I’m working on compiling the data from the recent survey on antedating prior art through the use of Rule 131 affidavits during patent prosecution. I have a question for practitioners on the current state of the dedication rule.
MPEP 715 reads as follows:
An affidavit or declaration under 37 CFR 1.131 is not appropriate . . . (F) Where the reference is the disclosure of a prior U.S. patent to the same party, not copending. The question is one of dedication to the public. Note however, In re Gibbs, 437 F.2d 486, 168 USPQ 578 (CCPA 1971) which substantially did away with the doctrine of dedication.
What is the current state of the law regarding later claiming material disclosed in earlier not-copending application?
I think 6 has the upperhand on LB on claim D2. Simply put, claim D2 is indefinite because it is not clear if the widget in claim D1 is or is not one of the widgets in claim D2.
LB says: Actually, I got [AND] from the part of the dependent claim that says “The assembly of D1, comprising…” That unambiguously says that anything covered by D2 necessarily includes the features recited in claim D1 AND the features recited in claim D2.
Well, the “AND” argument still does not eliminate the 112 indefiniteness issue. In other words, it is still unclear if claim D2 includes the widget of claim D1 with the additional feature of claim D2 (“AND”) that that widget of claim D1 is part of claim D2’s plurality of widgets, or if claim D2 includes the widget of claim D1 with the additional feature of claim D2 (“AND”) that that widget of claim D1 is separate from claim 2’s plurality of widgets.
JV you have some weird ideas and I’m sorry but I’m not going to go through each of them one at a time.
The very first question posed in this thread as a response to the D claims is testament to people not understanding wt f is going on in the claim. You can’t then just come in and say “well the claim means x right smack on its face”.
Question:
“Blaise, Is the widget of D1 one of the plurality of widgets of D2?”
This sort of thing should not be happening when your claim is read so far as I’m concerned. He’s a patent professional (presumably) for go d’s sake and he’s asking questions because he doesn’t understand the claim. The degree of indefiniteness is low, admittedly. And if your patent was issued it would not be invalidated. The office however employs a lower standard.
And I’m prepared to assist in setting some precedents. Because it will make for interesting appeals. On the other hand, most of my other appeals I’m about ready to avoid like the plague. Arguing over ridiculous art related (usually) nonsense (in front of the non art experts of the board) doesn’t interest me all that much lately, interesting questions about claim drafting and interpretation does. These sorts of scenarios are a plague upon the system, sucking examiner time worse than anything except searching and interpreting/applying prior art I’d wager and they should be definitively resolved and the decisions written down.
I note further that I’ve saved more examiners more time than I’ll ever be able to work here simply by demanding an actual functioning autosave feature in East and getting it a week later. In the same way, by getting a decision on this issue I’d be saving examiners more hours of struggling with this bs question than I would work here over the course of a 30 year career. They should hire me as a consultant.
“We know one thing, because you started over with the comprising.”
There isn’t any “no starting over” rule. To determine whether a dependent claim complies with 112, *4th paragraph*, which is the proper requirement to apply here, look for a reference to another claim, and then use the “infringement test” described in the MPEP.
You can “start over” as long as you end up either putting back all of the elements or substituting in more limiting forms of the element(s) of the referenced claim. You are essentially doing a start over anytime you use “wherein” rather that “including” as your dependent claim transitional word.
That said, as six correctly points out, the proper way to address a 112, 4th issue is with an objection rather than a rejection. Pretending that the claim is indefinite when the real problem is that you don’t like what it definitely and unambigously says is not a proper use of 112, 2nd paragraph.
I doubt I’d be hard headed enough to buck the examiner over an objection, particularly if the claim were otherwise allowed and easily fixed. But I would be pretty noisy in my remarks about the examiner’s application of a non requirement in an effort to avoid Festoing the claim.
For example, F3 doesn’t cut it. You haven’t properly referred to the different pieces, my clown nose, and my tin foil hat respectively.
Dennis, the section you quote first appeared in section 715 of the original 1949 MPEP (link to uspto.gov) as paragraph 6.
It envisions a situation where applicant’s own work, although not a statutory bar (note paragraph 1 of the 1949 MPEP, paragraph “A” today), is nonetheless cited against him. Those sorts of situations were rare enough in 1949, and today (with so many US applications being published long before their pendency ends via issue or abandonment) are almost non-existent.
I also note, though I missed it in reading through the thread before now I had considered posting broje’s format myself. It seems less formalistic to me, and might very well be the way I would write the claim if I didn’t need to refer to the pieces by references to each individual piece in the claims in more limitations besides what we have in front of us.
However, in my art, you’re usually going to need to refer to the piece again, so B will end up being required.
link to cafc.uscourts.gov
That is a funny case, but I don’t see newman involved. Seems like maybe she was the one that was going on about the century of caselaw maybe though.
link to encyclopediadramatica.com
“inquestionably definite”
Sorry that should be un.
“That unambiguously says that anything covered by D2 necessarily includes the features recited in claim D1 AND the features recited in claim D2.”
NO U
“”amenable,” not “amicable.””
Actually I like to say amicable. Because I’m an amicable kind of guy my claims are friendly. But amenable works too.
“How many times have you “won” with this approach?”
I haven’t kept a definite count, but so far it appears ~5+, and I have 1 guy who is arguing it. Although he has about 5 112’s to argue against total, and this is just one of them. His claim is going nowhere any time soon.
Keep in mind the Miyazaki decision has only been out for a short while. And I can’t put a 112 in every single case (some people know how to draft claims and don’t try to buck the system). Give it some time for me to get some actions back.
LB: ” “Comprising” isn’t an incantation, it simply means including, and a century of case law says that it is open-ended.”
Two words: Dippin Dots.
“Btw, where did you get your AND? From the same place I got my OR. Imagination land.”
Actually, I got it from the part of the dependent claim that says “The assembly of D1, comprising…” That unambiguously says that anything covered by D2 necessarily includes the features recited in claim D1 AND the features recited in claim D2. Since you’ve admitted that you got your OR from imagination land, I think we’re done with this argument.
“It’s funny how you can characterize nearly any 112 issue as a ‘the claims are amicable to two or more interpretations’ issue and then win as an examiner.”
I think you mean “amenable,” not “amicable.” And I think you’re off in imagination land again, as well. How many times have you “won” with this approach?
“When I tell him that I presented you with the easy change that renders the claim inquestionably definite he will stand right beside me in the face of your determination. Trust me, I’ve seen him do it.”
Now that’s funny. You’re telling me that you actually used the phrase “inquestionably definite” with your supervisor, and he didn’t laugh in your face?
Wow. It is incredible that a matter of claim formality generates this much heated debate.
In light of the comments by 6 I now think version F from broje has the best form. Ideally however it should not matter since a reasonable person should be able to determine the claim meaning in any of the versions. But if people were reasonable I guess we wouldn’t need lawyers.
It can’t be “including” two different sets of things. It can be FURTHER INCLUDING.
If you want to buck the system then go right ahead LB. I notice you say that you wouldn’t draft your claim that way, but you wouldn’t amend if you inherited it. Your better judgment thus leads you to know the correct path, but you have a desire to take the hard road so long as someone paved the way for you. Well, be my guest.
“Because a dependent claim necessarily further limits the structure of the parent claim,”
Um, no they aren’t “necessarily” further limiting. They are required to be. That doesn’t mean that applicants always draft them to be further limiting. Applicants routinely break the rules.
“If that “blatant” 112 rejection is the best you’ve got, bring it on. ”
Ok, I will.
“Your supervisor will tell you to stop wasting his time when I call him.”
My supervisor would say nothing of the sort. When I tell him that I presented you with the easy change that renders the claim inquestionably definite he will stand right beside me in the face of your determination. Trust me, I’ve seen him do it.
“it must be true that the frame has a widget attached to it AND it must also be true that the frame has two or more widgets attached to it. ”
Btw, where did you get your AND? From the same place I got my OR. Imagination land. They’re both made up. And either could be implicit. And thus the claim is indefinite because we don’t know if you meant AND or OR. Sure you might say you meant AND now, but then you might drag someone into court later claiming you meant OR.
In effect, it is now a miyazaki issue, AND or OR, and I’m going to win. It’s funny how you can characterize nearly any 112 issue as a “the claims are amicable to two or more interpretations” issue and then win as an examiner.
You know what else? I could probably just object to the claim for forgetting to use “further”. Say goodbye to your chance to appeal and good luck getting a petition through.
“We know one thing, because you started over with the comprising.”
Who “started over”? “Comprising” isn’t an incantation, it simply means including, and a century of case law says that it is open-ended. And a dependent claim by definition is further limiting, and can’t “start over”.
“The assembly comprises either a frame and a widget attached to it, or the assembly comprises a plurlity attached to the frame.”
Wrong. Where did your “or” come from? Because a dependent claim necessarily further limits the structure of the parent claim, it must be true that the frame has a widget attached to it AND it must also be true that the frame has two or more widgets attached to it. Assemblies that meet both of these requirements infringe the dependent claim, but might not infringe the parent claim. It’s really not that difficult.
If that “blatant” 112 rejection is the best you’ve got, bring it on. I wouldn’t write my claim that way, but if that’s all you have against a claim I inherit then I’m certainly not amending. Your supervisor will tell you to stop wasting his time when I call him.
“I would wonder whether it meant that the assembly had at least *three* widgets: the widget recited in D1, plus the additional plurality of widgets recited in D2.
”
That is correct, that’s why the D’s need to be modified further than what I held his hand through like I told him.
“Which is just fine” … if you want a 112. You can’t “start over” in the middle of a claim.
“With regards to claim D2, we know 3 things about the assembly:”
No, we don’t. We know one thing, because you started over with the comprising.
“Is there really any doubt about what claim D2 covers? There’s no contradiction, and no ambiguity. So what’s the problem?”
D2 written out:
D1. An assembly comprising:
a frame; and
a widget attached to the frame;
the assembly comprising a plurality of widgets attached to the frame.
The assembly comprises either a frame and a widget attached to it, or the assembly comprises a plurlity attached to the frame. Do not neglect further comprising.
Saw something similar over at 1201 the other day, but it wasn’t quite as blatant of a 112 problem in that claim.
It’s B. The use of “first” without “second” is odd grammatically, but it is precise in a claim.
“At least one” doesn’t help any. “One” or “first” already means at least one (in a claim, not grammatically).
F1. An assembly comprising:
a frame; and
a widget attached to the frame.
F2. The assembly of claim F1 further comprising ANOTHER widget attached to the frame.
F3. The assembly of claim F2, wherein the widget is six’s big honkin’ clown nose, and the other widget is six’s painfully shiny tin foil hat.
ThisMortalCoil, I think your E1/E2 claims are what I would prefer. B is a close second.
“…claim D2 appears to start over (by omitting ‘further’ before ‘comprising’) and only recites a plurality of widgets.”
Which is just fine (although I like ThisMortalCoil’s claims best). With regards to claim D2, we know 3 things about the assembly:
(1) it has at least one frame (“comprising” is open-ended, so it could have more than one);
(2) it has at least one widget (per claim D1, and the open-ended nature of “comprising”); and
(3) it has at least two widgets (per the narrowing limitation in D2).
Is there really any doubt about what claim D2 covers? There’s no contradiction, and no ambiguity. So what’s the problem?
Dear off-topics: How about “at least one” widget in the main claim instead of a “first” widget?
I believe the issue 6 is raising has to do with claim D1 stating that the assembly comprises a frame and a widget, while claim D2 appears to start over (by omitting “further” before “comprising”) and only recites a plurality of widgets.
On the other hand, if D2 said “further comprising”, I would wonder whether it meant that the assembly had at least *three* widgets: the widget recited in D1, plus the additional plurality of widgets recited in D2.
On a side note, I’ve seen claims that recited “a widget”, “another widget”, and “yet another widget”, which led to mildly amusing phrasing such as “said yet another widget”.
How about
E1. An assembly comprising:
a frame; and
at least one widget attached to the frame.
E2. The assembly of claim E1 comprising at least two widgets attached to the frame.
@6: “You should get a 112. At the least this is because you have the assembly of D1 allegedly comprising two seperate things in the same claim.”
– Huh?
His D claims are slightly off. You should get a 112. At the least this is because you have the assembly of D1 allegedly comprising two seperate things in the same claim. I see this occasionally and have to sort it out. Don’t neglect the word “further” before comprising. Do not buck the system. You could modify his D’s to be proper if you want to use that format though.
112’s get sent out wrong sometimes. That’s when you’re supposed to argue. Go with B, quit your qq and get the job done.
Blaise, Is the widget of D1 one of the plurality of widgets of D2?
I prefer:
D1. An assembly comprising:
a frame; and
a widget attached to the frame.
D2. The assembly of claim D1 comprising a plurality of widgets attached to the frame.
with the replacement of “a plurality of” with “two” if so desired.
The use of “first” and “second” when describing a plurality of identical elements is unnecessary unless the elements are to be structurally or functionally distinguished. If this is the case you can write:
D3. The assembly of claim D2 wherein the plurality of widgets includes a first widget having attribute A and a second widget having attribute B.
BTW, Rule 131 itself, not just the MPEP, now says that it cannot be used to avoid a rejection that is based on an application or patent of others “..which claims the same patentable invention as defined in [Section] 41.203(a) of this title.” That Section 41.203(a)gives a VERY much broader scope definition than what many people THINK are “interfering claims” or “the same invention.”
6, plurality et al.
I have had 112 rejections over the years of B claims (because the independent claim has a FIRST but not a SECOND) and of C claims (because the dependent claim has no FIRST).
Anyone else (particularly examiners) have any comments?
No.
I would say no, because “first” is primarily a label; besides, even when there’s only one of something, it’s also the first.
6, plurality, et al
Is B flawed because independent claim B1 has a FIRST but not a SECOND widget?
I would agree – B is best.
A is flawed because the term “defines” is unclear as to whether it’s a positive function of the widget or an artifact of weird claim drafting.
C isn’t flawed in itself, but what happens if later on you want to add a claim dependent on C2 that refers back to the widget in C1? You could just say “widget”, but you’d risk a 112 2nd rejection because it would be unclear which widget you were talking about.
Re “What is the current state of the law regarding later claiming material disclosed in earlier NOT-copending application?”
Notwithstanding some recent inadequately qualified dicta, if a later application is not copending with an earlier application then, of course, it cannot even claim 35 USC 120 priority therefrom.
Dennis, I am not sure I understand what you are asking here. The occasional old doctrine of “late claiming” was eliminated early-on by the CAFC, which explained that this was a misunderstanding of a Sup. Ct. case that was really an issue of claiming something for which there was inadequate 112 support in the original specification.
However, unbeknownst to many, there is a partial late claiming bar in 35 USC 135(b)(1) and (2). This is not just an interference statute. It is also a one year statutory bar to ex parte late-claiming of substantially the same subject matter as a claim that someone else published or patented more than a year earlier. That was clarified by no less than Judge Rich [overruling his own prior dicta in In re Sasse] in In re McGrew, 43 USPQ2d 1633 (Fed Cir. 1997).
As to “dedication” that is not entirely dead either. Whatever life may be in 102(c), there is a CAFC decision that issuing a patent with claims that exclude a specification species has dedicated that species unless it is being claimed in another pending application.
Or did I still miss the question?
B
How do you tie your shoes in the morning, if you don’t mind my asking?
Which claim set is preferable — A, B or C?
A1. An assembly comprising:
a frame; and
a widget attached to the frame.
A2. The assembly of claim A1 wherein the widget defines a FIRST widget, and further comprising a SECOND widget attached to the frame.
B1. An assembly comprising:
a frame; and
a FIRST widget attached to the frame.
B2. The assembly of claim B1 further comprising a SECOND widget attached to the frame.
C1. An assembly comprising:
a frame; and
a widget attached to the frame.
C2. The assembly of claim C1 further comprising a SECOND widget attached to the frame.
Thanks.
As long as it is not a statutory bar, and not “by another,” and the subject matter is not claimed, can’t you overcome the reference via Rule 1.132 declaration?
Comments are closed.