intellectual Property Law
Satisfied Customers: 211
Experience: Attorney/owner at Jack Schwartz & Associates, PLLC
VerifiedJackie Schwartz and 87 other Intellectual Property Law Specialists are ready to help you
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DISCLAIMER: Answers from Experts on JustAnswer are not substitutes for the advice of an attorney. JustAnswer is a public forum and questions and responses are not private or confidential or protected by the attorney-client privilege. The Expert above is not your attorney, and the response above is not legal advice. You should not read this response to propose specific action or address specific circumstances, but only to give you a sense of general principles of law that might affect the situation you describe. Application of these general principles to particular circumstances must be done by a lawyer who has spoken with you in confidence, learned all relevant information, and explored various options. Before acting on these general principles, you should hire a lawyer licensed to practice law in the jurisdiction to which your question pertains.
The responses above are from individual Experts, not JustAnswer. The site and services are provided “as is”. To view the verified credential of an Expert, click on the “Verified” symbol in the Expert’s profile. This site is not for emergency questions which should be directed immediately by telephone or in-person to qualified professionals. Please carefully read the Terms of Service.
