5

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: [a] person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or ...


5

You might be able to - it depends on what it is being compared to in an obvious analysis. Obviousness isn't pondering "does it seem obvious to me" in general. With some simplification, a patent examiner has to find all of the aspects of your system (that appear in a claim) in one or more published documents. If they find one document/embodiment that has ...


3

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 should concisely explain how the inventor solved those challenges. The Background should explain the problem to be solved, and state that the prior methods were ...


3

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 to broken lines or converting originally-disclosed broken line structure to solid lines would not introduce new matter because such amendment would not ...


3

When reading a patent for innovation and non-obvious, you will need to read it with bias of the date it was filed -- that is you need to put your self in 2008 and look at whether the subject matter was innovative at that time. Things when successful are pretty quickly becoming accepted and "obvious", but that does not mean that they were obvious at the time ...


3

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 the interview you can try to argue your point, but if that is not immediately fruitful, let me suggest another approach: Try hard to understand precisely what ...


2

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 an opponent when you try to enforce) to craft their obviousness argument. That's no benefit to you. So why do it? In addition, you might get it wrong. Even if ...


2

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 by reflex now a days. My experience is the examiner does a prior art search, finds some related patents and then rejects pretty much everything based on ...


2

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 working parts" is obvious) cannot substitute for a fact-specific analysis. In Ex Parte Brunson, the Board reversed an Examiner's rejection of claims where the ...


2

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 argument presented by the examiner, not "obviousness" in general. The patent appliation describes the invention and how to make and use it. You can mention ...


2

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. As to patentability in general, a patent needs to be novel, non-obvious and useful. Novel means no one has publicly described the invention in the past. Non-...


1

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 art. In a sense the scale is binary - rejected or allowed.


1

Turned out quoting the file wrapper of the reference patent application didn't hurt. I can't say if it actually helped as the enablement argument was just a blip in an 18 page response. This is how it read-- In the Sabatini prosecution, the first Office Action contained the following assertion on page 12, third paragraph — ...the skilled artisan would be ...


1

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 rejection but not be any indication that the specification did not contain useful information. A journal article can be prior art - it has no claims. Prior art ...


1

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 (something that is 50 years old, in fact), and that no one else has thought of applying to the new area, is this patentable Finding new uses for existing ...


1

You can, extensively, if you want, mention any prior art in the introduction, say what drawbacks there are and how your product is better. Or you reply to the rejection when and if you get it.


1

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 some element mentioned in the specification is not initially in a claim then a reference that shows that element as old clearly does not belong in a rejection. ...


1

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 solid line.


1

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. If it breaks the fundamental principle of operation of the prior art it is hard to argue that the change is obvious.


1

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 claim, it might not concur with the correct interpretation of the actual patent claim which needs to be interpreted in light of the specification!) A method for ...


1

For prosecution not novel means all features of the claim are described in a single document. Obvious means the combination of a first document with a second document or otherwise documented knowledge the person skilled in the art has leads to the invention. There are some highly theoretical edge cases relevant in one of a million cases where something ...


1

I can't say whether or not the invention is novel or non-obvious, but from Public Pair it seems the point of differentiation over the prior art the Examiner found was in the actuator and in particular how the actuator was attached to the respective connector.


1

The grounds for an exparte reexamination are restricted to novelty and obvious challenges based on patents or published documents and on section 112 issues. Section 112 includes the requirement for proper support for claims in the specification, the claims not being indeterminate, and the specification being enabling. The allowed grounds do not include ...


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