7 votes

Urgent - My Patent Application received a Non-Final Rejection, Advice?

Hire a professional. 1) Neither question you ask can be answered with the information you gave, and even if you posted your application I doubt anyone would be willing to wade through it to give you ...
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  • 491
4 votes

Can the examiner's use of more than 3 prior art refs in combination be successfully argued as "nonobviousness"?

It is unfortunately common for US examiners to combine 3 or more documents to argue obviousness. I recall once having 6 documents cited in combination (which, predictably, we did not react kindly to). ...
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  • 7,043
4 votes

Claimed Invention "As a Whole"

It just means that any single small non-obvious aspect makes the "whole" invention non-obvious. Or the other way around, for obviousness, the combination of all elements needs to be obvious, not ...
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  • 5,827
3 votes
Accepted

Unpublished foreign applications considered prior art for EPO inventive step?

Yes. You already cited the correct source, a further one would be art. 54 (2), (3) EPC: (2) The state of the art shall be held to comprise everything made available to the public by means of a ...
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  • 5,827
3 votes
Accepted

Full Scope Non-Obviousness?

I agree with Maca that, by definition, if any specific example that falls under the scope of a claim is obvious, the claim is obvious. Examiners do not need to find "full scope" obviousness, ...
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  • 25.6k
3 votes

What questions does an examiner ask when determining if an application is non obvious?

What concrete steps can be taken / avoided to convey that the invention is not obvious? I would avoid writing that you used "existing technology". Most inventions are improvements on something that ...
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  • 25.6k
3 votes

How does this particular patent satisfy the tests of obviousness and novelty?

Many if not most patents are improvements on existing technology. While US5005266 patents a particular method of self-locking carabiner, it by no means patents the general idea of self-locking ...
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  • 9,712
3 votes
Accepted

If I produce a open source algorithm, can a company register a patent with my idea and sued me?

No. One of the basic sections of the patent law is 35 USC 102. It describes some of the requierements for getting a patent, especially novelty. While the law is mostly short and doesn't offer a lot ...
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  • 5,827
3 votes
Accepted

Examiner ignores inventor's arguments against his owns

First, call the supervisor (SPE). His/her name and number should be listed at the end of each office action. Most likely the SPE will set up an interview with you, the examiner and the SPE. During ...
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  • 511
3 votes
Accepted

Why novelty of the idea is required when non-obviousness apparently already covers the requirement?

Novelty was long the key to patentability until cases kept coming up that were novel but considered not a substantial leap forward. Courts said it isn't really new if it could have been thought of by ...
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  • 25.6k
2 votes

If I produce a open source algorithm, can a company register a patent with my idea and sued me?

You may also find that filing the algorithm with the copyright office is useful because it makes the content a matter of public record. Copyright isn't going to protect a procedural mechanism because ...
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  • 913
2 votes
Accepted

Question about the Non-obviousness Requirement of 35 U.S.C

Obviousness is a tricky concept with respect to patentability. In my experience it is a common reason for rejection. The threshold I see generally applied is would someone with "ordinary skill in the ...
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  • 9,712
2 votes
Accepted

Is claiming priority with a different inventor essentially madness?

Consider the following scenario: Prov1 - Filed on 1 July 2016 NP1 - Filed on 1 June 2017, claiming priority to Prov1 NP2 - Filed on 1 July 2017, claiming priority to Prov1 Once NP1 is published, it is ...
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  • 7,043
2 votes

How is obviousness assessed?

It is not a clear science but fortunately an examiner can't just say "seems obvious to me" In the U.S., first the examiner must find a base reference with an embodiment that has some of the ...
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  • 25.6k
2 votes

How is obviousness assessed?

In Europe the problem-and-solution approach is used most of the times because it is said to be an objective assessment of inventive step/non-obviousness. Below I reproduce some points about it. The ...
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2 votes

Patentability of a specific method of web content filtering

Like any patent, one has to study the claims to know what is protected by the patent. In the case of the linked Israeli patent, I can't read the patent so there is no way to comment on the claims. ...
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  • 9,712
2 votes

Claimed Invention "As a Whole"

As DonQuiKong said - “as a whole” means the whole claim needs to be considered rather than looking at it piecemeal or neglecting an element. A claim to something with an A a B and a C can’t be ...
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  • 25.6k
1 vote

Why novelty of the idea is required when non-obviousness apparently already covers the requirement?

I do not see anything wrong with your understanding, but I would describe novelty and inventiveness in a way, that it can be acted upon, for example in an examination. Novelty: A subject-matter of an ...
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  • 305
1 vote

Claimed Invention "As a Whole"

There are some strong hints here: http://www.foundpersuasive.com/inherency.aspx# Example traversal: Amended Claim 1 of the instant invention teaches (inter alia) sneakers having a light sensor, a ...
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1 vote

Can an improvised device made of used packaging be patented?

To obtain a patent, an invention needs to be useful, novel and non-obvious to a person skilled in the technical area. To me, your description doesn't meet the non-obviousness requirement since you are ...
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  • 9,712
1 vote

Is amending an independent claim in an amendment fully responsive to dependent claim rejections?

Yes, claim 2 is dependent on claim 1 meaning it contains all limitations of claim 1 and was therefore also amended by W.
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  • 5,827
1 vote

Patentability of a specific method of web content filtering

This answer is purely about inventive step in general: Let's take claim 1 from the question as an example: (please note: I didn't read the specification so this is purely based on the wording of the ...
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  • 5,827
1 vote

Does a patent on an invention which does not work (but granted as if it does) count as invalidating prior art?

Using a better example. Postulate that Alice's invention would never work because it assumes something that is untrue. It is a device that moves you directly from any arbitrary stage of sleep to ...
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  • 25.6k
1 vote

Does a patent on an invention which does not work (but granted as if it does) count as invalidating prior art?

I think your example is contrived. The way you explain it, Alice's invention actually would function given a working power source. No one, in my experience would patent such a device with claims ...
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  • 9,712
1 vote

Patents need to be non-obvious, but this patent is clearly obvious

Design patents are definitely subject to obviousness. A glass beverage bottle with an indented right-hand spiral would presumably be obvious in light of a similar bottle with a left-hand spiral. Many ...
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  • 25.6k
1 vote
Accepted

Basic eCommerce system re-patented?

To infringe on a claim you have to implement each and every aspect of that claim. Long and complicated claims are generally easier to circumvent. Looking at the claim you quoted, the following section ...
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  • 9,712
1 vote

Does same owner's prior application count as of filing or publication date?

For the case of post-AIA US (i.e. applications filed on/after Mar 16, 2013), same inventor's prior application is not prior art until 1 year after publication date. Pre-AIA, not sure? In other ...
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  • 1,186
1 vote

Is it possible to write software that doesn't infringe on patents?

Thats not a patent, that's a patent application. Which means, it doesn't protect anything yet and might never. See this question for more information. Furthermore, the abstract and description of a ...
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  • 5,827
1 vote

What is the difference between 'Dillon 892 F.2d 1554, (Fed. Cir. 1989)' & 'Dillon, 919 F.2d 688 (Fed. Cir 1990)'

The excerpt you quote is from a dissent in the 1990 case, not the majority opinion.
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1 vote

Can it be a patent?

If content is novel which is evident from your extensive search then you should file a PCT application with china or other india as searching authority (less fee option), based on PCT search report ...
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