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A patent application for a software system, or a set of rules basically, is facing potential prior art challenge.

The prior art invention has 5 elements/rules:

1. Rule_A
2. Rule_B
3. If and when A occurs and then B occurs sometime after A, X will occur
4. Rule_D
5. Rule_E

New invention seeking to be patented has 3 elements/rules:

1. Rule_A
2. Rule_B
3. If and when A occurs, X will occur

The new invention shares Rule_A and Rule_B with the prior art. However, the 3rd rule is different and it doesn't have Rule_D or Rule_E.

Questions:

1. Is the 3rd rule of the new invention a subset of the 3rd rule of the prior art, or is it entirely different?
2. Does having only 3 rules as opposed to 5 from the prior art matter?
3. Will the patent application of this new invention be approved? If not, on what grounds will it fail? Non-obviousness or novelty?
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    I'm afraid the answer to your questions would be "it depends". Most likely to be rejected because of obviousness unless there is something really unexpected happening.
    – Eric S
    Mar 18 at 0:15
  • 2
    You should be able to determine from the Office Action whether you are facing a 102 non-novelty or 103 obviousness rejection. If 102 you might be able to argue that step 3 makes it novel and get to a 103. Fighting the 103 in these kind of cases is tough, but not impossible. For example, if you've eliminated rules D and E substantially without loss of capability and they were cumbersome rules to apply you might have something to go on. But basically the right strategy depends on details that haven't been supplied.
    – bhuff36
    Mar 18 at 0:27
  • @EricS if the prior art system exposes the user of the system to the possibility of fraud, while the new invention's tweaks eliminated the possibility of fraud, would that count as something "really unexpected"? Mar 18 at 4:50
  • Is the case that the claimed invention accomplishes what the prior art did without needing rule D or rule E? If so that might be something, but would need to be claimed in a way that made explicit.
    – George White
    Mar 18 at 5:45
  • I am not a lawyer. Since you are using the term fraud, unexpected would be unexpected to a lawyer experienced in the field.
    – Eric S
    Mar 18 at 20:55

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