[Patentpractice] Rejection under “102 or 103”

[Jeff Lindsay]

I like David’s recommendation on checking the constraints for use of form letters. For information on the 7.27 form letter, see the form letters section of MPEP: https://www.uspto.gov/web/offices/pac/mpep/mpep-9095-Form-Paragraph-Chapter.html.

Jeff Lindsay
jeff at jefflindsay.com
+1 920-257-7347





> On Feb 11, 2024, at 5:59 AM, David Boundy via Patentpractice <patentpractice at oppedahl-lists.com> wrote:
> 
> This isn't a well-framed question.  We have neither the written explanation nor access to the examiner's past neural state.   We can't answer what the examiner's mental state might have been months ago. We don't know whether the alternative § 103 covers the weak spot in the § 102 or whether the § 103 brings in something else entirely.
> 
> Doctrine of Equivalents is only for infringement, never for unpatentability/invalidity.
> 
> You don't tell us whether this is based on Form Paragraph ¶ 7.27 of some other construct.  An examiner is only permitted to use ¶ 7.27 in specified circumstances, and each requires a specific showing so you know what's going on.  Look up  Form Paragraph ¶ 7.27 the MPEP Index to see all the places it's discussed and see what that gives you.
> 
> Where the reference teaches multiple distinct embodiments, and the examiner is trying to assemble a Frankenstein's monster out of incompatible parts, then even within a single reference, the examiner still has to show "motivation to combine."
> 
> Depending on the examiner's rationale, Jeff's and Judith's approach could be correct -- if you show a missing element for § 102 then that same element is missing for § 103. 
> 
> But without a well-framed question we can't help you.
> 
> On Sat, Feb 10, 2024 at 9:44 PM Stanley H. Kremen via Patentpractice <patentpractice at oppedahl-lists.com <mailto: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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