Reciting a structure is not connected to another structure in claim

[jothya]

So here is my situation in an after final amendment, let's say the invention includes three components.  These same three components are also taught (and for the same purpose) in the prior art reference.

However, the interconnection of these three components is different in the invention.  In particular, in the prior art reference, the first component is fixedly connected to the second component and the second component is removably connected to the third component.  In the invention, the third component is removable connected to the first component, the second component is removably connected to the third component, however, the first component is not at all connected to the second component.

Is there a good way to recite a "non-connection" limitation in a claim.  I attempted "wherein the first component is separate from the second component" in the NFOA without success (the Examiner basically disregarded it since according to the Examiner first components are inherently "separate"). 

Any thoughts are appreciated. 

[engineerprose]

IANAL, but AFAIK:

"Separate" sounds like a term that would not limit claim scope under BRI with regards to components being "connected" or not. A nut is still "separate" from a blot that it has been fastened to. So the Ex might have a point in this respect that the proposed limitation might not distinguish over the prior art if it does not preclude a direct connection between first and second components under BRI. Not to say that "separate" can never be limiting under BRI, I think that, e.g., "separate ports for input and output" might be limiting for an electronic device.

If that's how you want to distinguish, by non-connection of the first and second components, one could try a limitation with "not directly connected" language.

From the description of the problem, it sounds like one could also try to distinguish with a limitation that describes the removable connection between the first and third components.

[jothya]

Thanks, I realize it isn't probably the strongest argument ever, but it is one of the only ones I appear to have to attempt to distinguish the invention from the prior art.  I just wasn't entirely sure if "not connected to" or "not connected directly to" negative-type limitations were appropriate.

[engineerprose]

Thanks, I realize it isn't probably the strongest argument ever, but it is one of the only ones I appear to have to attempt to distinguish the invention from the prior art.  I just wasn't entirely sure if "not connected to" or "not connected directly to" negative-type limitations were appropriate.

You may want to research the pros and cons of "directly connected" vs. merely "connected". I think I remember reading somewhere about an instance in which an Ex insisted that unqualified "connected" could mean "connected through other elements" as well as "directly connected", but I don't recall whether this interpretation was upheld, and can't seem to find it now.

Nothing inherently wrong with negative limitations.

OTOH, "connected" is a somewhat fuzzy term, and "directly connected" even more so. It would IMHO not be bad to have a backup claim that tries to get into why the connection is not necessary, even if the limitation ends up being very functional. Or any other way to distinguish would probably be better 

[RChris]

MPEP 2144.04(V) sounds like it might be an issue.  What about limitations describing the relationship/interaction of the components in functional terms?  More specifically, function that's not inherent in the structure of the prior art. 

[midwestengineer]

Thanks, I realize it isn't probably the strongest argument ever, but it is one of the only ones I appear to have to attempt to distinguish the invention from the prior art.  I just wasn't entirely sure if "not connected to" or "not connected directly to" negative-type limitations were appropriate.

Just make sure to point out the advantage obtained only by your connection scheme that the prior art connection scheme cannot provide.  It could be something as simple as decreasing a load on a pivot point that is in location A vs location B.  I general find any technical difference + noted advantage due to difference moves prosecution forward.

[MLM]

It doesn't sound like a negative limitation will help if it is not clear what it means. "Not in direct physical contact with" is more specific. "X is physically separated from Y by Z." Etc.

There are two structural limitation approaches that come to mind if you have support for them.

One approach is to claim the device as having two or more configurations, and recite the connection relationships of each configuration.

Another approach is to claim the points of contact between components. Pivot points, latching surfaces, bearing surfaces, etc.

[JimIvey]

Here's a rough cut at how I'd try to fix the claim language:

In the invention, the third component is removable connected to the first component, the second component is removably connected to the third component, in such a manner that the first component can be disconnected from the third component while leaving the third and second components connected to one another.

I drew a little diagram to understand the particulars better.  I might have argued that the prior art doesn't teach that the first and third components are removably connected to one another.  But, I'd imagine that the examiner would assert that the prior art teaches that the first and third components are removably connected to one another through the removable connection between the second and third components.

I think the language above distinguishes the prior art.  You could also use similar language switching the first and second components: "in such a manner that the second component can be disconnected from the third component while leaving the third and first components connected to one another."

Regards.

[jothya]

Thank you everyone.  Much appreciated.

[NJ Patent1]

Yak: "the Examiner basically disregarded it since according to the Examiner first components [in this context] are inherently "separate"  This is a 102?  Is Ex's statement a credible statement?  If so why / why not?  Maybe yiu are unfortunately screwed. 

Like JI, I had to draw a diagram to get a grip on the facts as presented.  JI's suggestion is not bad.  And negative limitations can be OK, depending on when/how you attempt to introduce them and how supported in disclosure.  Could you use a negative limitation something like; "wherein first widget is not in mechanical/electrical/fluid communication (as case may be) with second widget"  Maybe just another way of saying "separated" that is (allegedly) inherent in the prior art?  But as I best understand your OP, first widget is always in fixed communication with second widget in the applied art. 

If a 103, you have options discussed above and others.  But AFIK making integral that which is taught as separate, or vice versa, is obvious unless how to do such is outside the ken of the PHOSITA. 

[jothya]

Sorry to all about the confusing invention description.

NJP1,  it is a 103 rejection and, as I mentioned, this isn't the strongest argument.  My original question was more of a generic question I have had about the use of negative limitations.  I just happened to have a current Office action that reminded me of the question. 

Unfortunately, the invention is a very simple, three component invention where even this distinction is likely to still be obvious as a few of you have observed. Although, it seemed to me that the Examiner's interpretation that the two components are inherently separable is a misreading/misinterpretation of what the prior art teaches and would require operational destruction of the prior art to accomplish this separation.  I ended up using not connected in this amendment instead of separated and specifically pointed out the differences to the Examiner.  We will see if it works.

Thank again everyone and I will file these posts away in my tool belt for the future. 

[engineerprose]

Sorry to all about the confusing invention description.

Wasn't confusing IMHO.

NJP1,  it is a 103 rejection [...] Although, it seemed to me that the Examiner's interpretation that the two components are inherently separable is a misreading/misinterpretation of what the prior art teaches and would require operational destruction of the prior art to accomplish this separation. I ended up using not connected in this amendment instead of separated [...]

A few thoughts:
(1) "seperable", "separated" and "separate" are all different words. "separable" by itself under BRI might not require that the widget keep operating. A table might have "separable" legs to ease transportation, though it cannot operate as a table in that configuration. "separated" sounds pretty much like "not directly connected" to me, so I'd be surprised if that slight shift makes any progress with the Ex.
(2) If the Ex found all the elements inherently in the prior art, it should've been a 102. It's a little confusing that the Ex seems to be trying so hard to find inherency while making it a 103.

and specifically pointed out the differences to the Examiner.  We will see if it works.

From what I know, just "pointing out the differences" generally does not help with 103 rejections. The Ex has already acknowledged that there are differences by making it a 103 rather than 102. One has to go as far as to argue that at least one specific modification is not "do-able" through the obviousness rationale given. Though pointing out a difference and that no rationale has been given to account for it may be sufficient.

[NJ Patent1]

Engineer:  "(2) If the Ex found all the elements inherently in the prior art, it should've been a 102".  Close, but not exactly.  The boilerplate in decisions (and in MPEP also) is essentially: "to anticipate, a single PA reference must teach, expressly or inherently, each and every limitation of the claim, arranged as required by the claim".  As I best understand it, the italicized portion is why the rejection is a 103, not a 102. 

[engineerprose]

Engineer:  "(2) If the Ex found all the elements inherently in the prior art, it should've been a 102".  Close, but not exactly.  The boilerplate in decisions (and in MPEP also) is essentially: "to anticipate, a single PA reference must teach, expressly or inherently, each and every limitation of the claim, arranged as required by the claim".  As I best understand it, the italicized portion is why the rejection is a 103, not a 102.

Was aware of that, but I think that applies most commonly when the PA shows multiple embodiments (or "variations" if one prefers) having all features between them but not one embodiment with the specific combination claimed. Thus "arranged as required by the claim" refers to the necessity that the prior art disclose the claimed combination of the individually disclosed features, as well as each feature considered separately.

Here it sounds like there is one embodiment in the PA that the Ex is trying to fit to the claims (but this has not been made clear by OP). If the Ex finds that the non-connection limitation is met, along with other claim limitations, by the PA embodiment, the rejection should be 102 basis with inherency rationale. Otherwise 103 basis with rationale for modifying to account for the differences. 103 basis with inherency for the non-connection limitation still doesn't make a whole lot of sense to me, unless there are other differences that require a 103 basis.

[khazzah]

"to anticipate, a single PA reference must teach, expressly or inherently, each and every limitation of the claim, arranged as required by the claim".  As I best understand it, the italicized portion is why the rejection is a 103, not a 102.

Was aware of that, but I think that applies most commonly when the PA shows multiple embodiments (or "variations" if one prefers) having all features between them but not one embodiment with the specific combination claimed.

Good point, ep: one common scenario for a single-reference-103 rather than a 102 is when the Examiner relies on different embodiments within the single reference.

Here it sounds like there is one embodiment in the PA that the Ex is trying to fit to the claims (but this has not been made clear by OP). If the Ex finds that the non-connection limitation is met, along with other claim limitations, by the PA embodiment, the rejection should be 102 basis with inherency rationale.

ep, I think you're saying that a 102 is still appropriate, and a single-reference-103 is not required, when features inherent in the single reference are relied on in addition to explicit teachings. Sure, I agree with this.

Nitpick: IMHO, practitioners and Examiners alike often [improperly] use the term "inherency" when what they really mean is "implicit rather than explicit teachings".*

Here the OP said

according to the Examiner first components are inherently "separate"

I suppose it's possible that there is something about the reference that requires the components to be separate. But maybe Examiner is instead reading in between the lines of the reference -- and maybe even using the drawings -- to find that the components are separate.

In either case -- implicit or inherent -- a 102 is appropriate (as opposed to a 103) when a single reference teaches (inherently, implicitly, or explicitly) the elements as arranged in the claim.

Otherwise 103 basis with rationale for modifying to account for the differences.

ep, I think you're saying that a 103 can still be appropriate when the combination doesn't teach the elements as arranged in the claims, as long as the Examiner provides a rationale for why/how a POSITA modifies the combination to account for the differences.

We've probably all seen this .. that's essentially what rationales such as "obvious to make separate" and "obvious to make integral" are, right? And the Fed Cir seem to agree that missing elements are okay in cases such as Tokai, Wyeth and PerfectWeb.

103 basis with inherency for the non-connection limitation still doesn't make a whole lot of sense to me, unless there are other differences that require a 103 basis.

Agreed.

I think this has been a useful discussion. I've seen plenty of cases where the Applicant didn't understand -- often because the Examiner didn't make clear -- the underlying basis for the rejection. You can't fight what you don't understand. So I spend a lot of time and energy trying to really understand the rejection, even if it's not explained well.

* [Shameless plug alert]
I blogged about implicit teachings here: http://allthingspros.blogspot.com/2010/01/implicit-teachings-of-reference.html