Patent and Invention Help Forum

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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!

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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.
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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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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.
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Marketing, Licensing, and Selling an Invention / Re: Novelty Items; Gag Gifts
« Last post by Brad on January 01, 2018, 08:17:57 AM »
Sorry a patent cannot be used to make new claims for things like new/silly ideas.   If the product already exits its unlikely you will get a patent approved on it even if you are the first one to think of a funny/silly way to use it.

You may want to consider other forms of IP protection such as a trademark on the name or use or maybe a copyright on the instructions on how to use it:
https://en.wikipedia.org/wiki/Trademark



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Marketing, Licensing, and Selling an Invention / Re: Novelty Items; Gag Gifts
« Last post by Nathan on December 31, 2017, 01:33:10 PM »
Hi Brad,

What if the product functions in the traditional way and has a similar appearance, but for the sake of comedy it claims to do something different/magical.  A silly (and not terribly funny) example might be a gag gift noise maker (maybe an air horn) that satirically claims to scare away giant, killer mosquitoes...    So, the fog horn works in a traditional way, the appearance would be similar except for the graphics, but how would you patent the ideas around the silly, comedic, magical claims?   Thanks for any light you can shed.

Nathan
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Patent Questions and Advice / Re: refiling provisional patent?
« Last post by Brad on December 27, 2017, 06:42:42 AM »
Hi Dave,

Thanks for the message.

You cannot link provisional patent apps together so you cannot really "reference" the old one.   What you need to do is update/modify your old one and then re-submit it but it be treated as its own brand new (stand alone) provisional without any benefit of your earlier filed one.

I wrote a post on some of the pros/cons of re-filing a provisional here:
http://patentfile.org/can-extend-renew-provisional-patent-application-ppa/



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Patent Questions and Advice / refiling provisional patent?
« Last post by Dave Whitmer on December 26, 2017, 03:07:32 PM »
Greetings, first thanks Brad for the great service. I filed a provisional patent in March 2016, refiled in March 2017. I am working with a manufacture and have improved the original design. Can I file a new provisional referencing the original provisional filed in 2016? If so do I have to mention all of the original elements, or just the improved elements? Thanks Dave Whitmer
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Patent Questions and Advice / Re: I've got my patent - how do I infringement-test it?
« Last post by BobbyB on December 21, 2017, 04:12:13 PM »
Brad

That was an excellent answer - partly because it says what I hoped it would say ha ha.
Thanks for that.

After looking at your "doctrine of equivalents" Wikipedia link - I believe that the vast majority of alternative methods to replace my connectivity would easily be subject to the "triple identity" test and would answer yes to each of the statements (down below for others).  There is always that tough call on whether to consult a $400/hr attorney on everything related to patents.

Thanks for the help Brad

"Triple Identity" test applied to individual claims:
1.  Performs substantially the same function
2.  In substantially the same way
3.  To yield substantially the same result
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Patent Questions and Advice / Re: I've got my patent - how do I infringement-test it?
« Last post by Brad on December 21, 2017, 09:36:05 AM »
Doubtful anyone can answer this specifically here as infringement type questions are best handled by an attorney with litigation experience ($400+ per hour) but this may help:

1) I would make a "claim chart" for each element in your claims and compare that to the other device to see if it infringes:
https://en.wikipedia.org/wiki/Claim_chart
http://slideplayer.com/slide/5717597/
(note that to infringe they only have to copy just one claim - not all of your claims)


2) For your spring as a connector method, you may be able to stop them under the "doctrine of equivalents" assuming you did not narrow your claims to specifically say "spring" during the back and forth with the examiner:
https://en.wikipedia.org/wiki/Doctrine_of_equivalents#United_States
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