Intellectual Property Law
Intellectual property law questions? Ask a lawyer
Connect one-on-one with {0} who will answer your question
Answered in 11 minutes by:
11/27/2021
VerifiedThank you for requesting me.
The optimal claim includes limitations that are novel and not obvious. There's not really a technical term or a general approach -- it could be that the limitation is allowable because the prior art does not include it, In terms of "teaching away," that term is used to state the result of the prior art is contrary to the desired result of the claimed invention. Although "teaching away" could refer to the prior art specifically excluding a claimed element of the invention, that is rare, but may be the case in showing that a particular element would not work in the prior art.
One "technical" term that comes to mind when narrowing claims to overcome prior art is estoppel: once you narrow an amendment to overcome prior art, you cannot use the doctrine of equivalents to broaden its interpretation during litigation.
VerifiedAnthonyC127 and 87 other Intellectual Property Law Specialists are ready to help you
How JustAnswer works
Describe your issueThe assistant will guide you
Chat 1:1 with an ip lawyerLicensed Experts are available 24/7
100% satisfaction guaranteeGet all the answers you need
Related Intellectual Property Law Questions
I am trying to get a grip on certain aspects of the
I am trying to get a grip on certain aspects of the relationship between claim limitations and the supporting disclosure in the specification.There are two views, which seems to be at the opposing end… read more
AnthonyC127
Lawyer
Juris Doctor
1,615 satisfied customers
In the context of the US patent system (USPTO), does a
In the context of the US patent system (USPTO), does a claimed solution that describes the means (details) to solve a problem (ends) read on prior art (standalone or combined, i.e. 102 or 103) that me… read more
Kevin
Managing Attorney
Juris doctor
3,406 satisfied customers
In the context of the USPTO, what kind of supporting
In the context of the USPTO, what kind of supporting evidence (or proof) does one need to allege (or rebut) impermissible hindsight (or hindsight bias) in a 103 rejection?What is the likelihood of suc… read more
Kevin
Managing Attorney
Juris doctor
3,406 satisfied customers
In the context of the USPTO, is the core principle of a 103
In the context of the USPTO, is the core principle of a 103 rejection a test to see if the primary reference can be MODIFIED using a feature from the secondary reference to achieve the claimed inventi… read more
AnthonyC127
Lawyer
Juris Doctor
1,615 satisfied customers
In the context of the United States patent system (USPTO or
In the context of the United States patent system (USPTO or the judicial system), how can one retract a terminal disclaimer that is currently in effect, if that's possible at all?Thank you in advance … read more
Kevin
Managing Attorney
Juris doctor
3,406 satisfied customers
What options are available for overcoming a non-statutory
What options are available for overcoming a non-statutory double patenting rejection in a continuation-in-part utility patent application (USPTO)?To my understanding, there are two: explain why the ne… read more
AnthonyC127
Lawyer
Juris Doctor
1,615 satisfied customers
If an amendment to a claim (by adding an extra limitation)
If an amendment to a claim (by adding an extra limitation) causes a prior art (reference) to teach away from the claimed invention, is that prior art still a valid reference?… read more
Jackie Schwartz
J.D.
206 satisfied customers
If I understand correctly, in the US patent system (USPTO),
If I understand correctly, in the US patent system (USPTO), the patent examiner has an obligation to present a “prima facie” argument in a rejection (103 - combined references).Does the term prima fac… read more
AnthonyC127
Lawyer
Juris Doctor
1,615 satisfied customers
Would like to continue a topic you mentioned in a separate
For Mr. Simmons (“montysimmons”): would like to continue a topic you mentioned in a separate answered question, i.e., how the 112(a) rules are applied when it comes to satisfying the written descripti… read more
montysimmons
Owner Simmons Patents
Doctoral Degree
328 satisfied customers
When drafting claims PCT application comprising both
When drafting claims for a PCT application comprising both apparatus and method claims (or both product and process claims), what are the rules and tips to avoid being "lack of unity of invention" com… read more
Alex Reese
Intellectual Property Attorney
JD
3,460 satisfied customers
I need advice on a patent on two patents. Have they expired?Publicatio
I need advice on a patent on two patents. Have they expired? Publication numbers. US *********** A1 US6177391 B1… read more
Delta-Lawyer
Doctoral Degree
3,529 satisfied customers
We have filed a few patents in a technical area that always
We have filed a few patents in a technical area that always involves physical hardware made from aluminum and stainless steel. We now have an application that involves the addition of one or more insc… read more
socrateaser
37,075 satisfied customers
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 refere… read more
saramandel
13 satisfied customers
Background: Got Final Rejection A SHORTENED STATUTORY PERIOD
Background: Got Final Rejection A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE THREE (3) MONTH(S) OR THIRTY (30) DAYS, WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION. -Exten… read more
montysimmons
Owner Simmons Patents
Doctoral Degree
328 satisfied customers
Using this claim as an example: 1. A system of detecting
Using this claim as an example: 1. A system of detecting floating boats, comprising the steps of: providing two sensors incorporated in a probe made of graphite, wherein the said sensors are electrica… read more
montysimmons
Owner Simmons Patents
Doctoral Degree
328 satisfied customers
I need help with a patent. In 2010 we hired a patent attorney
I need help with a patent. In 2010 we hired a patent attorney and he filed a patent for us, this year he died unexpectedly and his partner closed the law firm. Now we have receive a rejection from the… read more
Alex Reese
Intellectual Property Attorney
JD
3,460 satisfied customers
I have filed a patent on Therapy of Multiple Sclerosis, July
I have filed a patent on Therapy of Multiple Sclerosis, July 27, 2009, and this is not on fast track application. I Responded to my first Office Action earlier this year and abandoned some claims, whi… read more
Alex Reese
Intellectual Property Attorney
JD
3,460 satisfied customers
What is the meaning of the term "patent validation"? Would
What is the meaning of the term "patent validation"? Would it be correct to interpret this term as adapting a patent filed with an international organization, such as WIPO, for a national phase, such … read more
Alex Reese
Intellectual Property Attorney
JD
3,460 satisfied customers
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.
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.
...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!
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.
Redwood City, CA
I am very pleased with JustAnswer as a place to go for divorce or criminal law knowledge and insight.
Wichita, KS
PaulMJD helped me with questions I had regarding an urgent legal matter. His answers were excellent.
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!!
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.
Apopka, FL
Wonderful service, prompt, efficient, and accurate. Couldn't have asked for more. I cannot thank you enough for your help.
Freshfield, Liverpool, UK
< Previous | Next >
Meet the Experts:
Robert McEwen, Esq.
Lawyer
1,083 satisfied customers
Licensed Texas General Practice Attorney
Thomas Swartz
Lawyer
474 satisfied customers
Twenty one years experience as a lawyer in New York and New Jersey. Former Appellate Law Clerk.
P. Simmons
Lawyer
227 satisfied customers
12+ yrs. of legal experience.
BartEsq
Researcher
199 satisfied customers
Juris Doctor
Ron Campione
Lawyer
13 satisfied customers
Litiation and transactional IP work
LawEducator
Lawyer
2,894 satisfied customers
Attorney practicing all aspects of copyright/trademark law
Kendell Kelly, Esq
Lawyer
661 satisfied customers
Lawyer practicing in all areas of intellectual property, including patents, trademarks, copyrights, trade secrets and new media.
< Previous | Next >
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.
