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(Message started by: Clifford D. Hyra on Dec 6th, 2007, 2:57pm)

Title: Multiple devices, "one reference"
Post by Clifford D. Hyra on Dec 6th, 2007, 2:57pm
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.  

Title: Re: Multiple devices, "one reference"
Post by patentsusa on Dec 15th, 2007, 2:31pm
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.  

Title: Re: Multiple devices, "one reference"
Post by Clifford D. Hyra on Dec 18th, 2007, 1:34pm
Thank you for your reply.  I am glad to hear I was on the right track with my arguments.  Anyone know of any cases?

Title: Re: Multiple devices, "one reference"
Post by CriterionD on Dec 20th, 2007, 2:48pm

on 12/18/07 at 13:34:12, 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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