If the examiner has requested clarification in the language of the claim, the applicant must make changes in the written language of the claim to provide greater clarity.
Section 112 refusals are much easier to deal with because they deal with the structure rather than the substance of the claim.
Handling an Argument of Prior Art
35 USC 102 deals with refusals based on prior art that discloses the limitations of the claim and was available before the patent application was filed. These refusals can be dealt with in the following ways:
Proving that prior art is invalid. While examiners conduct thorough prior art searches and rarely confuse dates, it is best to compare the date of the cited reference to your invention for any errors.
By demonstrating that the claim contains at least one unique feature not mentioned in the prior art. Such a feature can also be added by amending the claim.
Handling their argument Clearly
35 USC 103 deals with a combination of obviousness of invention and prior art. It reads as follows— “A patent shall not be granted for a claimed invention, notwithstanding that the claimed invention is not disclose Colombia Phone Number Library d identically as set out in section 102, if the differences between the claimed invention and the prior invention are such that the claimed invention as a whole would have been obvious before the effective date of filing of the claimed invention to a person of ordinary skill in the art to which the claimed invention relates. Patentability shall not be refused by reason of the manner in which the invention was made.”
The claims may be amended to clarify the subject matter or to add a new feature or element. This should be done if a combination of prior art discloses all aspects of a particular claim.
Invalidation of prior art.
Creating market success can be evidence of obscurity. A product achieves commercial success solely because of its novelty, and if it were very obvious, someone would have thought of it before.
If the problem is with the independent claims, assess the dependent claims to see if there is an unclear element that can be used to convince the examiner.
A denial of 35 USC 103 may be argued on the following grounds:
-
- Posts: 9
- Joined: Tue Dec 24, 2024 6:42 am