Comments on: Q) 102 and 103 Rejections http://mypatentbar.com/2008/08/01/387/ Patent Bar Review and Study Guide Sat, 04 Feb 2012 15:35:39 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: E http://mypatentbar.com/2008/08/01/387/#comment-22503 E Thu, 17 Nov 2011 16:28:38 +0000 http://patentbar.wordpress.com/?p=387#comment-22503 MPEP 2112 MPEP 2112

]]> By: maggie http://mypatentbar.com/2008/08/01/387/#comment-22339 maggie Tue, 15 Nov 2011 22:36:18 +0000 http://patentbar.wordpress.com/?p=387#comment-22339 When appropriate to apply a 35 U.S.C. 102/103 rejection? (1) 112 6p equlivence claims (In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant's disclosure) (2) Product by process claims (silent to an inherent aspect) When appropriate to apply a 35 U.S.C. 102/103 rejection?
(1) 112 6p equlivence claims (In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure)
(2) Product by process claims (silent to an inherent aspect)

]]> By: maggie http://mypatentbar.com/2008/08/01/387/#comment-18360 maggie Mon, 24 Oct 2011 00:16:48 +0000 http://patentbar.wordpress.com/?p=387#comment-18360 III.A REJECTION UNDER 35 U.S.C. 102/103 CAN BE MADE WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC III.A REJECTION UNDER 35 U.S.C. 102/103 CAN BE MADE WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC

]]> By: maggie http://mypatentbar.com/2008/08/01/387/#comment-18359 maggie Mon, 24 Oct 2011 00:11:43 +0000 http://patentbar.wordpress.com/?p=387#comment-18359 This is when he/she should make 102/103 rejections 2183 IF NONEQUIVALENCE SHOWN, EXAMINER MUST CONSIDER OBVIOUSNESS However, even where the applicant has met that burden of proof and has shown that the prior art element is not equivalent to the structure, material or acts described in the applicant's specification, the examiner must still make a 35 U.S.C. 103 analysis to determine if the claimed means or step plus function is obvious from the prior art to one of ordinary skill in the art. Thus, while a finding of nonequivalence prevents a prior art element from anticipating a means or step plus function limitation in a claim, it does not prevent the prior art element from rendering the claim limitation obvious to one of ordinary skill in the art. Because the exact scope of an "equivalent" may be uncertain, it would be appropriate to apply a 35 U.S.C. 102/103 rejection where the balance of the claim limitations are anticipated by the prior art relied on. A similar approach is authorized in the case of product-by-process claims because the exact identity of the claimed product or the prior art product cannot be determined by the examiner. This is when he/she should make 102/103 rejections

2183 IF NONEQUIVALENCE SHOWN, EXAMINER MUST CONSIDER OBVIOUSNESS
However, even where the applicant has met that burden of proof and has shown that the prior art element is not equivalent to the structure, material or acts described in the applicant’s specification, the examiner must still make a 35 U.S.C. 103 analysis to determine if the claimed means or step plus function is obvious from the prior art to one of ordinary skill in the art. Thus, while a finding of nonequivalence prevents a prior art element from anticipating a means or step plus function limitation in a claim, it does not prevent the prior art element from rendering the claim limitation obvious to one of ordinary skill in the art. Because the exact scope of an “equivalent” may be uncertain, it would be appropriate to apply a 35 U.S.C. 102/103 rejection where the balance of the claim limitations are anticipated by the prior art relied on.

A similar approach is authorized in the case of product-by-process claims because the exact identity of the claimed product or the prior art product cannot be determined by the examiner.

]]> By: maggie http://mypatentbar.com/2008/08/01/387/#comment-18181 maggie Fri, 21 Oct 2011 17:33:22 +0000 http://patentbar.wordpress.com/?p=387#comment-18181 DISTINCTION BETWEEN 35 U.S.C. 102 AND 103 The distinction between rejections based on 35 U.S.C. 102 and those based on 35 U.S.C. 103 should be kept in mind. Under the former, the claim is anticipated by the reference. No question of obviousness is present. In other words, for anticipation under 35 U.S.C. 102, the reference must teach every aspect of the claimed invention either explicitly or impliedly. Any feature not directly taught must be inherently present. Whereas, in a rejection based on 35 U.S.C. 103, the reference teachings must somehow be modified in order to meet the claims. The modification must be one which would have been obvious to one of ordinary skill in the art at the time the invention was made. See MPEP § 2131 - § 2146 for guidance on patentability determinations under 35 U.S.C. 102 and 103. DISTINCTION BETWEEN 35 U.S.C. 102 AND 103

The distinction between rejections based on 35 U.S.C. 102 and those based on 35 U.S.C. 103 should be kept in mind. Under the former, the claim is anticipated by the reference. No question of obviousness is present. In other words, for anticipation under 35 U.S.C. 102, the reference must teach every aspect of the claimed invention either explicitly or impliedly. Any feature not directly taught must be inherently present. Whereas, in a rejection based on 35 U.S.C. 103, the reference teachings must somehow be modified in order to meet the claims. The modification must be one which would have been obvious to one of ordinary skill in the art at the time the invention was made. See MPEP § 2131 – § 2146 for guidance on patentability determinations under 35 U.S.C. 102 and 103.

]]> By: maggie http://mypatentbar.com/2008/08/01/387/#comment-18180 maggie Fri, 21 Oct 2011 17:30:51 +0000 http://patentbar.wordpress.com/?p=387#comment-18180 In chapter 2100 is says something to the effect that although the range is not anticipated (because not identical, overlapping ect) if it out of the range, the range is but likely to work the same (there is an example ~0.5 out side), then examiner should reject on 103 as obvious. In chapter 2100 is says something to the effect that although the range is not anticipated (because not identical, overlapping ect) if it out of the range, the range is but likely to work the same (there is an example ~0.5 out side), then examiner should reject on 103 as obvious.

]]> By: maggie http://mypatentbar.com/2008/08/01/387/#comment-18179 maggie Fri, 21 Oct 2011 17:26:50 +0000 http://patentbar.wordpress.com/?p=387#comment-18179 I think this is covered in chapter 2100 under 103 I think this is covered in chapter 2100 under 103

]]> By: giaps2 http://mypatentbar.com/2008/08/01/387/#comment-13692 giaps2 Wed, 27 Jul 2011 00:13:47 +0000 http://patentbar.wordpress.com/?p=387#comment-13692 Saw this question or a variant on 07/25/11. Saw this question or a variant on 07/25/11.

]]> By: Freds http://mypatentbar.com/2008/08/01/387/#comment-11806 Freds Thu, 02 Jun 2011 07:51:21 +0000 http://patentbar.wordpress.com/?p=387#comment-11806 The difference between 102 and 103 PA references is that 102 PA must meet the so called 4 corner rule that is the reference has to contain all elements of the invention in question. By contrast, under 103, examiner can combine PA references, so no need to meet the 4 corner rule. 103 is much higher bar than 102 in that sense. I guess 102/103 reject would be cumulative if the PA is an on point (describing the exact invention) anticipation of the invention in question, then there is no need for 103. The difference between 102 and 103 PA references is that 102 PA must meet the so called 4 corner rule that is the reference has to contain all elements of the invention in question. By contrast, under 103, examiner can combine PA references, so no need to meet the 4 corner rule. 103 is much higher bar than 102 in that sense. I guess 102/103 reject would be cumulative if the PA is an on point (describing the exact invention) anticipation of the invention in question, then there is no need for 103.

]]> By: Rodney http://mypatentbar.com/2008/08/01/387/#comment-6624 Rodney Thu, 20 Jan 2011 15:21:42 +0000 http://patentbar.wordpress.com/?p=387#comment-6624 Sorry.. I forgot to include Question number correction: think Boating Bob’s question is a repeat. Look at April 15, 2003 AM exam Q44. The rejection could not be a 102 since the reference did not anticipate the claim (have all the same elements) Sorry.. I forgot to include Question number

correction:
think Boating Bob’s question is a repeat. Look at April 15, 2003 AM exam Q44. The rejection could not be a 102 since the reference did not anticipate the claim (have all the same elements)

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