Indianapolis, IN asked in Patents (Intellectual Property) for Indiana

Q: US 2017/0225533 claim 1 is rejected under 102(a) referencing US 2017/0016507 how can this be amended or not anticipated

claims 1-5 and 8 of US 2017/0225533 A1 is rejected under 102(a) referencing US 2017/0016507 A1 how can this be amended or proven not anticipated by US 2017/0016507 A1?

3 Lawyer Answers
Peter D. Mlynek
Peter D. Mlynek
Answered
  • Patents Lawyer
  • Moorestown, NJ

A: The questions posted on this website are of general nature. The answers to these general questions may be useful to others to understand the law being discussed. What you are asking is a very specific question that is best left to the attorney prosecuting this case.

Kevin E. Flynn
PREMIUM
Kevin E. Flynn
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: Section 102 goes to whether your claim is novel when compared to the prior art. Section 102 rejections can be divided into two categories.

Category 1 -- your invention is not new and the thing you invented was already in the prior art with respect to all of the features in your broadest claims. This type of problem is not really fixable.

Category 2 -- The examiner used PTO policy to apply the broadest reasonable interpretation to the wording of the claims and when interpreted in a really expansive manner, your claims read on some things in the prior art that are different from what you invented. Frequently the examiner is reading the claims in a way that you did not intend. This latter category can often be resolved by tweaking the language of the claim to be more specific or by pointing to things in the application which already make the claim more narrow than the way the examiner is interpreting the claim.

The patent attorney that you are working with can help you but this general overview of Section 102 may be useful.

I hope this helps.

Kevin E Flynn

Kevin E. Flynn
PREMIUM
Kevin E. Flynn
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: Sorry -- the text "Section 102 goes to" should be "Section 102 rejection goes to"

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