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Good afternoon all,

I have had my search results back from the my patent application. The initial results show four pieces of prior art cited by the examiner. I had not included any citations myself and tried to incorporate by reference in my application so as to avoid any admissions. I attempted a tour de force of what may be considered prior art in the field and why it fails to work. The references given back indicate a lack of novelty with my patent via prior art found by the examiner. Three of the cited submissions are relatively easily dealt with I believe with a narrowing of my claims by falling back on dependant claims I had anticipated using in the light of such references, furthermore they I do not believe they are enabled or usable efficiently to be used in the art I am targeting albeit they could be re-tasked causing a number of issues easily identified by my "tour de force" in the background of my application. However one piece of prior art was sold via a private forum 10 years ago that attempts to provide a tool which addresses the art and main problem I sought to fix, however it fails in its design to provide it. Essentially none of the embodiments of my disclosure would be able to be designed to be identical to the prior art because the specification in the patent already submitted is designed to narrow with the dependant claims and based on a number of formulas that ensure it is fit for purpose and actually works. The author of the prior art also by their own admission describes it's failings in a discussion after the image (not included or I suspect seen by the examiner) in a conversation thread much like you'd see here on StackExchange. In the light of these admissions and no in depth description of their invention:

If a piece of prior art referenced by an examiner attempts to solve part of a problem I have also identified is the onus now placed on myself to respond to the Patent examiner telling them how it fails to be fully enabled in the light of my application or does my invention now lack novelty.

If the prior art has one or more characteristic that causes it to fail at fixing a problem then surely it cannot in it's essence be considered prior art?

If the embodiment of the cited prior art is a photograph that appears to encapsulate a lot of my claims but fails at fully solving the problem by the then inventors own admission does it count?

e.g. Problem: The device must be able to be independently and stably mounted on any substantially vertically flat surface to allow the user to freely carry out their task without supporting said device

Prior Art cited: Photograph of prior art Inventors own admission on thread: "Used on a level piece of glass and they stay on their own.. They are a bit heavy to one side and will bump off rather easily if you don't take care. If you were to place them on an uneven surface you may have trouble getting them to stay."

My design specifically eliminates this previous issue from a piece of prior art I was unaware even existed (A few were sold in a niche forum topic)

Furthermore my patent also outlines use of the device in conjunction with other equipment used in the art which the device does not state is possible. No reference of its suitability for use with this other equipment is mentioned, in fact I would even argue that given its instability and the nature of the prior art, the examiner can not for certain say it would even if the inventor of the previous prior art does. The inventor of the prior art clearly states he took the photograph mounted on glass but makes no mention of any other surface type apart from uneven ones.

Can I argue that given this admission there is no proof that his invention (apart from gravity) wouldn't fail on a different surface (even though the surface material wouldn't matter really, being substantially even and flat does).

Am I scuppered or can I counter it based on the specifications outlined in my patent and the narrowing of dependant claims or will I face the non-obvious objection no matter what I try since someone has attempted to address the problem albeit failed?

I was going to start selling them on Monday via my newly formed limited company with a registered trademarked brand, nothing stopping that train but this could have a knock on effect to the validity/novelty of my registered designs. On the one hand I'd argue that the design corpus of my registered designs niche is broadened by inclusion of the prior art by the patent examiners citations if not countered, thus allowing the registered designs to avoid invalidation entirely, whereas if the prior art is successfully combated by my response/observations as to their citations then the registrations are a moot point.

I realise it's almost impossible to give a strong opinion without seeing the patent itself and the claims, suffice to say although I didn't realise this device existed I have ensured the specification is narrow enough to perhaps fall back on formulaic dependant claims that ensure the devices ability to solve the problem.

Either way we've gone too far to turn back now, Jim!

Any opinions, folks?

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    Are we to assume you aren't working with a patent lawyer or agent? If so, you really should be (in my humble opinion). – Eric Shain Jun 22 '18 at 20:09
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    It's a fair point and definitely one I would have liked to exercise but in my circumstances it was do it myself or not at all - I feel the patent is narrow enough in the specification to eliminate the prior art cited without withdrawing and resubmitting despite the current claims being too broad (which I will change during the substantial examination). Judging by other granted patents I have read, my application I feel is robust if I can eliminate the one particular piece of unsuitable yet visually similar cited prior art – Lochnivar Jun 22 '18 at 22:11
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    In my experience, my applications nearly always received an initial rejection with a list of sometimes dubious prior art. I always had an attorney dealing with the examiner, but you might only need to explain why the cited art is not relevant. Try to avoid narrowing the claims too much. – Eric Shain Jun 23 '18 at 2:25
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If the independent claim/s are obvious, they are the ones that need defending or narrowing before you get to the dependent claims. References cited as prior art can be attacked as not being enabled but (at least in the U.S.) granted U.S. patents are given a strong resumption of enablement. Also, even if a reference is not enabled across its whole scope, we still say "it is good for what it teaches". Parts of various references can legitimately be combined to show your claims are obvious. There are a few ways to show an obviousness rejection is improper. One, in the U.S., is to show that, in the process of modifying the base prior art (using the other references) into your claimed structure, the theory of operation of the base reference is subverted to the point that it is no longer functional for its original purpose.

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Thank you for all your advice as always. As it turns out the commercial/industrial application of my invention solved in the specification and enabled in the background has given me a strong defence I believe against the cited prior art. This is due to legislation that forces my invention to be "CE" marked in order to be "commercial" which disables the prior art from anything other than appearance. Given that there is no way the people who created the prior art could be reasonably thought of able to accomplish CE accreditation given their embodiments (by their own admissions in some cases) then I should be able to reject obviousness/equivalence.

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    In my opinion, that argument can only work if you make it a technical argument. It doesn't matter if a piece of prior art has no "commerciability". It is still prior art. If your invention has technical features (in the claims!) that distinguish it from that prior art, you can argue that those features make it possible to get a CE accreditation, so the features have a technical effect. But the technical effect s assumed anyways in almost all cases, so you're not really gaining anything there. If the person skilled in the art were prompted with the problem of making the prior art CE – DonQuiKong Jul 21 '18 at 7:32
  • accreditable, would they, by combining other prior art, reach your invention? If yes, it is "obvious". – DonQuiKong Jul 21 '18 at 7:32
  • Hopefully, by removing the dependant claim and it's embodiments (that are not the preferred embodiments) I can distance myself. I will narrow my claims to include a more direct reference to the preferred embodiment and then argue the technicalities of my completely different manufacturing process as well as materials used (included in the specification). By the prior arts own admission their device doesn't function correctly, so they couldn't fully solve the problem identified, nor legally sell it. Substantive examination next month, I'll report how it goes – Lochnivar Jul 21 '18 at 18:49
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    If the patent has been published, and if you want, mention the number in the chat (chat.stackexchange.com/rooms/4734/patents) and I'll have a look. Can't promise anything of course, but maybe I spot something you can use/try. – DonQuiKong Jul 22 '18 at 11:16
  • Hi Don, it's not published yet but thanks for the offer! – Lochnivar Jul 23 '18 at 17:39

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