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Author Topic: Ex is using 1 PA element to anticipate 2 claimed.elements  (Read 170 times)

dab2d

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The claim is clear that the invention requires A and B. A is an extension of B and there is a clear delineation between A and B. However, it is just claimed as X comprising A and B 

The Examiner found A and says that the bottom part of A equates to my A and the top part of A equates to my B. The PA is clear that it is one object.

Is there a good argument that I can use to fight this? I called and he said, he is going to maintain the rejection because I did not define the parts. I argued the fact that I named two parts, there must be at least two distinguishable elements in the PA. Additionally he could not tell me where the PA's A ended and B began....

I was not persuasive.   
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Jellothighs

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Re: Ex is using 1 PA element to anticipate 2 claimed.elements
« Reply #1 on: 12-28-11 at 10:56 pm »

Is this blog post helpful?  http://alleylegal.com/2011/12/powell-v-home-depot-prosecution-lessons/

"But if you are seeking to distinguish over a reference having only a single structure, such as if an Examiner is applying a single prior art element to meet two claim elements, try clearly reciting the elements as individual structures, separated by semicolons or commas, and each starting their own line in the claim. As we saw in Becton v. Tyco, claim elements recited this way were interpreted to require separate structures, whereas in Retractable v. Becton and Powell, elements recited together in the claim without formatting or punctuation separation were met with non-physically-separate structures. (gosh Becton has litigated a lot of cases before the CAFC)"

And also 37 CFR 1.75(i): (i) Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.
« Last Edit: 12-28-11 at 10:58 pm by Jellothighs »
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dab2d

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Re: Ex is using 1 PA element to anticipate 2 claimed.elements
« Reply #2 on: 12-29-11 at 12:13 pm »

Thank you for point me in the right direction. That really helps.
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Isaac

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Re: Ex is using 1 PA element to anticipate 2 claimed.elements
« Reply #3 on: 12-29-11 at 04:25 pm »

If you are planning to amend your claim rather than argue that the claim, as written distinguishes over the prior art, do consider the likelihood that you will be rewarded 103 final rejection for your efforts.   

In fact, you should consider that situation even if you are plan to merely argue and not amend.
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Isaac
 



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