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   patent drafting post KSR
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pentazole
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patent drafting post KSR
« on: Jun 20th, 2007, 2:42pm »
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Would it be a good idea for someone such as myself who avoids citing prior art in their application, to add comparative examples based on prior art, and show how the inventive examples according to the instant invention solve the issues where the prior art fails to do so?
 
More specifically, some practitioners like to add a detailed background section that cites a lot of prior art and they discuss how that prior art doesn't solve the problem that they solve.  What I am proposing is moving this to the examples, and use each prior art as a comparative example.
 
ideas?
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Re: patent drafting post KSR
« Reply #1 on: Jun 20th, 2007, 6:59pm »
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If I understand your question, I think I did exactly that pre-KSR.  I think it often helps to have non-obviousness arguments over things you think might be cited against you and to lay the foundation of such arguments in your application -- not in the background section though.
 
Example: "Thus, while technique A is ordinarily used to slow things down, application of technique A to the combination of elements B and C actually speeds things up."
 
Regards.
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TataBoxInhibitor
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Re: patent drafting post KSR
« Reply #2 on: Jun 27th, 2007, 6:08am »
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I like to put those examples towards the end of the detailed description.  I also create the disadvantage(s) "hole" in the background - discussion of the related art section.
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Re: patent drafting post KSR
« Reply #3 on: Jun 27th, 2007, 10:55am »
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on Jun 27th, 2007, 6:08am, TataBoxInhibitor wrote:
I also create the disadvantage(s) "hole" in the background - discussion of the related art section.

I would just suggest being careful not to suggest your own solution, putting the requisite teaching/suggestion/motivation to combine outside references in your APA (admitted prior art) -- aka, the background.  
 
For example, if your invention is a fold-out corkscrew on an icechest, don't say in your background, "while can-openers have been mounted on icechests for years and fold-out corkscrews have been used in pocket knives for years, no one has yet found a way to combine the two to enable opening of wine bottles in social outtings."  Just mention that one often remembers to bring the wine but forget the corkscrew.  In other words, be careful not to lead the reader too close to your solution to the problem.
 
Regards.
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Re: patent drafting post KSR
« Reply #4 on: Jun 27th, 2007, 3:19pm »
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on Jun 27th, 2007, 10:55am, JimIvey wrote:
I would just suggest being careful not to suggest your own solution, putting the requisite teaching/suggestion/motivation to combine outside references in your APA (admitted prior art) -- aka, the background.

 
I wonder to what extent it now matters in what part of your specifcation you put this.   While it is true that using the applicant's own invention against the applicant is impermissible hindsight, using the problem or advantage stated by the inventor in the specification might not have the same issues.   If element X is in the prior art, and would be seen by a skilled artisan (of unspecified ability and modeled by an examiner with perhaps with some prompting for the applicant's specification) to have a particular advantage if used in combination with ABC,  why would the examiner be precluded from saying so just because that advantage was in the specification?   Just saying that the information was in the specification is not evidence that the information was outside the knowledge of a PHOSITA.   Further, all that the examiner really needs now is a reason to combine rather than a teaching, suggestion, or motivation.
 
In cases where the applicant wants to say that his discovery of a problem to be solved is  part of the inventive activity, the applicant has the burden to establish that state of affairs using evidence.
 
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Isaac
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