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   Rejection under 102, but only dep claims cited
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   Author  Topic: Rejection under 102, but only dep claims cited  (Read 928 times)
michael73
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Rejection under 102, but only dep claims cited
« on: Jun 27th, 2007, 4:35am »
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Hi,
 
I got a 102(b) rejection for my independent claim and its dependent claims in view of one of my own previous applications. To "prove his point", the examiner cites dependent claims which claim elements also present in my previous application. However, the structure claimed in my independent claim 1 is physically/structurally different from what is disclosed in the previous application. So, what is his point?
 
It is like saying that the inventor of the car has anticipated the space craft because it also has windshields!?
 
I guess I should simply argue that the dependent claims may describe sth also presented before, but that they depend from claim 1 which itself describes a different, novel structure. Is that correct?
 
Thanks for your help... Michael
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TataBoxInhibitor
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Re: Rejection under 102, but only dep claims cited
« Reply #1 on: Jun 27th, 2007, 6:16am »
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If I understand your hypothetical, yes, that is what you do.   The structure of independent 1 is different than the prior art, illustrate the distinctions in your argument clearly and be concise.
 
regards,
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michael73
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Re: Rejection under 102, but only dep claims cited
« Reply #2 on: Jun 27th, 2007, 6:44am »
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Thanks!
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