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Breaking is unreasonable March 19, 2012

Posted by Brian Schar in Patent prosecution, USPTO.
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Some Examiners will issue a rejection over a particular piece of art claiming that, if you broke it, it would meet the limitations of the claim.  The applicants in Ex parte Kevin W. Smith et. al. faced that problem.  They claimed a “passive” articulation joint – that is, an articulation joint with a particular mechanical property of being passive.  The Examiner rejected the claims utilizing that language as anticipated by Schulze, arguing that if one applied enough force, the end effector could be “moved or articulated,” “even if such an action would damage the device.”  The BPAI reversed, finding that “the Examiner’s interpretation essentially disregards the term ‘passive.'”  Further, the BPAI found that interpretation of the claim term “overly broad.”  Keep this in mind the next time you receive a rejection in which the USPTO contends that a reference anticipates, if only you destroy it first.

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