[Patentpractice] Rejection under “102 or 103”

[Jeffrey Semprebon]

If no other art is cited, it would seem appropriate after pointing out what
claim elements are not disclosed to state that no art or argument is
provided suggesting modification to add such elements to the primary
reference, so no support for a 103 rejection. The examiner has the duty of
making the prima facia case for rejection, and here the examiner has
(presumably) failed to make the obviousness case for all the claim
elements. Not the Applicant's responsibility to guess what the examiner
might have been thinking if they didn't explain it in the action.

-Jeff

Jeffrey E. Semprebon
Semprebon Patent Services
www.semprebonps.com
72 Myrtle Street
Claremont, New Hampshire 03743




On Sat, Feb 10, 2024, 21:46 Stanley H. Kremen via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Colleagues:
>
> Examiner rejects claim as anticipated by single prior art reference in
> under 35 USC 102 or obvious over the same reference under 35 USC 103.
>
> The 102 rejection is understandable, and it can be overcome by showing
> that the single reference does not teach every element of the claim.
>
> However, how do we deal with the obviousness rejection? There is only a
> single reference. There is no explanation of the basis for 103. Is it the
> examiner relying on the Doctrine of Equivalence?
>
> Stan Kremen
>
> Sent from my iPhone
> --
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>
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>
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