Patent It Yourself - PDF Archive

ChaPter 13 | GETTING the Pto to DELIVER | 359
References
Features of My Invention
Pivot arm
Bracket at end
of arm
A X X
Bracket has
screw tightener
B X X
Fig. 13B—Comparison Chart
Be sure to break up your invention so that all possible
features of it, even those not already claimed, are covered
and listed across the top of the chart. Remember that a
feature can be the combination of two known separate
features or a new use of an old device. Then indicate, by
checking the appropriate boxes, those features of your
invention that are not shown by each reference. This chart,
if done correctly and completely, will be of tremendous aid
in drafting your response to the first OA.
5. Follow the Flowchart
Fig. 13C provides a comprehensive, self-explanatory flowchart
for dealing with all prior-art (Sections 102 and 103) rejections.
Fig. 13D provides a list of all possible arguments I’ve found
against obviousness rejections. For each claim (or set of claims)
rejected, follow the chart and list carefully.
6. Compare Your Broadest Claim With
the Cited References for Novelty
If the examiner applies any prior-art references under
Section 102, you’ll need to deal with the novelty question.
However, if the reference is said to apply under Section 103
(obviousness), the examiner is tacitly admitting that you’ve
made it past Section 102—that is, your claimed structure
is novel. Therefore, you won’t have to go through the full
analysis in this section. Instead, review the section briefly,
and then concentrate on Section 7.
First, reread your broadest claim to see which features it
recites. Remember, only positively recited physical structure
or acts count. Then consider whether these physical features
distinguish your invention from each reference cited against
this claim. Don’t pay any attention to the advantages of your
invention, your statements of function, or your “where by”
clauses. Only focus on the novel physical features, including
those that are in the form of a means clause followed by a
function.
EXAMPLE: “A lever having a threaded end with a
counterbalance thereon” is a proper physical recitation
that can distinguish your invention from the prior art.
The phrase “means for counterbalancing” is a means
clause followed by a function and is equivalent to a
physical recitation. But “said lever counterbalancing
said arm” is a mere statement of result or function and
can’t be used to distinguish the prior art.
If only one reference has been cited against your broadest
claim, consider whether your claim distinguishes over this
reference under Section 102 (that is—whether your claimed
structure is novel; see Chapter 5, Section E). In other words,
are there any features recited in the claim that are not
shown in the reference being cited against it? If not, the
claim is “fully met” or anticipated by this reference and will
have to be narrowed or canceled.
Remember that the examiner is entitled to interpret any
claim in any reasonable way against you. That is, if your claims,
or any word in one of your claims, has two reasonable
inter pretations, the examiner is entitled to take the one
least favorable to you when determining if your claim has
novel physical structure under Section 102. For example,
suppose your invention uses a clamp that is halfway between
two ends of a rod and a reference shows a clamp near
one end of a rod. If your claim recites that the clamp is
“intermediate” the ends of the rod, this won’t distinguish
over the reference since “intermediate” means “between”
as well as “in the middle.” The remedy? Recite that your
claim is “substantially in the middle” of the rod in order to
distinguish over the reference under Section 102 (but not
necessarily under Section 103).
Suppose the physical features of your claim are all
shown in a prior-art reference, but the features are used for
a different purpose than yours. For example, you claim “a
depression in a wall plate for holding a clock” and the prior
art shows a large oil drip pan under a milling machine;
this pan literally constitutes “a plate with a depression.”
Thus your claim literally “reads on” the prior art, but your
claimed elements are directed to a different purpose than
the elements of the prior-art reference. Unfortunately,
the rejection is valid: You’ll have to narrow the claim, or
consider claiming your structure as a “new use” invention.
Sometimes, even though a claim recites a limitation that
is novel, the examiner will overlook the limitation. In order
to force the examiner to consider the limitation, it will
help to rewrite the limitation in a stronger, separate, more
prominent clause in its own paragraph—that is, change “a
series of beads” to two paragraphs reading “a plurality of
beads, said plurality of beads being connected in series to
form a chain of said plurality of beads.”