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Let them eat cake - question above motivation to combine...

Let them eat cake - question above motivation to combine...
« on: January 18, 2018, 11:50:36 AM »
Hi, Looking for some thoughts: The examiner says POSITA would be motivated to substitute a container with a container with removable lid in order to prevent a cooking mess shown in the primary prior art. The prior art shows the cooking mess did not occur during cooking, but after the user added a topping to the cooked item and was sloppy. If the container used the lid during cooking, the lid would have to be removed to access the cooked item before the topping could be applied. Removing the lid creates the opportunity for the user to be sloppy again hence the lid would not help prevent a mess and believe there is no motivation to combine.
 
Further, the cooked item is a cake and found prior art in the form of recipes (can add as a declaration) using the same container with lid, the recipes request cakes be cooked uncovered. Also think it is common knowledge by POSITA, that cakes should not be covered while being baked.
   
Thanks for your thoughts.

Brad

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Re: Let them eat cake - question above motivation to combine...
« Reply #1 on: January 18, 2018, 04:29:17 PM »
This is a tough one.  Here is how I personally would try to respond:

1)  Put together some draft arguments and amendments and arrange a phone call with the examiner.  In about 30-50% of cases they will try to work with you and find some language that may work to remove the rejection.   If this fails, move to step 2.

2) Trying to make arguments alone is almost always a losing battle (even if you are in the right).  Its usually best easiest to find some physical structure about your invention that is not shown in the prior art and add that to your claims to overcome the rejection.   If you can add that to your claims plus make some arguments the examiner will be more likely to approve.

3) If you cannot find anything and are forced to make arguments only read the MPEP as they provide some ways to properly overcome these rejections such as the combination that the examiner is suggesting would cause the invention to be inoperable and fail as intended.   Here is a good free resource with some sample arguments:
http://www.foundpersuasive.com/frustrated_purpose.aspx




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Re: Let them eat cake - question above motivation to combine...
« Reply #2 on: January 19, 2018, 12:14:20 PM »
Thanks Brad for the thoughtful reply. I do plan on contacting the examiner, but will first submit another declaration. I have talked with the examiner multiple times concerning other combinations that would cause the prior art when combined to be inoperable and fail. The examiner had suggested a declaration consisting of various test to prove my points. The most recent office action reflects those tests were persuasive, but now new challenges. I think the examiner is doing their best, but believe they don't know have the technical knowledge needed for this application. If you have time, I would appreciate and pay you to review my declaration before submitting it. Thanks again.

Brad

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Re: Let them eat cake - question above motivation to combine...
« Reply #3 on: January 19, 2018, 01:44:39 PM »
Sounds like you have a good examiner that is trying to work with you which is great.   Sorry I am overbooked right now and would not be able to help with your declaration.   Good luck though!

My free patent template: http://patentfile.org/free-provisional-patent-template/

Hire Me:  http://patentfile.org/packages/

Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.