machine vs process

[screenzzzz]

What is the name of your state (only U.S. law)? New York

I am arguing a process, part of what the examiner threw back at me was a prior art of an electronic sequencing system for a machine known in the art.

In describing the sequencing method the inventor described the parts he was sequencing to as well as their uses.

In my application for a utility patent (process) I am using said type of machine (there are many manufacturers of this type of machine in the industry)

My questions are can I;

a. use names and description of said parts
or.
b. Use the term "as known in the art", after naming the parts.
or
c. Is there another option

Gary

 

[divgradcurl]

What is the name of your state (only U.S. law)? New York

I am arguing a process, part of what the examiner threw back at me was a prior art of an electronic sequencing system for a machine known in the art.

In describing the sequencing method the inventor described the parts he was sequencing to as well as their uses.

In my application for a utility patent (process) I am using said type of machine (there are many manufacturers of this type of machine in the industry)

My questions are can I;

a. use names and description of said parts
or.
b. Use the term "as known in the art", after naming the parts.
or
c. Is there another option

Gary

Both a and b are acceptable.

 

[screenzzzz]

Good morning

thank you for your opinion,

In hindsite I should have asked a little more i.e. If I use (a) can it be held against me

"prior art" patent for machine vs patent for a process

Gary

 

[divgradcurl]

I am not sure what you mean by "use against you." You should use whatever descriptive terms best describe your invention.

If you know of prior art out there, you have a duty to disclose it to the patent office anyway, so it's not like you can hide from anything anyway.

 

[screenzzzz]

I should have been clearer,

I am arguing a process, part of what the examiner threw back at me was a prior art of an electronic sequencing system for a machine known in the art.

In describing the sequencing method the inventor described the parts he was sequencing to as well as their uses.

In my application for a utility patent (process) I am using said type of machine (there are many manufacturers of this type of machine in the industry)

e.g. Lets say I have a printing process, in my claims I state the "use of multiple print heads" Prior art states in their SUMMARY OF THE INVENTION

It is an object of the present invention to provide a printing press comprising a plurality of stations,

I state "use of a curing system attached to the printing heads.

Prior art states The printing press stations are also capable of operating as curing stations for curing the ink on the items that was printed by the printing stations. The sequencing system within the printing press comprises a computer or process controller for controlling the operation of the sequencing system which includes push buttons and switches for manually controlling the operation of each station and program with the controller for automatically controlling the operation of each station.

It is a further object of the present invention to provide a sequencing system which includes head assemblies that are adapted to remain at an outer position when the station/head is not set up to operate as a printing station.

It is a further object of the present invention to provide a sequencing system wherein all of the stations are adapted to operate as curing stations. It is also an object of the present invention to provide an efficient, cost-effective method of short, multi-color production runs. It reduces the number of operators necessary to perform the printing process, and the training and setup time for such process.

We claim:

1. A method of controlling a printing press having a plurality of stations, wherein each of the stations is capable of working as a print station for printing ink onto an item, and wherein each of the stations is also capable of operating as a curing station for curing the ink printed on the item, the method comprising the steps of:

entering a set of instructions for automatically sequencing the printing press, wherein the set of instructions includes setting the stations as active or inactive and setting the active stations as printing stations or curing stations;

My question is can this prior art be used against me and cause my rejection. I am confused as to whether there is any significant difference between creating parts for a machine and creating a process that can be fabricated by using said machine and defining the use of said parts

 

[divgradcurl]

I am not sure I completely understand where you are going with this, but I will take a shot. lf someone else has already invented a machine that does what your process does, then your process is not entitled to a patent -- it has already been invented. To use an absurdly simple example, you can't obtain a patent on both a pair of scissors and a method for cutting paper using two blades.

Put another way, if someone invents a machine that does something, and only patents the apparatus, that does not mean that the process of using the machine can be patented by someone else -- if it wasn't claimed, then it was dedicated to the public, in most cases.

Now, if you have a process that is some improvement upon an existing product, that might be patentable -- but any process that an already-invented machine can do is very unlikely to be found to be patentable.

If you are trying to prosecute your patent on your own, as a last-ditch approach you can always ask the examiner to redraft the claims for you into claims that would be allowable. If the examiner cannot do it, that means that he or she believes that your invention is unpatentable.