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[04274108]

Hello.  I'm having difficulty understanding how to argue Section 102 novelty of an  independent claim that is a method.  

Does  the method have to recite novel physical features that result from the method itself or a novel process?  Or, should both be argued?

Correspondingly, for Section 103 unobviousness of an independent claim that is a method, do you argue based upon the physical features that precipitate or the the physical process advantages or both?

Thanks!

[Wiscagent]

To argue the novelty of method claim you need to focus on the method itself.  

Consider this claim to make an egg cream:

A method of preparing a beverage comprising:

adding milk to a drinking glass;

adding chocolate syrup to said drinking glass;

stirring the chocolate syrup - milk mixture; and

adding sufficient seltzer to the chocolate syrup - milk mixture to overflow the drinking glass.

The claim says nothing about the physical features of the egg cream, and a §102 rejection is unlikely to mention the physical features of the egg cream.  

If the examiner found a recipe for Sexual Chocolate (see below) and gave you a §102 rejection you could argue back that the Sexual Chocolate reference omits the critical steps of stirring and adding the seltzer or soda water until the mixture overflows the glass.

- - - - - - - - - - - - - - - -
Sexual Chocolate Recipe

3 parts Bailey's Irish Cream
3 parts Kahlua Coffee Liqueur
3 parts Dark Creme de Cacao (a kind of chocolate syrup)
1/2 part Chambord Raspberry Liqueur
1 splash Milk
1 splash Soda Water

Shake well and serve on the rocks.
- - - - - - - - - - - - - - - -

For a §103 rejection you would argue similarly, but also challenge the logic of combining references.  To argue a §103 rejection you might use the properties of the finished drink as a secondary argument - but only to buttress your contention that the methods are different.

Now for the standard disclaimers:  The forgoing is not legal advice.  Every case is fact dependent, and the generalities expressed above may not be applicable to your situation.  I recommend that you work with an experience patent agent or patent attorney.


Richard

[04274108]

Thanks Richard for your very elegant and entertaining explanation.  You've clarified the issue for me.

I'm going to experiment and verify the novelty of your method tonigh!  

Marcel