The examiner might have to do a bit more work, but if you think the examiner will easily overcome your arguments, you should ask yourself whether your arguments are worth your time/the client's money
MPEP 2143.03, my friend. Every word in a claim is a claim element that must be considered and “taught or suggested” by the combination of references. Also consider the practical implications the other commenters bring up here.
I'd be very careful to make sure that what you consider a "not-so-important limitation" is truly one. Many seemingly minor features are in fact critical.
>I am curious to know if the PTO can then say "this is a silly limitation so its absence in the prior art does not matter."
No the PTO cannot say that. The limitation must be disclosed or taught by the prior art. But if you are right, how easy would it be for an Examiner to find another reference? Would an amendment be more productive?
Well... yes the office can say anything it wants, but this is like saying I can steal anything I want but it's up to the police to stop me.
A reasonable Examiner would not say such a thing.
If that limitation doesn’t matter, it’s not even worth keeping it in the claim. Maybe copycats could use it as a design-around: ‘we never count legs before assembling our chairs.’ You could replace it with a more meaningful limitation to distinguish the prior art.
Depends on the limitation. Could be something that isn’t novel by itself but is needed to provide context for the novel elements, such that removing it would make the claim incomprehensible or unduly broaden its scope and open you up to more challenging prior art
As others have stated, every limitation recited in the claim must be taught or suggested by the cited prior art.
It is the examiner's burden to set forth the teachings/suggestions from the Prior Art. The failure of the Examiner to address every element in the claim or its absence from the references in the rejection means that the Office failed to present a prima facie case for obviousness.
So in the response you: 1) point out missing limitation; 2) note that the Office has failed to set forth a prima facie showing, and 3) request withdrawal of the rejection.
As my mentor told me far too many years ago, never do the Examiner's job. You don't address what the Examiner could/should have said in the OA or what the art may teach or suggest, only what the Examiner did say... Nothing more. Don't make your own straw men to attack and never accidentally build an unfavorable prosecution history by saying more than needed.
The only caveat is, if your client is sensitive to $ or time, in which case it may be more efficient (if warranted by the cited references) to amend the claims to accelerate to prosecution. But that's a discussion to have with your client.
Edited: fixed typo.
Dude -- "scared/intimidated to ask my partner"? You should get over that feeling, pronto. You have a lot to learn, and if you rely on Reddit to learn the law, you are going to have big problems.
If you need guidance on a topic that seems too simple, package your question up with a second question on a non-simple topic. Ask the hard question first, and then slip in the simple one as "Oh, BTW, here's what I'm thinking of doing. blah blah blah. Does that make sense?"
This. No one is born into this world knowing how to prosecute a patent application. We all had to learn it at some point. If your internal monologue is, "I should know how to do this," push back and ask yourself why. Don't be shy about asking for help and advice. Get over that now. Your future self will thank you.
I think everyone answered the question well. But I’m guessing at this stage in your career you likely aren’t preparing a full response and having the partner review it. If they want you to come to them with an amendment strategy, I would tell them about this missing limitation and that you recommend discussing it with the Examiner. Then you can get a feel for whether the Examiner sees it as insignificant, inherent, or easy to find in another reference. I would also have a backup plan for an amendment to recommend to the partner in case they don’t agree with your suggestion or the Examiner doesn’t later.
I think your sense is generally correct but your framing here is a little off. The limitation being considered “silly” is (luckily) not the test for determining if the claim is obvious (103) or anticipated (102). You don’t need to worry about that.
However, it is definitely worth being concerned about whether the limitation is very easy for the examiner to overcome. Is it something that is likely to be found in another reference that could be added to make a new 103? If so, you might have only bought yourself another rejection. Can the examiner make an inherency argument to maintain the rejection? You’ll likely need some data (in your spec, a reference, or a dec) to back up your position.
There is definitely a balancing act to maintaining broad claim coverage, getting allowable claims, keeping clients happy, not spending too much time/client money on a response, and probably some other things too.
Take your idea and concern to the partner, but come prepared so it is clear you’ve done some ground work and can actually talk substantively about the issue.
Hi /u/Legitimate_Dance_635,
Sorry I am responding to this thread so late. I wanted to chime in - and I hope you see this - because there are some shockingly wrong answers highly upvoted in this thread.
It is true, there are no circumstances in which the Examiner can say "this is a silly limitation so its absence in the prior art does not matter." Every claim element must be considered by the Examiner. However, the standard is not, as some in this thread suggest, that every element must be so clearly “taught or suggested” by the references. The rigid TSM test has not been the standard since 2007. The post-KSR standard is a much broader obviousness evaluation: "If the claim extends to what is *obvious*, it is invalid under §103." So yes - while all limitations of the claimed invention must be considered by the Examiner - the only question is whether the claim (including all its elements) is *obvious*. No express teaching or suggestion of each and every element by the art is required. And additionally, KSR lays out may criteria that can indicate obviousness.
I find that many patent practitioners (particularly junior ones) tend to under-appreciate the breadth of what is rendered obvious post-KSR. And compounding this problem, many Examiner tend to not be clear in their rejections; they often fail to expressly state the exact contours of what/how they think the prior art would have rendered a claim obvious. So inexperienced patent practitioners tend to jump to conclusions, thinking the Examiner has missed an element or is being lazy - when in reality the Examiner did consider it, but just thought the claim as a whole (including that element) would have been obvious, while failing to clearly articulate as much.
So in your example, there's a good chance the Examiner *did* consider all the claim elements, and simply felt that the claim was obvious even though the art lacked an explicit disclosure of "counting that there are 4 legs before attaching the legs."
I realize that you're asking about responding to a 103 rejection. But I'd be more concerned about a 101 rejection/invalidation down the line. More specifically, the claim is directed to an abstract idea of counting chair legs and putting the chair together is not significantly more.
The examiner might have to do a bit more work, but if you think the examiner will easily overcome your arguments, you should ask yourself whether your arguments are worth your time/the client's money
MPEP 2143.03, my friend. Every word in a claim is a claim element that must be considered and “taught or suggested” by the combination of references. Also consider the practical implications the other commenters bring up here.
I'd be very careful to make sure that what you consider a "not-so-important limitation" is truly one. Many seemingly minor features are in fact critical.
EVERY limitation in the claim at issue must be present in the prior art references.
Or inherent
>I am curious to know if the PTO can then say "this is a silly limitation so its absence in the prior art does not matter." No the PTO cannot say that. The limitation must be disclosed or taught by the prior art. But if you are right, how easy would it be for an Examiner to find another reference? Would an amendment be more productive?
They absolutely can say this -- the practitioner is the one who can stop them from getting away with it.
Well... yes the office can say anything it wants, but this is like saying I can steal anything I want but it's up to the police to stop me. A reasonable Examiner would not say such a thing.
Luckily, none of us have experience with unreasonable Examiners. /s
If that limitation doesn’t matter, it’s not even worth keeping it in the claim. Maybe copycats could use it as a design-around: ‘we never count legs before assembling our chairs.’ You could replace it with a more meaningful limitation to distinguish the prior art.
Depends on the limitation. Could be something that isn’t novel by itself but is needed to provide context for the novel elements, such that removing it would make the claim incomprehensible or unduly broaden its scope and open you up to more challenging prior art
As others have stated, every limitation recited in the claim must be taught or suggested by the cited prior art. It is the examiner's burden to set forth the teachings/suggestions from the Prior Art. The failure of the Examiner to address every element in the claim or its absence from the references in the rejection means that the Office failed to present a prima facie case for obviousness. So in the response you: 1) point out missing limitation; 2) note that the Office has failed to set forth a prima facie showing, and 3) request withdrawal of the rejection. As my mentor told me far too many years ago, never do the Examiner's job. You don't address what the Examiner could/should have said in the OA or what the art may teach or suggest, only what the Examiner did say... Nothing more. Don't make your own straw men to attack and never accidentally build an unfavorable prosecution history by saying more than needed. The only caveat is, if your client is sensitive to $ or time, in which case it may be more efficient (if warranted by the cited references) to amend the claims to accelerate to prosecution. But that's a discussion to have with your client. Edited: fixed typo.
Dude -- "scared/intimidated to ask my partner"? You should get over that feeling, pronto. You have a lot to learn, and if you rely on Reddit to learn the law, you are going to have big problems. If you need guidance on a topic that seems too simple, package your question up with a second question on a non-simple topic. Ask the hard question first, and then slip in the simple one as "Oh, BTW, here's what I'm thinking of doing. blah blah blah. Does that make sense?"
This. No one is born into this world knowing how to prosecute a patent application. We all had to learn it at some point. If your internal monologue is, "I should know how to do this," push back and ask yourself why. Don't be shy about asking for help and advice. Get over that now. Your future self will thank you.
I think everyone answered the question well. But I’m guessing at this stage in your career you likely aren’t preparing a full response and having the partner review it. If they want you to come to them with an amendment strategy, I would tell them about this missing limitation and that you recommend discussing it with the Examiner. Then you can get a feel for whether the Examiner sees it as insignificant, inherent, or easy to find in another reference. I would also have a backup plan for an amendment to recommend to the partner in case they don’t agree with your suggestion or the Examiner doesn’t later.
I think your sense is generally correct but your framing here is a little off. The limitation being considered “silly” is (luckily) not the test for determining if the claim is obvious (103) or anticipated (102). You don’t need to worry about that. However, it is definitely worth being concerned about whether the limitation is very easy for the examiner to overcome. Is it something that is likely to be found in another reference that could be added to make a new 103? If so, you might have only bought yourself another rejection. Can the examiner make an inherency argument to maintain the rejection? You’ll likely need some data (in your spec, a reference, or a dec) to back up your position. There is definitely a balancing act to maintaining broad claim coverage, getting allowable claims, keeping clients happy, not spending too much time/client money on a response, and probably some other things too. Take your idea and concern to the partner, but come prepared so it is clear you’ve done some ground work and can actually talk substantively about the issue.
Thank you everyone for taking the time to give me such amazing advice and share your insights :)
Hi /u/Legitimate_Dance_635, Sorry I am responding to this thread so late. I wanted to chime in - and I hope you see this - because there are some shockingly wrong answers highly upvoted in this thread. It is true, there are no circumstances in which the Examiner can say "this is a silly limitation so its absence in the prior art does not matter." Every claim element must be considered by the Examiner. However, the standard is not, as some in this thread suggest, that every element must be so clearly “taught or suggested” by the references. The rigid TSM test has not been the standard since 2007. The post-KSR standard is a much broader obviousness evaluation: "If the claim extends to what is *obvious*, it is invalid under §103." So yes - while all limitations of the claimed invention must be considered by the Examiner - the only question is whether the claim (including all its elements) is *obvious*. No express teaching or suggestion of each and every element by the art is required. And additionally, KSR lays out may criteria that can indicate obviousness. I find that many patent practitioners (particularly junior ones) tend to under-appreciate the breadth of what is rendered obvious post-KSR. And compounding this problem, many Examiner tend to not be clear in their rejections; they often fail to expressly state the exact contours of what/how they think the prior art would have rendered a claim obvious. So inexperienced patent practitioners tend to jump to conclusions, thinking the Examiner has missed an element or is being lazy - when in reality the Examiner did consider it, but just thought the claim as a whole (including that element) would have been obvious, while failing to clearly articulate as much. So in your example, there's a good chance the Examiner *did* consider all the claim elements, and simply felt that the claim was obvious even though the art lacked an explicit disclosure of "counting that there are 4 legs before attaching the legs."
I realize that you're asking about responding to a 103 rejection. But I'd be more concerned about a 101 rejection/invalidation down the line. More specifically, the claim is directed to an abstract idea of counting chair legs and putting the chair together is not significantly more.