"Knocking" Prior Art

[mindlesslemming]

What is the name of your state? WA

In my quest for success I have to demonstrate why the prior art is inferior to my machine. Can I attack the disadvantages of the prior art's dependant claims or only the independant claim? IE If my machine omits parts which the prior art requires for a specific task but the prior art only lists said parts in its dependant claims, can I say that my machine is lighter, stronger, cheaper, etc in my O&A?

Thanks again!

 

[divgradcurl]

IE If my machine omits parts which the prior art requires for a specific task but the prior art only lists said parts in its dependant claims, can I say that my machine is lighter, stronger, cheaper, etc in my O&A?

This doesn't make any sense. Why did the examiner reject your application? You don't attack the prior art per se -- you look to what the examiner said, and try to "traverse" his reasons as to why your invention is not new and patentable.

Maybe if you provide more information, we can provide more advice.

 

[Yuke]

What is the name of your state? WA

In my quest for success I have to demonstrate why the prior art is inferior to my machine. Can I attack the disadvantages of the prior art's dependant claims or only the independant claim? IE If my machine omits parts which the prior art requires for a specific task but the prior art only lists said parts in its dependant claims, can I say that my machine is lighter, stronger, cheaper, etc in my O&A?

Thanks again!

Read each claim as if they are an independant claim. If you infringe any claim in the patent, you infringe the patent.

 

[mindlesslemming]

Ok great. So, let's say the prior art machine is requried by ASTM standards to have expensive maintenance done on a periodic basis when my design does not. Can I reference that standard and use it as arsenal for my invention in the 'BACKGROUND- Discussion of Prior Art' section?

 

[divgradcurl]

What are you trying to do here -- are you drafting the original application, or are you replying to an office action?

 

[mindlesslemming]

i'm drafting the original application. Trying to distinguish what advantages my design has over the prior art.

 

[divgradcurl]

Then yeah, a discussion of how your invention improves on the prior art would be appropriate in the background section.

And back to your original question -- the independent claims are the key claims. Showing improvement over only the dependent claims is not likely going to be sufficient to get a patent -- you need to concentrate on showing an improvement and originality over the independent claims.

 

[mindlesslemming]

Yes I can appreciate that. My independant claim is different than the prior art. So. just to confirm then it would be appropriate to reference an ASTM standard in the background section? Not sure if you answered that.

THanks again