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 91 
 on: 05-18-18 at 11:06 am 
Started by Art1 - Last post by Robert K S
And if it really says "doctrine of equivalents" then make sure the supervisor is on that interview call.

 92 
 on: 05-18-18 at 10:56 am 
Started by Art1 - Last post by still_learnin
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.

 93 
 on: 05-18-18 at 10:37 am 
Started by Weng Tianxiang - Last post by bluerogue
Legally? Maybe. 

Smart? No.

Smgsmc is right.  His solution is the way to go.  "zero or more logic blocks" would be given no patentable weight in a claim as the BRI of that includes no logic blocks, which renders that phrase useless for getting around any prior art or limiting your claim.

 94 
 on: 05-18-18 at 08:42 am 
Started by Weng Tianxiang - Last post by smgsmc
Hi,

I have to define word “logic blocks”, but they may be absent.

Is it legal for a phrase “each of zero or more logic blocks”?

Thank you.
I won't address the issue of whether it's "legal" to do so, but I will address the issue of whether it's wise to do so.  The answer is no.

In the specification, you should describe embodiments with no logic blocks and embodiments with one or more logic blocks.  In the claims, your independent claims should not include logic blocks.  Then include logic blocks in dependent claims.  That's how I would do it.

 95 
 on: 05-17-18 at 11:33 pm 
Started by Weng Tianxiang - Last post by Weng Tianxiang
Hi,

I have to define word “logic blocks”, but they may be absent.

Is it legal for a phrase “each of zero or more logic blocks”?

Thank you.

 96 
 on: 05-17-18 at 09:39 pm 
Started by Art1 - Last post by lazyexaminer
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?

 97 
 on: 05-17-18 at 09:24 pm 
Started by Art1 - Last post by Art1
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.

 98 
 on: 05-17-18 at 04:26 pm 
Started by ralphael - Last post by Toot Aps Esroh
In general, it is possible to file a single patent claiming both methods but you may end up with two separate patent applications anyway as mentioned in the last paragraph below.

One way is to write down everything that is the same between the two methods in a single independent claim, then try to determine if those things by themselves are patentable (new and not-obvious).

If yes, then in your dependent claims is where you start adding in those other steps which are distinct to each of the two methods.

Often times the above is just not possible (the point at which the methods depart from one another is not new and/or doesn't describe a complete enough method).  So another way is to file two separate independent claims sets, one for each method.

The examiner may require you to "restrict" the application to just one of the independent claim sets, though.  In that case, you select one method to continue trying to patent in the first application, and decide if the other method claim is worth the cost of filing a divisional application.

 99 
 on: 05-17-18 at 04:11 pm 
Started by ralphael - Last post by ralphael
Basically there are two new methods and display apparatus for achieving the same result. The methods have some similarity and are not completely different.
These could be filled by two different people as different patents and would likely be both granted.
In such scenario can this be a single patent instead filed by one person? Or would there need to be two patents for each method filed by the same person?

 100 
 on: 05-17-18 at 12:23 pm 
Started by holyriver6 - Last post by squid_ip
I was trying to point you more towards purchasing PLI, as the binder materials only constitute a small portion of what the PLI course offers.  IMHO, the real value of the PLI course is the huge bank of questions and the exam-like environment (based on previous published exams and their own questions).

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