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Author Topic: Doctrine of Equivalents Without Claims  (Read 481 times)

Art1

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Doctrine of Equivalents Without Claims
« on: 05-17-18 at 09:24 pm »

In a 102 rejection an examiner cited prior art. In the cited prior art there is a description of a business method which is similar to that which I'm trying to have allowed but is not identical. Also the elements in my claims are at best only partially similar and partially implied in the prior art. The examiner said that she is rejecting my claim because of the doctrine of equivalents.

Question 1.
I'm planning to argue that doctrine of equivalents doesn't apply in this case because the prior art (abandoned patent application) doesn't claim what was being described in the specification and thus there is nothing to protect under the doctrine of equivalents which was intended for protecting patents and not abandoned descriptions. Therefore only the verbatim description (specification) should be used as potential grounds for rejection and since the description is not identical to the method which I'm trying to claim therefore the 102 should be withdrawn.

Question 2
If the examiner withdraws 102 and allows the claim then what is the likelihood of patent being subsequently invalidated on the grounds of prior art. Or on the grounds that one skilled in the art could have figured it out from the partially similar and partially implied prior art specification.

Question 3
If the prior art wasn't an abandoned patent app but rather newspaper article would the examiner have any ground to issue 102 rejection still claiming a doctrine of equivalents.
« Last Edit: 05-18-18 at 11:52 pm by Art1 »
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lazyexaminer

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Re: Doctrine of Equivalents Without Claims
« Reply #1 on: 05-17-18 at 09:39 pm »

In a 102 rejection an examiner cited prior art. In the cited prior art there is a description of a business method which is similar to that which I'm trying to have allowed but is not identical. Also the elements in my claims are at best only partially similar and partially implied in the prior art. The examiner said that she is rejecting my claim because of the doctrine of equivalents.

Forget your questions. If it is a 102 and the cited art does not disclose your invention the rejection is improper (unless the next paragraph is what happened). And if this isn't a misunderstanding and the examiner is really citing the doctrine of equivalents in prosecution they unfortunately have no idea what they are doing and you probably need to call them and figure out what's going on.

The only possible way this could be right is if the examiner decided that your claims invoke 112(f) and is calling the thing in the reference an equivalent in that context, is that what happened?
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still_learnin

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Re: Doctrine of Equivalents Without Claims
« Reply #2 on: 05-18-18 at 10:56 am »

In a 102 rejection an examiner cited prior art. In the cited prior art there is a description of a business method which is similar to that which I'm trying to have allowed but is not identical. Also the elements in my claims are at best only partially similar and partially implied in the prior art. The examiner said that she is rejecting my claim because of the doctrine of equivalents.

Forget your questions. If it is a 102 and the cited art does not disclose your invention the rejection is improper (unless the next paragraph is what happened). And if this isn't a misunderstanding and the examiner is really citing the doctrine of equivalents in prosecution they unfortunately have no idea what they are doing and you probably need to call them and figure out what's going on.

The only possible way this could be right is if the examiner decided that your claims invoke 112(f) and is calling the thing in the reference an equivalent in that context, is that what happened?

I agree with all the above. In my 10+ years of prosecution, I have never seen an Examiner refer to "doctrine of equivalents."

Read the Office Action very carefully, every word, and if you still think the Examiner is using "equivalents" then set up an Examiner Interview to discuss.
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Robert K S

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Re: Doctrine of Equivalents Without Claims
« Reply #3 on: 05-18-18 at 11:06 am »

And if it really says "doctrine of equivalents" then make sure the supervisor is on that interview call.
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Art1

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Re: Doctrine of Equivalents Without Claims
« Reply #4 on: 05-18-18 at 11:18 pm »

Perhaps I didn't explain it clearly. When I wrote that "examiner said" I meant the "examiner said during an interview". In the office action the claim was rejected based on plain 102 prior art, however during an interview the examiner said that my invention is "an equivalent of the prior art" and pretty much falls under the "doctrine of equivalents". When I objected and stated that I don't see how doctrine of equivalents may apply in this case, and "pretty much" doesn't mean "exactly the same"  she argued that the prior art accomplishes "equivalent result".

The good news is that when I sent her an email and asked to review the applicability of the doctrine of equivalents in this case, she agreed to do that and to schedule another interview to discuss her findings. So at least she left the door open.
And 112(f) was not invoked in the office action.

But let me be more specific.

My method has a step of: granting a  right to perform [X] wherein the granting comprises expressly conveying a right to do [X].
My specifications state that conveying "expressly" means performing certain action such as for example clicking on a button on an interactive website and agreeing to the terms of service.

In the prior art the specification says that: a user, under certain circumstances, may perform [X] but doesn't mention a step of granting an expressed right to perform [X], doesn't explain how to grant a right to perform [X] and doesn't claim any of these things. So at best the "granting of right" to perform [X] is only implied, as it is unknown if "the user may perform [X]" based on implied right, expressed right, or without any right whatsoever. And even if we assumed that is it implied that an "expressed grant of right" takes place, this does not constitute an enablement but merely a possibility that someone skilled in the art could come up with such a step.
« Last Edit: 05-19-18 at 12:06 am by Art1 »
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still_learnin

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Re: Doctrine of Equivalents Without Claims
« Reply #5 on: 05-22-18 at 12:32 pm »

In the office action the claim was rejected based on plain 102 prior art, however during an interview the examiner said that my invention is "an equivalent of the prior art" and pretty much falls under the "doctrine of equivalents". When I objected and stated that I don't see how doctrine of equivalents may apply in this case, and "pretty much" doesn't mean "exactly the same"  she argued that the prior art accomplishes "equivalent result".

That's usually Examiner-speak for "I'm interpreting your claim term in a broad manner, and under this broad interpretation, your claim term reads on the prior art."

Although after reading the rest of your post, I'm inclined to say it's Examiner-speak for "just a few vague statements from the prior art actually teach quite a bit to a person of ordinary skill in the art."
My method has a step of: granting a  right to perform [X] wherein the granting comprises expressly conveying a right to do [X]. My specifications state that conveying "expressly" means performing certain action such as for example clicking on a button on an interactive website and agreeing to the terms of service.

Does your specification really define "expressly" ?

Or does it give a list of actions that are included in "expressly granting"? And if so, does it say that other actions might also be included in "expressly granting." Or does it give a list of actions that might be included in "expressly granting" ?

True definitions aren't very common, or at least not in electrical / computer / software patents.

In the prior art the specification says that: a user, under certain circumstances, may perform [X] but doesn't mention a step of granting an expressed right to perform [X], doesn't explain how to grant a right to perform [X] and doesn't claim any of these things.

First, whether or not the prior art claims what you claim is irrelevant. What matters is what the prior art teaches. More specifically, what the prior art teaches a person of ordinary skill in the art.

In the prior art the specification says that: a user, under certain circumstances, may perform [X] ...

Don't get sidetracked by the use of "may." Most Examiners would say that this is a teaching of X being performed. While it's true that X is only performed under certain circumstances, X still happens.

So at best the "granting of right" to perform [X] is only implied, as it is unknown if "the user may perform [X]" based on implied right, expressed right, or without any right whatsoever.

Perhaps the Examiner is taking the position that X happens, which necessarily implies that X was allowed to happen (otherwise X wouldn't have happened). Further, since X was allowed to happen, this necessarily implies that some actor/entity granted the right to X.

And even if we assumed that is it implied that an "expressed grant of right" takes place, this does not constitute an enablement but merely a possibility that someone skilled in the art could come up with such a step.

What do you mean by "enablement" ? Are you saying that a person of ordinary skill in the art, upon reading a teaching of "expressly granting the right to do X" would not know how to make software that expressly grants the right?

If that's what you're saying, I think you're going to lose. Software has relatively low enablement threshold. IOW, software developers are used to reading a brief description and then going off and writing code to carry that out. 

You may have a better chance of winning by arguing that the prior art doesn't teach (to a person of ordinary skill in the art) "expressly granting the right" in the first place.
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The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.
 



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