Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

['Jacob Ryan]

During my own search for prior art, I discovered a web page that describes one of my claims, but there is a link to a different website in the text that somewhat describes my second claim.

Can this first webpage be used as a single reference that fully anticipates a claim or does the link qualify as a second reference, thus no single reference fullly anticipates the claim?

Thanks for you help...

[W]

They both qualify as prior art (two references), but only if they date before your app. Tread carefully and good luck.

Regards,
-W

[Jacob Ryan]

Thanks for the info.

I'm trying to decide if this is worth moving forward as I don't want to spend any money if I loose out on a section 102(b) rejection.

I don't see any novelty or statutory bar issues except for a 102(b) rejection, which I understand requires a 'single' reference to fully anticipate each and every claim.

[W]

It's like this: rewrite your claims section to deal with the current prior-art. If it fails, the examiner will (in most cases) suggest an alternative. Having a patent is infinitely more useful than not, and you have already invested enough (time, money, etc.) that it is worth it.

Worry about any type of reference (that is
'relevant' to your invention), and an argument against it (how your invention differs). That is all that matters (at this point).

Good Luck,
-W

[JimIvey]

I think they're two separate references, but I don't think it matters.  Whether invalidated under Section 102 or 103, the claim isn't enforceable.  You may be able to narrow the claim(s) to avoid the prior art, but then you'll have to decide whether that leaves you with sufficient coverage to go forward.  That's a business decision that you'll have to make based on your perceived value in what coverage you might eventually get.

I would not recommend relying on the examiner to offer claim suggestions.  First, the examiner's job isn't to get people great claims; their job is to prevent overly broad claims from getting allowed.  In other words, while they might be able to suggest a claim that is allowable, it's not their job to make sure the allowable claim is also valuable to you and your business.  Second, they don't offer recommendations very often.  In my experience, such offers only come up after significant banter back and forth over the particular claim language.  They're far more likely to just say "rejected" and let you figure out your next move.  Third, examiners primarily review claims, not write them.  I don't mean to suggest that examiner's are incapable, just that they don't draft enough claims to develop exceptional skill in doing so.

Regards.

[W]

Agreed.

-W