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Five strategies for overcoming obviousness

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1 Author(s)
Emma, P.G. ; IBM T.J. Watson Research Center

The author explained the various office actions that you are likely to see a patent examiner make (under legal sections 101-103 and 112) and briefly noted some other parts of the legal code that you are unlikely to encounter (legal sections 104, 105, and 113-122). In addition, the author mentioned the possibility of the examiner filing a restriction on your patent application. The two remaining sections, 102 and 103, address novelty and obviousness, respectively. Under section 102, the examiner cites a single reference to prior art that he claims is the same as your invention. That is, he makes the claim that your invention is not novel (new). This is usually cut and dried $he is either right, or he has misunderstood at least one of the inventions. Section 103 leaves you more wiggle room to argue, since it pertains to the murky area of obviousness. In a 103, the examiner cites not just one, but two or more references and claims two things: that combining the inventions in those multiple references will produce your invention; and that conceiving such a combination is obvious. In this column, the author explains five distinct dimensions in which you can argue to overcome a section 103 rejection. You may choose to argue in multiple dimensions, but if you do, make it clear at all times which dimension you are arguing, or your argument will be confusing

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Micro, IEEE  (Volume:26 ,  Issue: 6 )