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Author Topic: Does this prior art disclose my invention?  (Read 866 times)

Jim (WA)

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Does this prior art disclose my invention?
« on: 11-05-17 at 03:24 pm »

Hello All,

I am trying to determine whether my invention is patentable. There is an expired prior art that is very similar. Because it's expired, my understanding is that evaluating whether I infringe on the claim is not an issue, but rather whether my invention is disclosed anywhere in the specification is the significant issue.

I will use a simple example that shares the same sticking points as my scenario to describe the situation.

In a nut shell, the prior art reads on a table concept with embodiments of a range of preferred sizes with 3 legs, but it also says that, "Dimensions beyond those mentioned above are also possible within the scope of the present invention, [referring to both that table sizes and number of legs could vary]"

My invention asserts that for table embodiments of a size larger than given in the prior art, 4 legs is preferred. I don't believe I could patent the idea of a table, but I'd like to patent the range of embodiments not specifically stated in the prior art.

Additionally, I think that the prior art inventor actually got it wrong in their statement that 3 legs is preferred for the table. My deep experience in this field tells me that actually 4 legs would make a better performing table and I have no interest in making tables with 3 legs.

From my initial research I understand that improvement patents need to be unobvious and produce new and unexpected results.

The prior art captures the embodiments that I seek to patent with the one general quotation above, but the prior art inventor miss states the emobodiments that are preferred and does not specifically state the range of embodiments that Id seek to patent.

I am trying to figure out an approach to writing my specification. I could attack the prior art flaws and do testing to show that their assertions are wrong, and that mine are correct. This will cost lots of money, so Id prefer not to need to do testing just to get the patent.

Id prefer to just show that my invention is outside the range of their disclosure and is a separate invention, but the quotation in the prior art above is very trouble, as it seems to cover all embodiments. Ive also been advised that is very hard to get a patent by just changing the size, which to some degree is what Im doing, but for good scientific reasons, not just to be different.

If anyone can give me some feedback, Id appreciate it.
   
Thank you,

Jim
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MYK

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Re: Does this prior art disclose my invention?
« Reply #1 on: 11-05-17 at 11:55 pm »

Maybe, maybe not.  Especially after butchering to hide the invention, but even without doing that, no one, especially in a public setting, is going to be able to give you (or should try to give you) legal advice upon which you can or should rely, for liability reasons, for legal ethics reasons, and because of basic common sense.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

Jim (WA)

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Re: Does this prior art disclose my invention?
« Reply #2 on: 11-07-17 at 06:34 pm »

All,

The following is an initial round of responses on my topic from a different message board. Im copying and pasting it here to stimulate some conversation. Thanks for your feedback. -Jim

Jim

Yes it would be very hard to get a new patent approved if you are just changing the sizes or dimensions.  You could try claiming these different size ranges and sometimes the examiner will agree with you but usually they push back and say it would be "obvious" and produce an expected outcome. 

One other strategy I have seen people use is try and claim the specific benefit.  For example, if your table with 4 legs has a "stability factor of X" while the prior art with 3 legs only has a stability factor of half X you may be able to put language like that into your claims and then argue the prior art was not able to produce the same result as what you are claiming.

Brad

Brad,

From my perspectives there are a lot of unfounded statments made in patents. For example, the prior art specification Im citing claims that 3 legs for given table size is preferred. The inventor provides no research or data to prove that their assertion of 3 legs being preferred is in fact so. Im just noticing that maybe the patent system does not care if statements made are true or false, only that they are made record and thereby disclosed.

Am I to assume that I can say 4 legs is preferred over the 3 that the prior art states, because the stability factor is increased by x amount, without any test data to back it up?

I think I may be able to take the 2nd route you propose. The prior art table actually has 2 legs, and I would assert that their table is unstable but my table with 3 or 4 legs is stable. This is a more accurate example of my scenario.

Jim

Jim,

Yes the frustrating thing about patents is that often the attorney or person writing the patent will include a lot of statements and things that they don't have any evidence or data for but it can still be used by the examiner to block your own patent.   I don't know of any easy way around this unless you can somehow prove that what they first patent was proposing would not work as intended or could not be combined or modified to work the same as yours.

Brad
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chap5

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Re: Does this prior art disclose my invention?
« Reply #3 on: 04-08-18 at 10:59 pm »

1) If you had read the prior art before coming up with your invention, would it make you want to build tables with a variety of numbers of legs as contemplated in the prior art?

2) Do you have to change anything in the table disclosed in the prior art in order to make it possible to build it with four legs instead of three legs? In other words, although the prior art contemplates more than three legs, would it be possible to build the table of prior art with four legs?
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Peacefulness

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Re: Does this prior art disclose my invention?
« Reply #4 on: 04-18-18 at 11:18 am »

You can certainly try to file and see what the examiner says.  Each examiner does things differently in the consideration, and the prior art specification is not an art that fully anticipates the claimed invention of the 4 legged table.  It certainly makes the examiner's job much easier that it would have been obvious, as the prior art itself already contemplates this.  Of course, who's to say that there isn't an even better prior art out there that covers whatever you are trying to claim with full 35 USC 102 anticipation.  That is part of the reason why you pay the fees for doing a complete search on your invention.  Just keep in mind that you are under legal obligation to include the prior art that you found that is similar in your IDS when you file the application, if you do indeed choose to file that application with a patent office.

There really is nothing that is going to be done regarding the blanket statements.  The specification isn't really part of the examination, and at most examiners will go ahead and object to the specification if something is obviously wrong.  No one really does a best mode rejection (which is what your preferred embodiment is alluding to), as it's impossible to actually prove or disprove so ends up being a complete waste of everyone's time needlessly.  The inventor can just state something they believe is the best mode and that is sufficient and the only thing the patent system can really hold someone to.  How does one even prove that one embodiment is the best mode for all uses of a product and that they knowingly sought to deceive the public by withholding the information is where it is simply impossible to prove.  It would have to take an insane sequence of blunders the inventor did including that they made a statement in an interview or a forum perhaps that they knowingly withheld the best mode.  I'm not even sure why your different message board is discussing that whole topic, as it seems to be that they aren't well versed in the whole patent process to think it warrants any kind of discussion.
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bartmans

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Re: Does this prior art disclose my invention?
« Reply #5 on: 04-20-18 at 05:42 am »

It seems to me that your invention can be considered to be a so-called selection invention, in which the broad concept is known (say the generic use of a metal), but that specific species (say iron and copper) have not been mentioned in the prior art.
It would only be possible to patent these species if they would have a technical effect that is not known in the prior art. Imgaine for instance that a process for producing widgets using a metal is known. Than an application on that same process with Fe would be considered to be novel but not inventive. It only becomes inventive when the use of iron introduces a new and non-Obvious technical feature into the process or the final product, i.e. when it appears that with iron the process runs faster, or that the widgets become more tear-resistant. If that is the case, a claim to such a process with iron may be found allowable.
Although my example is with chemical compounds, it can be used with any feature, i.e. also with size ranges, temperature ranges, and so on.
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