Patent and Invention Help Forum

Prior art doesn't apply over and over again

Prior art doesn't apply over and over again
« on: December 17, 2021, 04:35:50 PM »
Is there a well known circuit court case used to stop the pat office from throwing prior art at you over and over just because they happen to have one keyword in them each and then they combine them?

For instance, if my patent ap is about icecream with heater and also no power cord, they will throw one patent that has the keyword "icecream" in it and another one with "heater" and then "combine" them and not spend the time reading the prior art to see that neither has no power cord but they say anyone skilled in the art would see both prior arts and come up with the "no power cord" when no one has ever done that without the power cord, ever.

I don't know if that's a good example, but if they keep doing this over and over several "rounds" to "final rejection" and then RCE again, it could go on forever and every time I spend resources.

It's like they are trying to make me give up. So far I have held them back for about 4 times now showing them how their prior art doesn't apply and they just come up with another when they could have listed them all at once and I could "reject" them all at once and save all these RCE fees and time.

What to do?


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Re: Prior art doesn't apply over and over again
« Reply #1 on: December 18, 2021, 08:49:54 AM »
You really have three options:
1) Amend your claims to include a feature (structural feature or arrangement of features) that is not found in any of their cited patents.

2) Provide arguments why it would not be logical to combine the cited art and explain how it would actually "frustrate" the purpose of the cited art (e.g. ice cream needs to be kept cold, therefore it would frustrate the purpose of an ice cream machine to add a heater)

3) File a Notice of Appeal to appeal over the examiner's head.

Most of the time a combination of 1 and 2 is all you need.  A phone call with the examiner is also helpful as they will sometimes tell you what they want to see in order to get the case approved.
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