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[yujin]

Hi there,

I wonder if it is a very bad idea to argue that the patented invention is different from prior art by an element that is not mentioned in claim but in specification?  Do I have to add the element to the claim to convince an examiner better?

Thank you in advance,

Jin

[khazzah]

if it is a very bad idea to argue that the patented invention is different from prior art by an element that is not mentioned in claim but in specification?  Do I have to add the element to the claim to convince an examiner better?

Yes, you need to add the element to the claim.

If you argue an element not in the claim, the Examiner will almost certainly not be convinced. And you will have limited the scope of the claim during litigation, through prosecution disclaimer.

[yujin]

Thank you very much for your reply.

If there are two elements that are not disclosed in a reference, should I argue both elements are not disclosed by the reference or should I argue one of them?  Which is a better practice?

Thank you in advance!

Jin

[Isaac]

If there are two elements that are not disclosed in a reference, should I argue both elements are not disclosed by the reference or should I argue one of them?  Which is a better practice?

Your goal is to convince the examiner in the shortest time frame while creating the least estoppel.  I'm not sure there is a single answer to your question.

[PatObv]

Thank you very much for your reply.

If there are two elements that are not disclosed in a reference, should I argue both elements are not disclosed by the reference or should I argue one of them?  Which is a better practice?

Thank you in advance!

Jin

Generally, you would pick your favored element (most commercially viable or hardest to design around) and stick to that.  If you argued both, I'd generally introduce another independent claim.  Why include both elements in a single claim if you only need one?

[Isaac]

Generally, you would pick your favored element (most commercially viable or hardest to design around) and stick to that.  If you argued both, I'd generally introduce another independent claim.  Why include both elements in a single claim if you only need one?

That's an interesting choice.  What if some other feature was more clearly missing from the reference cited by the examiner as anticipating your claim?

[PatObv]

Client is rarely interested in getting a patent just to have a patent.  If the clearly missing item so narrows the claim as to not read on the commercial embodiment or result in claims that are easily designed around, it is hard to justify the issue fee and maintenance fees.

[Isaac]

Client is rarely interested in getting a patent just to have a patent.  If the clearly missing item so narrows the claim as to not read on the commercial embodiment or result in claims that are easily designed around, it is hard to justify the issue fee and maintenance fees.

I take it that you were referring to adding features to the claims before arguing them, while I was referring merely to chosing which already present features one should argue.

[PatObv]

Correct.  In my replies, I was operating under the original poster's premise of the elements not being in the claims already.

For already present elements, I wouldn't have a general rule for which elements to argue.  I'm just happy that I have a basis for patentability.