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Topic: Is My Claim Anticipated? (Read 4053 times) |
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patag2001
Junior Member
Posts: 82
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Is My Claim Anticipated?
« on: Mar 25th, 2007, 4:33pm » |
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Assume my invention immediately below is to A, B, C, and D.
1. A device, comprising:
A;
B;
C; and
D.
The examiner finds the following "related art" reference having the two claims below. Assume both the related art and my invention are fully enabled.
1. A device, comprising:
A;
B; and
C.
2. The device of claim 1, further comprising D.
What is the examiner likely to cite? Anticipation? and/or Obviousness?
According to 2131 of the MPEP, “A claim is anticipated only if each and every element is set forth in the claim is found either expressly or inherently described in a single prior art reference.”
Here, I presume that only obviousness would be the issue. I’m not sure.
Thanks!
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Bill Richards
Full Member
 
Posts: 758
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Re: Is My Claim Anticipated?
« Reply #1 on: Mar 25th, 2007, 6:12pm » |
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on Mar 25th, 2007, 4:33pm, patag2001 wrote:| What is the examiner likely to cite? Anticipation? and/or Obviousness? |
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Anticipation. All the elements of your invention are found in the cited reference. (Not just the claims. But, see below.)
Quote:| Here, I presume that only obviousness would be the issue. I’m not sure. |
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Nope. It's not relevant to anticipation, but note that claim 2 is A+B+C+D.
An example of obviousness would be A+B+C in one reference and D in another.
Sorry!
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
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Wiscagent
Full Member
Posts: 843
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Re: Is My Claim Anticipated?
« Reply #2 on: Mar 26th, 2007, 12:17am » |
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When considering prior art that may anticipate or render obvious, a (prior art) patent's claims are no more or less important than any other part of the patent; or any other publication for that matter.
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Richard Tanzer
Patent Agent
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patag2001
Junior Member
Posts: 82
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Re: Is My Claim Anticipated?
« Reply #3 on: Mar 26th, 2007, 9:18am » |
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Richard,
Thanks for your input!
However, I’m not sure I understand your response. I understood your input in considering prior art (i.e., anticipation) to mean the claims of the prior art reference are no more or less important than any other part of the patent.
I was taught only to argue the 102 rejected base claim(s). My example pulls in the D element with the dependant claim 2. Generally, dependant claims are not argued, only the base claim from which they depend. Is this an exception? Must I argue the dependant claim in combination with its base claim?
Can you really say the claims are no more important ant any other portion of the application?
Many thanks!!!
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Wiscagent
Full Member
Posts: 843
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Re: Is My Claim Anticipated?
« Reply #4 on: Mar 26th, 2007, 9:39am » |
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Let's assume there are 3 documents, each published early enough so that there is no question regarding the priority date of a patent application.
Document 1 - a magazine article that has an enabling disclosure on how to make gadget #1, comprising A + B + C.
Document 2 - a patent that has an enabling disclosure on how to make gadget #2, comprising D + E + F.
Document 3 - a patent that claims gadget #3, comprising G + H + I. But the patent does not actually enable (i.e. teach one skilled in the art) how to make the gadget.
In that scenario:
- document 1 anticipates a claim to gadget #1, comprising A + B + C;
- document 2 anticipates a claim to gadget #2, comprising D + E + F; but
- document 3 does NOT anticipate a claim to gadget #3, comprising G + H + I.
Putting aside complications related to priority dates, for a prior art reference to anticipate a patent claim, the reference must provide an enabling disclosure of the claimed invention; each element of the claim must expressly or inherently be disclosed in the reference.
Whether the reference is a magazine article, a patent, or a scholarly journal is irrelevant.
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Richard Tanzer
Patent Agent
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