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Patentably Distinguishable

Another tactic for overcoming novelty rejections (those based on 35 U.S.C. 102) is to amend the claims.

Seems simple enough and in some cases it really may be possible to simply amend the claims to make them patentably distinct over the prior art.

Keep in mind that adding in new matter is not a possibility. However, certain claims may just be deleted or re-written to make them different from those found in the prior art.

If it is not feasible to re-write the claims, it is also possible to argue that the claims in the application are in fact patentably distinguishable from the prior art. You may try to persuade the examiner that although the claims of the prior art are similar to your application’s claims, they are different and there is a valuable new attribute to the application’s claimed subject matter.

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