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[69Camaro]

Hi:
I'm in the process of studying an application written by a friend of mine.  We had a disagreement because I told him that this applicant won't likely be patentable because what he wants claimed is so close in scope and nature to existing prior art that I had unearthed.  Without giving away the critical details, the application goes like this:

Claims are directed to the use of transponders that are used in tolls, specifically, the transponders are to be used in the collection of not only tolls but as an adjunct to U.S. DOT identification and tracking of commercial trucks to include most tractor trailer rigs and the like, especially those who failed to follow USDOT registration and fees.  The prior art that I stepped across was a similar transponder system for passenger cars used to assess tolls against cars as well as track the movements of potential scofflaws who failed to pay for parking tickets.

The claims in the application are clearly directed to trailer trucks, both in the preamble and the body of the claim while the prior art teaches in the specification, claims, and drawings, a toll/transponder system directed to passenger cars.  My question is does the fact that the application is claiming, with specificity, a transponder systems for trailer trucks only enough to patently distinguish this application from the one that claims a like system for passenger vehicles? I read the MPEP passage on intended use, 2111.02 and think that by removing this limitation from the preamble might make it patently distingusiable but I'm not sure.  Anyone care to comment?

[JimIvey]

Well, you can always argue non-obviousness when you at least have novelty.  However, some arguments for non-obviousness are "challenging" -- i.e., expensive with low likelihood of success.

The question I typically ask a client to help sort out the strength of arguments for non-obvious is something like "if someone had the idea to take this known thing and use it in the new context, what problems would they encounter?  what would indicate to them that it wouldn't work?"  Okay, that's two questions, but they help tease out the foundation of an argument in support of non-obviousness -- and helps you craft claims to rely on such an argument.

Sometimes, I get the answer, "Nothing."  Then, I explain "challenging."

Regards.

[Sabachka]

Rather than focusing exclusively on MPEP 2111.02, you should also read MPEP 2141-2144.