In order to overcome objection made by the Controller in the First Examination Report (FER), with regard to novelty, I generally undertake the following steps in order to make an appropriate response to the objections raised. There is no straight jacketed formula for doing this, and will surely differ from attorney to attorney, however, I follow these steps:
Step 1: Note down the cited prior arts;
Step 2: Pull out the prior arts from patent databases such as Espacenet, US Pair or Google Patents;
Step3: Read claim 1 of your invention and write down all the elements of your invention;
Step 4: Note down the characteristic feature of your invention (generally followed by “characterized in that”) – It is very important to ascertain the characteristic feature of the invention;
Step 5: Look at the relevant paragraphs marked by the examiner in the FER that, according to him, are negating the novelty of our invention;
Step 6: Read the relevant cited paragraphs from the prior arts (also the entire prior art) and ascertain whether all elements of your invention including the characteristic feature are disclosed by the cited prior arts or not.
An invention is said to be anticipated only when all elements of the invention are disclosed in one single prior art.
Step 7: Do not only look for verbatim elements of your invention in the prior art, rather also look whether the function, way and result of your elements are disclosed by any means in the cited prior art.
Step 8: In case your invention has been granted in corresponding jurisdictions (preferably EPO) with a similar set of claims, then apprise the controller of the same. Also check in which corresponding applications the similar documents were objected. Although he is not bound by this fact.
Step 9: Alternatively you may also look at the prosecution history of corresponding applications and check whether or not the cited prior arts were cited during the prosecution of corresponding applications. If similar prior arts were cited for a similar set of claims, then you may apprise the controller of the same.
Step 10: You may also consider amending the claims in accordance with any other granted claims in other jurisdictions in order to bypass the novelty objection. Note that you must refrain from amending claim 1 of your invention. Generally, only dependent claims are either cancelled or amended in order to bypass novelty objection.
Step 11: Include all your observations in the Controller letter as a response to FER.
Thus, a comparison of cited prior art with that of our invention is required in order to check whether all elements of our invention are disclosed by single prior art.
Image from here.