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Author Topic: Prior Art viability  (Read 795 times)

merkaba22

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Prior Art viability
« on: 08-10-09 at 11:59 am »

Are there guidelines for establishing the the viability of prior art references when the device of the cited reference is unlikely to commercially unsuccessful due to an extremely poor or unusable design which would otherwise require a second object/device to properly enable; ie. the design shown would never work in the "real world" on its own?
« Last Edit: 08-10-09 at 01:25 pm by merkaba22 »
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JustAnotherExaminer

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Re: Prior Art viability
« Reply #1 on: 08-12-09 at 06:01 am »

You have the same burden the examiner has. The Wand Factors.  Good luck. ;)
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merkaba22

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Re: Prior Art viability
« Reply #2 on: 08-12-09 at 08:28 am »

The prior art reference has been asserted as one of two references that in combination of essential elements comprise obviousness.

I am looking deeper at the reference, the viability, if you will.

This particular reference, upon closer examination, does not provide one (typical but germane) of at least two elements at all and as such would require an additional device to overcome the missing element for the invention, as disclosed in the text and figures, to be commercially successful in the "real world".

Since the element is missing, the reference not only seems to teach away from the challenged invention, it does not teach at all, hah ha....

If there is a legal basis for establishing the inherent weakness of the reference, I would like to know.
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Isaac

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Re: Prior Art viability
« Reply #3 on: 08-17-09 at 09:55 am »

Are there guidelines for establishing the the viability of prior art references when the device of the cited reference is unlikely to commercially unsuccessful due to an extremely poor or unusable design which would otherwise require a second object/device to properly enable; ie. the design shown would never work in the "real world" on its own?

I don't think this line of argument is likely to work.  In particular, you seem to be hedging on whether the device really doesn't work or whether the device is just not optimally enabled.  Showing that a reference is not enabled "might" help in an anticipation rejection, but if the prior reference were a patent, you'd have to overcome the presumption that a patent reference is enabling.

In an obviousness rejection such as the one you have here, enablement may not even be an issue.  Further, a combination of the reference with the second object you say is necessary might still read on your claims.  Unless your claims specifically assert that the component is not there, this argument may be useless.

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Isaac
 



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