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(Message started by: datuk on Dec 24th, 2007, 6:12am)

Title: Arguing an absent element
Post by datuk on Dec 24th, 2007, 6:12am
I have this issue which describe the interaction between element A and B in a claim. The prior art uses A and B with a 'middle-man' between them. The result of A and B is a product C while the prior art produces D.

I would have thought its obvious that the prior art must have this middleman because it does not show it could work without it. The examiner argued that my claim did not explicitly recite negativing a middleman. I find this odd as my specification mentioned no middleman, so how is it the prior art can read into my claims ?

Is the examiner right by reading an element that is not present in my specification to show obviousness ? The examiner provided no reasons though, just a remark saying that my claim does not explicitly deny the middleman. Nothwithstanding different products, my view is that this was designed for 2 parties and not 3 parties and structurally it could not deal with a middleman is clear without a need to explicitly say so. Its just common sense.

Whats do you think ?

And Merry Xmas to all.


Title: Re: Arguing an absent element
Post by pentazole on Dec 26th, 2007, 2:11pm
Yes unfortunately I have seen this happen often when the claim language does not exclude something (whether a middleman or otherwise) and a rejection such as yours persists.  The key here for you is to introduce language into your claim that would exclude a middleman, while not introducing any new matter.  If this was a composition claim, for example, the use of "consist of" instead of "comprise" would do the trick, or the use of "free of ...", or something along those lines.  You may also want to call the examiner and discuss this with him and see what your best amendment would be (you don't want to narrow the scope of your claim beyond the exclusion of a middle man).

I have tried in the past to amend a claim to recite "free of ..." using an "implicit disclosure" argument to avoid new matter rejections.  It works, but not very often.

Title: Re: Arguing an absent element
Post by Isaac on Dec 26th, 2007, 3:53pm
I agree with pentazole.   I suspect that using "consists" isn't an option here.

If your spec never mentions a middleman, you may have difficulty writing claims that explicitly exclude a middleman that don't also have written description problems.

Title: Re: Arguing an absent element
Post by bcapehart on Dec 26th, 2007, 3:58pm
I agree with pentazole.  It may be good to call the examiner prior to replying.  This would allow you an opportunity to probe the examiner's mindset before sending in a response.


Title: Re: Arguing an absent element
Post by biopico on Dec 26th, 2007, 4:48pm
I agree.  Please let the examiner talk.

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