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Author Topic: Narrowing Elements of Expired Patent to Overcome the Prior Art Claim  (Read 1333 times)

Linda J

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If a patentee has narrowed elements (through select limitations) in a dependent claim of an expired patent - to overcome the prior art; can another patent applicant use some of those same narrowed elements in a dependent claim to also overcome the prior art?  Also will a patentee infringe on the in force patent if they use those same narrowed elements in manufacturing; or would they both be covered by the broad dependent claim of the expired patent?
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khazzah

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If a patentee has narrowed elements (through select limitations) in a dependent claim of an expired patent - to overcome the prior art; can another patent applicant use some of those same narrowed elements in a dependent claim to also overcome the prior art? 

While those dependent limitations may give you an idea of a direction to narrow, adding those same limitations does not guarantee that you will overcome the prior art in your own application. The Examiner does a search in each individual application, and different Examiners turn up different art. If the Examiner in your application finds art which teaches a particular limitation, it's not legally relevant to argue "but the PTO found this limitation novel in issued patent X,XXX,XXX".
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Karen Hazzah
Patent Prosecution Blog
http://allthingspros.blogspot.com/

Information provided in this post is not legal advice and does not create any attorney-client relationship.

Yak

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If the Examiner in your application finds art which teaches a particular limitation, it's not legally relevant to argue "but the PTO found this limitation novel in issued patent X,XXX,XXX".

Oh, if only....
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Not legal advice... Batteries are not included... Any resemblance to real persons, living or dead is purely coincidental... Eating raw or undercooked meat, poultry, eggs or seafood poses a health risk.
 



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