Tuesday, November 5, 2013

Is Novelty Satisfied by Omitting Element from Prior Art?

Patent # 3771192 -  Combination toy dog and vacuum cleaner
Dear Rich: I've received an Office Action, in which my independent claim is rejected under 35 USC 102. The cited prior art does appear to "anticipate" my independent claim by inherently showing each element of it. However, the prior art is more complex than what is claimed in my invention: the prior art has parts A and B, while my claim has only part A. I'd like to request withdrawal of this rejection based on David Pressman's reasoning, who in his Patent-It-Yourself (14th ed.) notes in Chapter 5 (Is It Patentable) that "even omitting an element can be considered novel. For example, if a machine has always had four gears, and you find that it will work with three, you've satisfied the novelty." However, citing Pressman in the Amendment seems inappropriate. So my questions are: 1) Is it true that novelty can be satisfied by omitting an essential element from a prior art reference? 2) If so, is there a specific MPEP reference or other authoritative source that I can cite in my Amendment to request withdrawal of this rejection? For those not familiar with patent law, an Office Action is a response by a patent examiner that usually consists of objections to the patent application. In this case, one objection is that the invention is not new when compared to the prior art -- all inventions in existence before the application's filing date. We spoke to author David Pressman who writes that "the omission of an element with retention of its function can definitely be novel and unobvious." Pressman suggests that you review MPEP Section 2144. "However," adds the Patent It Yourself author, "you must claim it in a way that recites the novelty to distinguish over the prior art." Pressman advises not to make the claim too narrow and that the use of terminology such as “consisting” and “having only” can be useful.