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Patent and Unexpected results....

Patent and Unexpected results....
« on: March 02, 2017, 02:58:00 PM »
Hi,
Still not making any progress with examiner concerning an apparatus claim in spite of the very helpful information I have received from this site. I have done some additional testing and will submit the results in a declaration. I'm thinking of claiming "unexpected results" to disprove 103 obviousness.

Example:
Have a generic heat safe container and lid, fill container with a layer of element A and fill remaining container space with element B, leaving no head space in container, seal container with lid. Heat container for a period of time.

Element A, when heated, is known in prior art, by a POSA and verified with my testing as having properties P1-P3. The above configuration however produces properties P4 and P5 for element A which are unexpected results and are not known to exist in the prior art or by a POSA.

The examiner in the office action, cited proof of obviousness, by claiming that the prior art using element A had the same structure as the claimed invention and then inserted my claim language about the resulting P4 and P5 properties as though the prior art accomplished them. Having acquired the prior art, I have tested the device and properties P4 and P5 do not occur. I will document the test results to the declaration.
 
My understanding is if known elements, using known methods, produces unexpected results then it not obvious.
Trying to get an apparatus claim. Thoughts?
Thanks.
« Last Edit: March 03, 2017, 07:50:44 AM by Brad »

Brad

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Re: Patent and Unexpected results....
« Reply #1 on: March 03, 2017, 07:57:02 AM »
If you are trying to claim a device that is already known and arguing that you found new properties P4-P5 which are not known (but the device is still the same) that is probably not going to be a success argument.

Look at it this way, lets say drug compound X was known and people knew it had a weight of 0.5 mg .   Just because you figured out compound X also has a melting point of  300 degrees C does not mean you should then get the patent on compound X because technically you were not the first person to invent it.

You may have better luck switching your claims to a method or application which is not shown or taught by any of the references.   Usually when people have a hard time claiming a device/product based on prior art that already shows that device/product they have to switch to method or application claims.

A final strategy may be to claim your device in combination with ____ and _____  where the fill in the blank items are new/different from anything shown before.     

I would speak to the examiner about it and see what they suggest.

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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.

Re: Patent and Unexpected results....
« Reply #2 on: March 03, 2017, 12:27:15 PM »
Thanks Brad for your helpful response. Sorry I made the mistake of talking about properties and not results as in "unexpected results" (duh). Using your advice I think a better hypo would be:

Prior art Z combines elements A and B in a container and when heated makes result R1. The claimed invention combines elements A and B in a sealed container and a particular arrangement of elements A and B. When the container is heated it produces result R2.
 
R1 appears as a mixture of clumps of element A intermixed with element B. R2 however, appears as all element B's completely coated in the container with liquid element A. Liquid element A not present in result R1 nor expected to exist according to test results.

An easy way to imagine the difference of R1/R2 is to think of R1 as a container of rice krispes with a few melted marshmallows thrown in versus R2 being is a bowl of rice krispie treats where all rice krispes in the bowl are coated with a marshmallow/butter solution.

Thoughts?
Thanks.

Brad

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Re: Patent and Unexpected results....
« Reply #3 on: March 04, 2017, 12:14:17 PM »
Using your example I would limit my claims to:

1.  A rice kernel with an outer surface, the outer surface fully covered by a solution, the solution comprising butter and marshmellows and the rice kernel having _______property_x___.   

(where property x is your unique result). 


Assuming that compound is new/different from the prior art, it should be patentable.   If they examiner claims its odvious you submit your data as unexpected results.  If the examiner still does not by it you either have to change direction and maybe claim the method/process steps or appeal over the examiner's head.

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

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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.

Re: Patent and Unexpected results....
« Reply #4 on: March 05, 2017, 03:47:47 PM »
Thanks Brad for your patience and showing me another way of looking at the invention and how to approach the claims. Really appreciate your time and the website.