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(Message started by: Re...jected on Feb 16th, 2007, 9:03pm)

Title: Intended use?
Post by Re...jected on Feb 16th, 2007, 9:03pm
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.

Title: Re: Intended use?
Post by mypatentcounsel on Feb 17th, 2007, 12:35am
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

Title: Re: Intended use?
Post by Re...jected on Feb 17th, 2007, 10:37am
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.)

Title: Re: Intended use?
Post by mypatentcounsel on Feb 17th, 2007, 7:15pm
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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