4 votes
Accepted

What is the line between obvious and novel?

Novelty just means a method is new/original, and has not been disclosed (with certain caveats, dependent on region.) Novelty is distinct from obviousness. Novelty is defined in the US as follows: ...
DukeZhou's user avatar
  • 761
3 votes

Can I reclaim the broken line features in Design application drawings during prosecution?

MPEP 1504.04 discusses converting originally disclosed broken lines to solid lines: "an amendment that changes the scope of a design by either converting originally-disclosed solid line structure ...
Gabriel Hendricks's user avatar
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 ...
Riccati's user avatar
  • 469
2 votes

Why is it unwise to communicate the aspect of the invention that makes it non-obvious?

Essentially by saying "feature X is the non-obvious bit", you're saying everything else is obvious. You can't later go back on that. This means you've made the job a lot easier for the examiner (or ...
Maca's user avatar
  • 6,178
2 votes

What is the line between obvious and novel?

DonQuiKong's answer is a good one and should be accepted. As an inventor, I thought I might share a few other insights. Obviousness really is vague and subjective. It is thrown out by examiners almost ...
Eric S's user avatar
  • 11.1k
2 votes

Where in your patent application can you make an argument that you're invention is non-obvious?

The last paragraph of the Background section should broadly describe the challenges found in the prior art that are addressed by the inventor. The first few paragraphs of the Detailed Description ...
EA Kretzmer's user avatar
2 votes

Where in your patent application can you make an argument that you're invention is non-obvious?

The time to argue non-obviousness is after you get an obviousness rejection. The rejection will cite specific prior art and provide logic as to why they should be combined. You need to attack the ...
George White's user avatar
  • 28.9k
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. ...
Eric S's user avatar
  • 11.1k
2 votes

Why did Molly Metz's attorney cite this statistic to prove non obviousness?

It is called ‚Äúsecondary considerations‚ÄĚ. This is from an important SCOTUS case from the 1960s was called John Deer V Graham. It was about an innovation reading plows. In the decision was a quote from ...
George White's user avatar
  • 28.9k
2 votes
Accepted

What are the rules for measuring patents obviousness and generalization?

Overly broad claims can run afoul of novelty and obviousness issues. How broad a claim you can get allowed and enforced is entirely based of the uniqueness of the invention in relation to the prior ...
George White's user avatar
  • 28.9k
2 votes

Statutory, regulatory, or other bases for the "all elements test" in obviousness responses

I do not think the fear expressed in the 2008 blog post came to pass. I can speculate on the motivation for the change in the MPEP but I have not heard any subsequent outcry that 103 rejections that ...
George White's user avatar
  • 28.9k
2 votes

If A+B+C already exists, would it be argument for obviousness if someone attempts to patent A+B?

Image a 4-wheel car exists and what everyone knows is that to be stable a car needs 4 wheels in a rectangular arrangement. Someone invents a 3-wheel car be realizing stabilization can be achieved by ...
George White's user avatar
  • 28.9k
1 vote
Accepted

If A+B+C already exists, would it be argument for obviousness if someone attempts to patent A+B?

No, it would not be an argument for obviousness because it is an argument for (lack of) novelty. You can easily see that by drawing Venn diagrams. When the scope (area) of what you are trying to ...
the Europeist's user avatar
1 vote

Can an applicant cite the prosecution record of a patent reference?

The claims of an application might or might not be patentable. That, itself, has no bearing on the document's value as a reference. Poor claim drafting or overly broad claiming would lead to a ...
George White's user avatar
  • 28.9k
1 vote

New use and area of application for old invention

If I invent something that solves a problem in a new area (an improvement to something that was only invented ten years ago), by using a technique and mechanism disclosed in old invention (...
Eric S's user avatar
  • 11.1k
1 vote

Repeated rejections with new prior art

There is something called "compact prosecution" that encourages examiners to reject on all grounds in the first office action rather than come up with new references as the case proceeds. However, if ...
George White's user avatar
  • 28.9k
1 vote

Can I reclaim the broken line features in Design application drawings during prosecution?

I have seen many office actions on design patent applications that we have worked over years, In most cases examiner will not allow reclaiming a portion of the design by converting broken line to ...
Tara Reddy's user avatar
1 vote

How much "mere reversal of parts" can an Examiner validly claim constitutes a 103 rejection

Respond with a citation to Ex Parte Brunson (Appeal 2009-012413 in U.S. application serial no. 11/387,179), which stands for the proposition that a per se rule (in this case "reversal of the essential ...
Chris's user avatar
  • 360
1 vote

How much "mere reversal of parts" can an Examiner validly claim constitutes a 103 rejection

This may apply in your case. One strong argument against a 103 rejection is that the change required to a prior art item makes the prior art item no longer suitable for its original intended purpose. ...
George White's user avatar
  • 28.9k

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