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There are thousands of granted patents with the same circuit function that all mention the same common electronic components.. resistors, capacitors, MCUs, etc. (for example circuits with PIR sensors)

My application recently received an office-action that I can't patent my product because it mentions a tiny 1"-square PCBA that contains a few resistors, caps, and one MCU. The reason is because other separate patents teach the same components.

The Examiner is suggesting that we are cherry-picking resistors from one patent, capacitors from another patent, MCU from another, etc. to combine them to make our product. So our product would conflict with those patents.

Doesn't make sense to me for common components like this. I'm confused on what to do because again there are thousands of other patents that have the same function, but they are approved.

Any suggestions on how to deal with this?

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Is this a U.S. patent application? Will treat as such since you didn't specify otherwise. Please note that I am not a patent agent or attorney, so please treat my remarks as mere kibitzing, and not legal advice.

The Examiner is suggesting that we are cherry-picking resistors from one patent, capacitors from another patent, MCU from another, etc. to combine them to make our product. So our product would conflict with those patents.

Unless the Examiner is grossly incompetent, he's probably not arguing that your claim "conflicts" with other patents. Rather, the Examiner is arguing that your claimed invention is rendered obvious by the disclosures of those prior art patents.

When combining references, the Examiner must give a rationale for combining, not just state that it is obvious. Most likely, the Examiner has done so. Re-read the office action carefully, looking for anything that might be a reason for combining the references. Consider it carefully to understand the Examiner's position. If you misapprehend the Examiner's position, you're not going to get anywhere. Because office actions are almost always written in a hurry, it can be difficult to "decode" them, but it is essential to do so.

There are two basic ways to traverse an obviousness rejection. The first is to argue that the Examiner has left an element of the claim out of his explanation, or modifications not accounted for would have to be made to the prior art to arrive at a claim element. The second is to argue against the rationale for combining.

If it looks like you can't do either of these, you'll have to change the claim to better capture the unobvious parts of the invention. Remember, you're not entitled to a claim merely because it includes unobvious embodiments. Rather, a claim must exclude everything that is obvious in view of the prior art to be patentable. This is so tricky to get right that many people choose to hire a professional.

I'm confused on what to do because again there are thousands of other patents that have the same function, but they are approved.

I wouldn't argue in terms of other patents having been approved. Such arguments aren't legally relevant and aren't remotely likely to convince the Examiner.

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  • I would add that it appears that you are not familiar with the US patent system, and that you do not understand what the examiner is really saying. Your question cannot really be answered without seeing your application, the Office Action, and the prior art. I think it would be best for you to get professional help at this point.
    – Aldo
    May 13 '15 at 21:50

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