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Author Topic: 132 Declaration to rebutt prior art from same inventor  (Read 405 times)

rriospr

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Dear All,
This is the situation I have: I received a 103 rejection modifying Reference A with Reference B, wherein basically Reference A teaches an apparatus having 2 structures fixed/adhered/glued together forming a solid and safe assembly (as explained in the Reference's specification) and the Examiner cited Reference B to propose separating both structures and arguing that Reference A discloses that: "it is stated for all intents and purposes that the material, shape, size and arrangement of the described elements may be modified" and that Reference A does not disclose that fixing/adhering/gluing together the structures is a critical feature.

Now, Reference A is from the same inventor I'm representing in this case so the inventor told me that the Examiner's statement is not true and that in fact his intent was to have it all glued adhered together.

Would you recommend filing a 132 declaration from the inventor stating that the structures need to be in fact adhered and cannot be separated as argued by the Examiner? Any similar experience that can share?

Thank you,
Roberto
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still_learnin

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Re: 132 Declaration to rebutt prior art from same inventor
« Reply #1 on: 03-28-18 at 11:32 am »

Reference A is from the same inventor I'm representing in this case so the inventor told me that the Examiner's statement is not true and that in fact his intent was to have it all glued adhered together.

Would you recommend filing a 132 declaration from the inventor stating that the structures need to be in fact adhered and cannot be separated as argued by the Examiner?

First, be aware that some clients (mostlyassignees) do not want statements in a file history that discuss a co-owned patent/application. Some clients do allow careful characterization but balk at anything that smacks of criticism. So get your client's permission before you proceed. If the client has in-house counsel, I'd even get him/her to review the 1.132 before filing it.

...Reference A teaches an apparatus having 2 structures fixed/adhered/glued together forming a solid and safe assembly (as explained in the Reference's specification) and the Examiner cited Reference B to propose separating both structures and arguing that Reference A discloses that: "it is stated for all intents and purposes that the material, shape, size and arrangement of the described elements may be modified" and that Reference A does not disclose that fixing/adhering/gluing together the structures is a critical feature.

You might think that the inventor of Reference A is the best authority on the features and characteristics of the apparatus in Reference A. But the issue is not what the inventor "intended" A's apparatus to be, or what A's apparatus ended up being in production. The issue is really what the document (published application/issued patent A) teaches a Person of Ordinary Skill in the Art.

So if you file a 1.132 declaration, keep the focus on what the document teaches a POSITA -- where the inventor is speaking as a POSITA -- rather than having the inventor talk about his own personal understanding of the apparatus in A. If the inventor's own understanding can't be tied to the document itself, I don't think it's relevant.
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The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.

rriospr

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Re: 132 Declaration to rebutt prior art from same inventor
« Reply #2 on: 04-05-18 at 04:37 pm »

First, be aware that some clients (mostlyassignees) do not want statements in a file history that discuss a co-owned patent/application. Some clients do allow careful characterization but balk at anything that smacks of criticism. So get your client's permission before you proceed. If the client has in-house counsel, I'd even get him/her to review the 1.132 before filing it.
In this case the client (without directly mentioning his own patent Reference A) discloses in the application the problems associated with having the 2 structures fixed/adhered/glued together and that the invention of the application overcomes those problems by separating portions of the 2 structures. So, I think I will discuss this carefully with the client as I don't want such statement to be used against us for precisely providing the motivation to modify Reference A. 

You might think that the inventor of Reference A is the best authority on the features and characteristics of the apparatus in Reference A. But the issue is not what the inventor "intended" A's apparatus to be, or what A's apparatus ended up being in production. The issue is really what the document (published application/issued patent A) teaches a Person of Ordinary Skill in the Art.

So if you file a 1.132 declaration, keep the focus on what the document teaches a POSITA -- where the inventor is speaking as a POSITA -- rather than having the inventor talk about his own personal understanding of the apparatus in A. If the inventor's own understanding can't be tied to the document itself, I don't think it's relevant.

My intention with this Declaration was to simply rebut the Examiner's argument that Reference A does not disclose that fixing/adhering/gluing together the structures is a critical feature by having the same person who invented the product of Reference A state that in fact if was intended to be fixed and not separated because by separating the structures the product will not work as intended.

Thank you for taking the time and please do not hesitate to let me know if you think of anything else.
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