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Topic: Multiple devices, "one reference" (Read 1676 times) |
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Clifford D. Hyra
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What do you say when an Examiner gives a 102(b) rejection but then cites to different devices/methods/whatever within that reference that are unrelated to teach the various limitations of the claims.
For example, the Examiner cites to the actual "invention" of a reference for many limitations, but then cites to the background, where the reference discloses prior art that it teaches away from, for another limitation. Clearly that prior art is not a part of the "invention" of the reference, but technically it is only one reference and hence the Examiner feels that a 102 is warranted.
The best I have been able to find in the MPEP is section 2131, stating that the elements in the reference must be arranged as required by the claim and that "the identical invention" must be shown. Is there anything better than that? There has to be clear case law on this issue, I would imagine.
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patentsusa
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Posts: 81
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Re: Multiple devices, "one reference"
« Reply #1 on: Dec 15th, 2007, 2:31pm » |
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I think you hit the best argument right there.
Even where a prior art reference includes all the elements that are claimed, where the arrangement of the claimed elements is different from the arrangement of the prior art elements, anticipation is not present.
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| « Last Edit: Dec 15th, 2007, 2:32pm by patentsusa » |
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Deepak Malhotra, JD, BSEE
Registered Patent Attorney
Malhotra Law Firm
www.patentsusa.com
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Clifford D. Hyra
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Re: Multiple devices, "one reference"
« Reply #2 on: Dec 18th, 2007, 1:34pm » |
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Thank you for your reply. I am glad to hear I was on the right track with my arguments. Anyone know of any cases?
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CriterionD
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Posts: 202
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Re: Multiple devices, "one reference"
« Reply #3 on: Dec 20th, 2007, 2:48pm » |
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on Dec 18th, 2007, 1:34pm, Clifford D. Hyra wrote:| Thank you for your reply. I am glad to hear I was on the right track with my arguments. Anyone know of any cases? |
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Feel free to play around with this search engine - Link
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www.criteriondynamics.com
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