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   Is My Claim Anticipated?
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   Author  Topic: Is My Claim Anticipated?  (Read 3592 times)
JimIvey
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Re: Is My Claim Anticipated?
« Reply #5 on: Mar 26th, 2007, 10:04am »
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on Mar 26th, 2007, 9:18am, patag2001 wrote:
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?

Unless I'm reading your question incorrectly, you're confusing what you ought to argue with what the examiner can and probably will argue.  You asking what the examiner can and probably will argue using the context of what you've been instructed to argue.  I don't think it's helpful to think in those terms.
 
In dealing with anticipation and obviousness, the relevant inquiry is whether anything described in a printed publication that qualifies as prior art would infringe your claims.  What is claimed in a prior patent or application is only relevant for interference analysis.  So, comparing their claims to your claims is really not helpful here.
 
Since their Claim 2 recites "A+B+C+D", the descriptive portion(s) of the specification most likely describes A+B+C+D.  If that's true, your Claim 1 is anticipated regardless of what the prior art recites in the claims.  If that's not described, Claim 2 effectively describes that and therefore anticipates as well -- assuming arguendo that Claim 2 in the context of the prior art reference enables A+B+C+D.
 
It is important to note that the comparison is not claim-to-claim; it's your claims compared to what's described in printed publications.
 
I forget who said it, so I'll attribute this quote to Ben Franklin or maybe Mark Twain (because so much else they didn't say is attributed to them, so they're more or less a default quote source):
Quote:
That which infringes if later anticipates if earlier.

So, anticipation analysis is, in effect, infringement analysis.
 
I hope that helps.
 
And, I'd respectfully submit that the inherent wisdom in your training to argue only independent claims is a bit dubious.  In the past (pre-1995), it made sense to drag out prosecution by arguing in series (only a single ground for allowance at a time) and to simultaneously avoid excessive prosecution history for later estoppel.  Now, especially for many of my clients who need enforceable rights ASAP, the accelerated prosecution of arguing in parallel (arguing multiple grounds for allowability, presumably including dependent claims) can outweigh any likely problems from the additional prosecution history.  Arguing in parallel stacks up the work an examiner must do and can lead to early allowance of some claims -- in poker parlance, it's a way to "raise" the stakes.
 
Regards.
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Re: Is My Claim Anticipated?
« Reply #6 on: Mar 31st, 2007, 10:41am »
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Jim,
 
Thanks for your response!
 
I have read your response carefully, and Iím not sure I fully comprehend everything.
 
I understand from your response that infringement is a claim-to-claim comparison, while a claim is anticipated when every element of the claim is found in a prior art reference.  
 
Is this correct so far?
 
Looking back through my old notes, I noticed that the patent attorney who trained me actually said that dependant claims are rarely argued.  My error, I believe that I said only independent claims are argued.  
 
I suppose one could also argue that an element within a cited prior art reference is not enabled.  However, I believe one of the respondents (i.e., Richard) indicated that even if an element is inherently disclosed then that element is enabled.
 
An example of an inherently disclosed element would be helpful.
 
Many thanks!
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Re: Is My Claim Anticipated?
« Reply #7 on: Mar 31st, 2007, 11:37am »
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on Mar 31st, 2007, 10:41am, patag2001 wrote:
I understand from your response that infringement is a claim-to-claim comparison, while a claim is anticipated when every element of the claim is found in a prior art reference.  
 
Is this correct so far?

No, it's more a claim-to-specification comparison.  Do/es the described embodiment/s infringe you claim?
 
on Mar 31st, 2007, 10:41am, patag2001 wrote:
I suppose one could also argue that an element within a cited prior art reference is not enabled.  However, I believe one of the respondents (i.e., Richard) indicated that even if an element is inherently disclosed then that element is enabled.

Yes, that's true in theory that the prior art teaching must be enabling.  However, the standard for enablement in prior art documents is substantially relaxed relative to the standard you must meet in preparing your specification.
 
on Mar 31st, 2007, 10:41am, patag2001 wrote:
An example of an inherently disclosed element would be helpful.

A simple example:  A child holds a string attached to a balloon to hold the balloon in close proximity to the child.  Then, the balloon is allowed to float away from the child.  Inherent teaching: release of the string by the child.  Although, I suppose the string could be severed without the child releasing the string.
 
An example probably more close to my work: A computer process executing in a processor of a bus-architecture computer reading data from a memory.  Inherent teaching: sending a read command and address data through a bus to the memory and receiving read data through the bus.
 
Personally, I don't see why the examiner can't cite a simple document explaining that data is read in exactly that way and having to rely on "inherent" teaching.  
 
Regards.
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Re: Is My Claim Anticipated?
« Reply #8 on: Jun 21st, 2007, 4:04pm »
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on Mar 25th, 2007, 4:33pm, patag2001 wrote:
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, ďA 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.Ē
 
Here, I presume that only obviousness would be the issue. †Iím not sure.
 
Thanks!
 
 

 
Patag,
 
yes, you are anticipated.  It doesn't matter even if D was an optional element.  Basically, if the spec of the reference gives any possibility that A, B, C, and D can exist together at the same time, you are anticipated.
 
For example, if the reference was A, B, and C, and then somewhere int he spec they say you can have an additive selected from:  M, N, O, P, *D*, Q, etc.  then the fact that you may have D along with A, B, and C means you are anticipated.
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