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Messages - useful_machine

#1
If you submit a withdrawal and change of correspondance, would that not take care of it?
#2
The duty to disclose relates to all known information that is material to patentability. Materiality is not limited to prior art. In cases where material to patentability could be disputed, I submit.
#3
If I am understanding your hypo correctly, I would say that is a special form due to the non-standard character format.
#4
Is the examiner making the objection because the language of the step in the claims is not shown in the drawing or because the reference numbers "S2a," "S2b," etc. are not in the drawings?
#5
Interesting. Tagging so I can follow.
#6
Ultimately, interpretation of "A being pivotably connected to B" will end up depending on how it is described in the specification, since the phrase itself is open to interpretation. I have grown to disfavor the shorthand of "pivotably connected" and other such phrases due to lack of clarity. I think sometimes lack of clarity and claim scope get improperly conflated.

What does pivotably connected actually mean? Does the connection enable pivotal movement of connected parts? Does the connection itself pivot? Is some other connection/motion enabled? While the phrase appears broad, the breadth is produced by a lack of clarity in meaning which must then be described in the specification or argued later.

Alternatively, consider "A is connected to B and pivots relative to B." This limitation has the same scope but is more clear (IMO).

Additionally, dependent claims more naturally flow from this set up. E.g., A is connected directly to B and pivots relative to B about a pivot axis that passes through A and B. E.g., C is connected to B; and A is connected to C and pivots relative to B about a pivot axis that passes through A and C.
#7
https://www.uspto.gov/web/offices/pac/mpep/s1503.html


Check out this section of the MPEP, do a text search for 'color' and you should find what you're looking for. Looks like you need specific language in the brief description of the drawings. I don't see anything in this section about a petition being required.
#8
Our firm uses ClaimMaster software, so I prepare my claim amendments using track changes because it is easier to keep track of the amendments.  But I then use ClaimMaster to automatically convert the track changes to USPTO formatting for filing.  I don't have any plans to change my process, I was just surprised to hear that this was an option and was being done by practitioners.
#9
I was recently told by an in-house patent associate that some of the outside firms file claim amendments using track changes, rather than the USPTO amendment formatting.  Has anyone heard of this or is doing this?


#10
"If you have, for example, a limitation of "measuring the speed of X using a radar device," and the prior art has both item X moving at a speed and a radar device, a good argument could be made that the step of measuring the speed of X using the radar device would have been obvious, even if not explicit in the reference. "

That makes sense.  While not perfect, applying your example to mine is more like "measuring the speed of the radar device" and the prior art discloses a radar device that includes Y in a list of components that could be usefully coupled to the radar device.  Y is a component that measures speed.  It is feasible that Y could be used to measure the speed of the radar device, but conventional use of Y (including a secondary reference cited in the obviousness rejection) uses Y (as a component of a different device) to measure the speed of X.

"Discloses?  No.
Would have rendered obvious?  Probably.  Depends on the specific teachings of the reference."

That's a fair distinction and I should have used rendered obvious rather than discloses.  Part of the issue is that the rejection presented is relatively superficial and doesn't provide a reason why "measuring the speed of the radar device" is rendered obvious merely because the reference discloses a radar device that includes Y.  The reference is directed to making and using the radar device for its conventional purpose.  Y is only disclosed in a list of items that could usefully be incorporated into the radar device.

The other wrinkle is that the method (rejected in dependent claims) doesn't use Y to measure the speed of the radar device.  Measuring the speed of the radar device is performed using Z.  Z is different in structure and operation from Y, however Z and Y could serve the same function (i.e., measuring speed).  Starting with the conclusion that "measuring the speed of the radar device" is obvious in view of the radar device including Y, the examiner then dismisses the use of Z as a matter of design choice. 

#11
If an apparatus claim includes a widget having a component that performs a specific function/purpose and a prior art reference describes a similar widget with the same component but does not describe the function/purpose of the component, it seems reasonable for an examiner to contend that the reference teaches the invention (the component either inherently has the function/purpose or has the ability to be used for that function/purpose).

Does the same rationale apply to a method claim where the function/purpose is an operational step?

For example:
A method comprising:
using a widget; and
detecting a "parameter" of the widget.

As above, the reference discloses a similar widget that incudes a "parameter" sensor.  The reference does not disclose how the "parameter" sensor is used and does not suggest that the "parameter" of the widget is detected using the "parameter" sensor.   The "parameter" sensor could be used to detect the "parameter" of a doohickey on which the widget is used.  In fact, a secondary reference is cited that describes use of the "parameter" sensor of another similar widget that detects the "parameter" of the doohickey.

Is it proper for an examiner to contend that the reference discloses detecting the "parameter" of the widget just because the "parameter" sensor in the reference "could" be used for that purpose?
#12
In a case such as that proposed by OP, is the scope of such a claim amendment (e.g., "A is perpendicular to B") still interpreted by the written description?  For example, if the written description incudes a statement that the term perpendicular includes approximately perpendicular and approximately means close to but not exact, such as within 10% of stated condition (or some such wiggle room language).  Similarly, if the written description described A as being approximately perpendicular to B, with a similar definition of approximately?
#13
I have referred to the examiner stats on your site a few times.  I find it informative and appreciate the information.
#15
BLUF: How much can an examiner rely on a general statement in a reference that alternative configurations other than those explicitly disclosed/shown in the reference are recognized?

Primary reference is directed to a material assembly that discloses and illustrates a fairly specific arrangement and interrelation of material elements: 

Assembly = 1st material A <interrelation A> material B <interrelation A> 2nd material A.

However, the primary reference includes a statement that other material configurations may be employed and such alternate material configurations may enable other interrelation configurations than those shown. 

Deeper dive:

Secondary reference discloses a material assembly used for similar purpose:

Assembly = material A <interrelation B> material B; or

Assembly = 1st material B <interrelation B> material A <interrelation B> 2nd material B.

Secondary reference also discloses interrelation A, but with material C: 

Assembly = material A <interrelation A> material C.

Secondary reference also discloses a combination assembly formed from two or more assemblies:

Combination = 1st assembly <interrelation C> 2nd assembly.  In other words:

Combination = 1st material A <interrelation B> 1st material B <interrelation C> 2nd material A <interrelation B> 2nd material B; or

Combination = 1st material B <interrelation B> 1st material A <interrelation B> 2nd material B <interrelation C> 3rd material B <interrelation B> 2nd material A <interrelation B> 4th material B.

Examiner contends that Primary could be modified by Secondary, given the recognition of alternative configurations in Primary, to result in:

Assembly = 1st material B <interrelation A> 1st material A <interrelation A> 2nd material A <interrelation A> 2nd material B.





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