Invalidating a patent with prior art
Specifically, Jones discloses “x,y,z.” However, Jones is completely silent in regards to limitation D.” Further, there is no reason why Jones would have “limitation D” because Jones (insert reasoning why Jones wouldn’t have it, if applicable.” Therefore, Jones cannot anticipate “limitation D” as currently recited in amended independent claim 1.In view of the above, Jones does not disclose each and every limitation of amended independent claim 1, and independent claim 1 is allowable.If the publication date of the cited art is after your filing date, then the cited art cannot be used as a prior art reference.
However, the examiner is able to use “the broadest reasonable interpretation” standard.
On page X of the office Action dated January 1, 2013, the Examiner states that Jones (the cited art reference) discloses each and every claimed limitation in independent claim 1.
To expedite prosecution, and without discussing the merits of the subject matter of Jones corresponding to the claimed limitations of independent claim (which is not admitted or suggested that Jones anticipates any of the claimed limitations of independent claim 1), Applicant submits that Jones is not proper cited art under 35 USC 102.
In view of the above, Applicant respectfully request Jones is not proper cited art, and withdrawal of this rejection is respectfully requested.
In 35 USC 102 rejections, a single cited art reference must disclose each and every claimed limitation.
Search for invalidating a patent with prior art:
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.