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Topic: Intended use? (Read 6475 times) |
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Re...jected
Newbie
Posts: 9
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Intended use?
« on: Feb 16th, 2007, 9:03pm » |
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Hey Guys (and Gals), Great site!
Can anyone tell me what "intended use" is supposed to mean, in terms of a 102(b) rejection?
Example:
Claim 243 A gerbil umbrella comprising a stick and a shade, which is shaped and sized so as to provide a minimal barrier against rain, and which is (say) transparent so as to avoid obscuring full view of the beauty that is gerbil.
...is rejected because it is anticipated by a beach umbrella, a carrying-case for an orange safety cone, and a design patent for a clear vinyl raincoat for humans.
Claimant argues that any single 102(b) reference must contain all the elements of a claim, and that none of the references speak to gerbils. (The scope of the invention had earlier been narrowed to domestic rodents, if you will.)
Examiner argues that a gerbil umbrella is the intended use.
Claimant says, "what?"
Examiner says, "gerbil umbrella is the intended use."
Claimant says, "could you explain to me how gerbil umbrella is not a claim limitation?"
Examiner: I just told you. Let's see...Hewlett-Packard yada-yada-yada...
Claimant: No, could you explain to me how gerbil umbrella is not a claim limitation though?
Examiner: I'm just repeating myself. I've already spent too much time on your case.
Claimant: Can you make sure to cite those precedents in the interview summary?
Examiner: Yes, I will. And, from now on, any further contact needs to be in writing! Click.
Claimant: Click.
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| « Last Edit: Feb 16th, 2007, 10:19pm by Re...jected » |
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mypatentcounsel
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Posts: 5
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Re: Intended use?
« Reply #1 on: Feb 17th, 2007, 12:35am » |
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Mr. Rejected: There is no need to be dejected because most of the time there are ways around 102(b) rejections. In fact 102(b) rejections/ anticipation are easier to respond to than obviousness or 103.
However, I think the Examiner is right in that gebril umbrella is part of the preamble and therefore not a claim element/limitation. In other words, in your claim (243) you have only 2 elements, stick and a shade.
In prosecuting mechanical devices, you need to look at the STRUCTURE and not the INTENDED USE. Does that answer your question? Unfortunately, I am unable to advise you on how to respond to the Examiner because I do not know the details here. If you have any questions, please free to contact me.
Martin Jerisat www.mypatentcounsel.com/ www.tmlawus.com
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Re...jected
Newbie
Posts: 9
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Re: Intended use?
« Reply #2 on: Feb 17th, 2007, 10:37am » |
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Thanks for the reply.
But, wouldn't size, shape, and transparency qualify as further limitations? Should I have left the "gerbil" out of the "umbrella" part (literally)?
Also, can a design patent be used responsibly to reject a claim on the basis of novelty where, in essence, NO elements are read upon?
(To be more congruent in my example, I should've said a DESIGN patent for a beach umbrella...and a regular-old utility patent for the clear raincoat.)
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mypatentcounsel
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Posts: 5
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Re: Intended use?
« Reply #3 on: Feb 17th, 2007, 7:15pm » |
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Dear Rejected: You can email me the office action and I will be happy to take a look at it. mjerisat@tmlawusa.com
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