tag:blogger.com,1999:blog-6733236595417664807.post6103229686592596468..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: Board reverses anticipation rejection which relied on secondary reference incorporated into Background of primary referenceKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger3125tag:blogger.com,1999:blog-6733236595417664807.post-16973834525075543312013-04-22T10:44:00.777-04:002013-04-22T10:44:00.777-04:00Yep, I agree with your assessment: combining one e...Yep, I agree with your assessment: combining one embodiment from the ref with another embodiment from the incorporated ref (as in this post) is merely a special case of the "can't pick and choose embodiments for anticipation" rule. Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-75555405172972600742013-04-21T19:41:14.062-04:002013-04-21T19:41:14.062-04:00Thank you, Karen. As I recall, it wasn't too l...Thank you, Karen. As I recall, it wasn't too long ago that you posted about an anticipation rejection that was reversed because the Examiner cherry picked from different embodiments in the same prior art reference. This case seems to gel with that...anticipation requires the claim elements not only be found in the same reference, but also in the same embodiment. Which only makes sense.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-42675535820975230012013-04-11T22:08:23.847-04:002013-04-11T22:08:23.847-04:00Karen -- in my experience, it's best to make e...Karen -- in my experience, it's best to make each and every argument possible -- for each and every claim -- right from the very first office action on the merits.<br /><br />While requiring a greater investment in time, research, effort, and yes -- money -- such an approach offers the best opportunity to obtain the greatest and most valuable invention scope possible.<br /><br />This also puts one in a better position to take advantage of any helpful applicable new caselaw that arises during your prosecution ... while concurrently also putting one in a better position to address any caselaw that could negatively impact you (these are also powerful reasons to always have an active continuation on your invention).<br /><br />In these days of multi-year prosecution time lines, this is especially important. <br /><br />An argument which may today seem marginal/ questionable and/or of little usefulness ... may be the very one that gets you your patent(s) 1-5 or more years from now. <br /><br />But if you haven't made that argument, and preserved it along the way, you could end up with nothing; or far less than you could have otherwise.<br /><br />The prosecution history of my 09/832,440 application including the Board/PTAB and Fed Cir briefs are one example of such an approach.<br /><br />SteveStevenoreply@blogger.com