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Topic: Subtraction of claim element (Read 1789 times) |
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Chad S.
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I have a perplexing question regarding obviousness that I have encountered. See if anyone can lend a hand.
The prior art consists of a textile with a coating. The patent claims are directed to an identical textile without a coating. It was well-known in the art to produce such a textile with a coating. This is unusual because an element is eliminated, rather than added, in the later invention.
Is the coated textile invalidating (102 or 103) prior art? Would you use a normal obviousness inquiry to determine validity?
Thanks.
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JimIvey
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Re: Subtraction of claim element
« Reply #1 on: Apr 8th, 2005, 12:31pm » |
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It's hard to say without knowing more. As an intermediate manufacturing step, is the textile ever in a state where the coating is missing? If so, I think you have a 102 problem for no more than the textile itself with no coating.
Generally speaking, negative limitations -- such as "without a coating" -- are frowned upon. I don't think they're per se improper and have used them from time to time. If I were looking at this case, I'd look for some context in which the textile is used and some reason why use in that context without the coating is counter-intuitive (one of my favorite non-obvious argument words).
I'll see if I can come up with an example..... Suppose Gortex has a water-repelling coating on it. Suppose the invention uses Gortex in an inner clothing context -- i.e., not the outer shell. Suppose that, in that context, absense of the water-repelling coating does something nifty, like improving breathability or moisture wicking. I'd focus on that context and that nifty feature for the core of my claim.
I hope that helps.
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| « Last Edit: Apr 8th, 2005, 12:34pm by JimIvey » |
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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Chad S.
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Re: Subtraction of claim element
« Reply #2 on: Apr 8th, 2005, 12:54pm » |
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Wow! That was a fast reply.
Suppose the textile is made in a process where the textile is formed first and the coating is applied downstream, i.e. the textile is in a state where the textile is missing. Why would a claim to just the textile be invalid under 102? There is no identity between the prior art and the claimed invention; the negative limitation of "uncoated" is not met.
Suppose that the only advantage of the uncoated textile is the weight/cost of the textile. That is, there is no performance advantage between the prior art textile and the claimed textile. Does this affect the analysis?
As I see it, the problem boils down to whether the uncoated textile is obvious in light of the coated textile.
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JimIvey
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Re: Subtraction of claim element
« Reply #3 on: Apr 8th, 2005, 1:14pm » |
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In my initial question, I meant in the prior art manufacture of the texttile, not in the manner of manufacture that is new. If the old manner of making the textile produced the textile without the coating, even only briefly, the uncoated textile itself if not new.
It sounds like your invention is: (i) make the textile without coating, (ii) ship the uncoated textile (with a reduced weight and comensurate cost), and (iii) coat the textile at some remote location. Assuming I've got it right, I'd approach it as a method claim with that general series of steps. Whether that's non-obvious is impossible for me to say with as little as I know about the specifics. And, we really shouldn't get any more specific in a public forum.
FWIW, it would help if there was some reason the you wouldn't want to ship the textile uncoated -- the risk of contamination, deterioration, etc. Hopefully, you have a nifty solution for that.
Regards.
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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Chad S.
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Re: Subtraction of claim element
« Reply #4 on: Apr 8th, 2005, 1:22pm » |
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Thanks for your thoughtful response. I'm looking for authority that production of an intermediate product (in a non-chemical context) more than a year before the filing date will anticipate a later-filed patent claim directed to the intermediate product. In the chamical context, the answer to this question would involve how stable/ephemeral the intermediate product was. In the mechanical context, I'm not certain that the same logic would work. Anyway, any suggestions on where to look?
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