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I'm attempting to form a non-provisional utility patent relating to a method and apparatus used for chemical separations. My question is concerning field of invention and subsequently prior art. Here’s an example of my issue:

I’ve come up with a novel way for coffee shops to extract caffeine from coffee beans (I.e. make a cup of coffee). My new method and apparatus are substantially different from any of the coffee machines used in the industry today. However, the invention has similarities when compared to industrial caffeine extractors. These industrial extractors are not extracting caffeine with the intent of making cups of coffee, but rather mass producing products such as energy pills.

Now, I'm not concerned with my invention being too similar when compared with the industrial extractor. I’m only wondering if the industrial processes should be included within the Background of the Invention. Should I mention these as prior art? Or should I focus on the methods and apparatus used by the coffee shops representing the target application of my invention?

Hope this question isn’t too convoluted to understand. Any help would be greatly appreciated.

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I'm not a lawyer, but I've worked with many while writing up my patents. If there is a particularly relevant piece of prior art it is often useful to go ahead and include a discussion of it in the specification so as to proactively teach how your invention is different and novel. Sometimes patent examiners get hung up on a particular piece of prior art and won't let go of it even if you have an excellent argument for novelty. Being proactive shows you weren't trying to slip something past them and seems to help convince examiners.

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Now, I'm not concerned with my invention being too similar when compared with the industrial extractor.

It may be worth revisiting this point while taking into account that changes in size or scale almost never justify patentability. I don't have case cites on hand, but they should be easy to dig up. It would only be patentable if some non-obvious adaptations were made in addition to scaling it down.

I’m only wondering if the industrial processes should be included within the Background of the Invention. Should I mention these as prior art?

It doesn't much matter if you mention them in the specification. What's really important is to include prior art documents describing them in the IDS. The more relevant prior art you show the examiner, the harder it will be to invalidate the patent in court.

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  • Thank you Atsby for the reply. That's the answer I was expecting. I originally intended on including the relevant prior art in question. I was thrown off while reading some previous post on this site. Specifically theses two posts patents.stackexchange.com/q/12050/14217 and patents.stackexchange.com/a/3955/14217 It seemed like the authors of these two answer were almost warning against adding too much prior art. Thanks again for the info. – Ununoctium May 22 '15 at 5:57
  • If you do mention the prior art in the specification is should be to clearly point out how your invention differs so as to reinforce the novelty of the invention. – Eric S Mar 12 '17 at 16:00
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You must sufficiently teach your invention in your non provisional description and also in any cited provisional. But you are not required to analyze the prior art in a detailed background section; that is what patent examiners do.

http://www.ipwatchdog.com/2011/10/23/beware-background-pitfalls-when-preparing-a-patent-application/id=19982/

It's been said that background sections can only be used against you. You should claim the universe in the application and then not be unhappy when your first office action says, no, you're not getting the universe because of this this and this prior art. That's to be expected. If you didn't get dinged in the first office action, you didn't claim enough.

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  • I'd suggest adding a few words about the necessary background and what should be in there, as a patent app. needs a background section, though I agree one shouldn't put anything interesting there. Also when you link other sites a short summary of the important points would be helpful as sometimes links don't work anymore after some time. – DonQuiKong Mar 13 '17 at 9:48

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