Amendment of claim to overcome rejection

[w***@aol.com]

I am working on responding to a rejection of a claim.

If my claim is A + B and the cited prior art is A + B + C, do I need
to amend my claim so it is A + B + not(C), or is an explanation that
my claim does not have the limitation C found in the cited art
adequate. It seems to me that A + B alone automatically implies not
(C).

Am I wrong?

Thank you in advance ...

[Tim Jackson]

Post by w***@aol.com
I am working on responding to a rejection of a claim.
If my claim is A + B and the cited prior art is A + B + C, do I need
to amend my claim so it is A + B + not(C), or is an explanation that
my claim does not have the limitation C found in the cited art
adequate. It seems to me that A + B alone automatically implies not
(C).

You need to explicitly claim that you don't have C. Otherwise the prior
art shows what you claim, namely A + B. Even if it also shows C. (It
probably also shows X, Y, Z, P, Q and R, but that doesn't alter the fact
that it shows A + B.)

And you ought to be prepared with an argument for when the Examiner
comes back saying that it would be obvious to leave out C. If you can't
come up with anything, you may have to claim A + B + D, where D is an
alternative feature that makes it possible to leave out C.

[w***@aol.com]

Post by w***@aol.com
If my claim is A + B and the cited prior art is A + B + C, do I need

You need to explicitly claim that you don't have C.  Otherwise the prior
art shows what you claim, namely A + B.  Even if it also shows C.  (It
probably also shows X, Y, Z, P, Q and R, but that doesn't alter the fact
that it shows A + B.)

That's an interesting aspect or way of doing it. Obviousness aside,
my understanding is that your claim reads on prior art only if it has
at least the same number of elements contained in the prior art. So,
my claim A + B reads on prior art only if the prior art is A + B but
not if A + B + C.

[Tim Jackson]

Post by w***@aol.com
That's an interesting aspect or way of doing it. Obviousness aside,
my understanding is that your claim reads on prior art only if it has
at least the same number of elements contained in the prior art. So,
my claim A + B reads on prior art only if the prior art is A + B but
not if A + B + C.

It's the other way round. Your claim A + B reads on the prior art only
if the *prior art* has at least the same number of elements, and if
those elements in the prior art include A + B. Can you find A in the
prior art? Yes. Can you find B in the prior art? Yes. Are they in
the claimed combination A + B? Yes. Therefore A + B reads onto the
prior art.

But if your claim says A + B + C, and the prior art only has A + B, then
you have to ask the additional question: can you read C onto the prior
art? Answer: no. Therefore a claim to A + B + C does not read on.


Think of it this way:

Nearly all cats have got three legs.

The vast majority have a fourth leg as well. Only a few will have lost
a leg in a road accident or whatever. Even fewer will have lost two or
more legs. But nearly all have (at least) three legs.

Your point of view is that if you specify a three-legged cat, you mean
one with *only* three legs, not "at least" three. And for three-legged
cats, that's fair enough.

By analogy, you are hoping that in your claim, by specifying A + B, it
will be taken to mean *only* A + B, and nothing more. But unless you
say "consisting only of A + B", that's not the way it will be read by a
court. If you say "comprising A + B", that's usually taken to be open-
ended, meaning "at least A + B".

Were it otherwise, it would be very easy for an infringer to get round
your claim. All they would have to do is to add an irrelevant
extraneous feature to your A + B. If your claim to A + B didn't cover A
+ B + C, then neither would it cover A + B + X, where X is an irrelevant
extraneous feature.

For example, suppose the prior art is a table having a top, legs, and
cross-braces between the legs. Your invention is that you have
discovered that cross-braces are unnecessary. So you claim just a table
comprising a top and legs. If that excludes the prior art with cross-
braces, then does it also exclude a table with a top, legs and a drawer?
If yes, then it is very easy to get round your patent - just add a
drawer. If no, why does your claim exclude one type of extra feature
but not another?

[w***@aol.com]

It's the other way round.  Your claim A + B reads on the prior art only
if the *prior art* has at least the same number of elements, and if
those elements in the prior art include A + B.  Can you find A in the
prior art?  Yes.  Can you find B in the prior art?  Yes.  Are they in
the claimed combination A + B?  Yes.  Therefore A + B reads onto the
prior art.

That makes sense. Thank you very much.

[Steve Marcus]

Post by w***@aol.com
I am working on responding to a rejection of a claim.
If my claim is A + B and the cited prior art is A + B + C, do I need
to amend my claim so it is A + B + not(C), or is an explanation that
my claim does not have the limitation C found in the cited art
adequate. It seems to me that A + B alone automatically implies not
(C).
Am I wrong?
Thank you in advance ...

If your claim was for an invention "comprising" A+B, then the claim is
open-ended, and would, (if issued in a patent), be infringed by any that
includes A+B+anything else.

If you wish to limit your claim to only A+B to avoid the prior art of A+B+C,
you can write a so-called "closed claim." That takes the form of an
invention "consisting of" A+B. Such a claim would not be anticipated by a
prior art reference that teaches A+B+C, although it could well be rendered
obvious over such a reference, where the reference was modified to exclude C
and its function, either as a matter of routine skill in the art, or as
taught by an analogous reference the the A+Breference that itself taught or
suggested eliminating (or simply not using) C.

There is also a claim that can be written as "consisting essentially of" A+B
that limits the claim to A+B and things that do not effect the basic and
novel characteristics of the claimed invention.

You should go here:
http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r6_2100.pdf and then go
to page 2100-43 to read more about it.

Finally, there is a good chance that you write a claim including a so-called
negative limitation, such as an invention comprising A+B, but not including
C. At the link given above, go to page 2100-228 for the section on negative
limitations.

Again, there may not be an issue of anticipation for such a claim, but
nonobviousness may be another matter.

Steve

[w***@aol.com]

You should go here:http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r6_2100.pdf  and then go
to page 2100-43 to read more about it.

Very informative. Thank you very much.