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During examination of claims in a patent application, claim rejections from the USPTO (United States Patent and Trademark Office) under 35 USC §102 and/or 35 USC §103 usually assert that one or more cited references show all of the elements in the claims. It is usually not too difficult to find issued patents, patent application publications, or non-patent literature that shows many, or even all of the tangible elements that are in the claim, the so-called fundamental building blocks, components or pieces of an apparatus or that are used in a method. But, is this sufficient for a proper rejection of the claims?
A well-written claim should be more than just a preamble and a list of tangible elements, and should also recite the connections or relationships among the tangible elements, and possibly the functions the tangible elements perform or are capable of performing. These connections and relationships are also elements. Possibly, it could be arguable that the connections and relationships are not tangible elements in the narrowest sense of tangible being something you could reach out and touch or hold in your hand. But, the connections and relationships are tangible in the sense of being a real part of an invention. A claim rejection that shows only the narrowly definable, physically tangible (touchable) elements of the claim has not shown all of the elements of the claim.
Facing such a rejection, the patent practitioner can argue that the reference(s) cited in the Office action do not show this connection or that relationship among the elements that are shown. Where this gets subtle is that sometimes a reference shows several tangible elements and a relationship among these tangible elements, and another reference shows another tangible element and a relationship to some other tangible element in that reference. But, where there is no relationship or connection shown between a tangible element in one reference, or a relationship between tangible elements in one reference, and the tangible element or relationship in another reference, that can be argued as not showing all of the elements and all of the relationships among the elements, in the claims.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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