Does this prior art disclose my invention?

[Jim (WA)]

Hello All,

I am trying to determine whether my invention is patentable. There is an expired prior art that is very similar. Because it's expired, my understanding is that evaluating whether I infringe on the claim is not an issue, but rather whether my invention is disclosed anywhere in the specification is the significant issue.

I will use a simple example that shares the same sticking points as my scenario to describe the situation.

In a nut shell, the prior art reads on a table concept with embodiments of a range of preferred sizes with 3 legs, but it also says that, "Dimensions beyond those mentioned above are also possible within the scope of the present invention, [referring to both that table sizes and number of legs could vary]"

My invention asserts that for table embodiments of a size larger than given in the prior art, 4 legs is preferred. I don't believe I could patent the idea of a table, but I'd like to patent the range of embodiments not specifically stated in the prior art.

Additionally, I think that the prior art inventor actually got it wrong in their statement that 3 legs is preferred for the table. My deep experience in this field tells me that actually 4 legs would make a better performing table and I have no interest in making tables with 3 legs.

From my initial research I understand that improvement patents need to be “unobvious” and produce “new and unexpected results.”

The prior art captures the embodiments that I seek to patent with the one general quotation above, but the prior art inventor miss states the emobodiments that are preferred and does not specifically state the range of embodiments that I’d seek to patent.

I am trying to figure out an approach to writing my specification. I could attack the prior art flaws and do testing to show that their assertions are wrong, and that mine are correct. This will cost lots of money, so I’d prefer not to need to do testing just to get the patent.

I’d prefer to just show that my invention is outside the range of their disclosure and is a separate invention, but the quotation in the prior art above is very trouble, as it seems to cover all embodiments. I’ve also been advised that is very hard to get a patent by just changing the size, which to some degree is what I’m doing, but for good scientific reasons, not just to be different.

If anyone can give me some feedback, I’d appreciate it.
   
Thank you,

Jim

[Brad]

Yes it would be very hard to get a new patent approved if you are just changing the sizes or dimensions.  You could try claiming these different size ranges and sometimes the examiner will agree with you but usually they push back and say it would be "obvious" and produce an expected outcome. 

One other strategy I have seen people use is try and claim the specific benefit.  For example, if your table with 4 legs has a "stability factor of X" while the prior art with 3 legs only has a stability factor of half X you may be able to put language like that into your claims and then argue the prior art was not able to produce the same result as what you are claiming.

[Jim (wa)]

Brad,

From my perspectives there are a lot of unfounded statments made in patents. For example, the prior art specification I’m citing claims that 3 legs for given table size is preferred. The inventor provides no research or data to prove that their assertion of 3 legs being preferred is in fact so. I’m just noticing that maybe the patent system does not care if statements made are true or false, only that they are made record and thereby disclosed.

Am I to assume that I can say 4 legs is preferred over the 3 that the prior art states, because the stability factor is increased by ‘x’ amount, without any test data to back it up?

I think I may be able to take the 2nd route you propose. The prior art table actually has 2 legs, and I would assert that their table is unstable but my table with 3 or 4 legs is stable. This is a more accurate example of my scenario.

Jim

[Brad]

Yes the frustrating thing about patents is that often the attorney or person writing the patent will include a lot of statements and things that they don't have any evidence or data for but it can still be used by the examiner to block your own patent.   I don't know of any easy way around this unless you can somehow prove that what they first patent was proposing would not work as intended or could not be combined or modified to work the same as yours.