We begin claim drafting today in my patent law course. I wonder what Patently-O readers think of the following patent office rule found in 37 C.F.R. 1.75(e)
Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:
- A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
- A phrase such as “wherein the improvement comprises,” and
- Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
Recognize here (1) as a promulgated rule, the provision has the force of law but (2) very few claims follow this suggested form.
All this talk of the distinction between US Jepson and EPC 2-part claims reminds me of one of my favorite EP granted claim sets:
1. An article comprising A, B, C, characterized in that the article further comprises D, E, F.
7. An article comprising D, E, F, characterized in that the article further comprises A, B, C.
14. (yet another mish-mash of the same 6 elements, some characterizing, some pre-characterizing).
The applicant (eventual proprietor) had to argue strenuously across multiple communications in order to keep all 3 independent claims together (inasmuch as they were all drawn to an article); meanwhile, no one in the E.D. seemed to take notice that the claims more or less canceled each other out.
Mellow, please share with us the serial number of the patent, a collectors’ item for sure.
Mellow, I see that it’s your favorite issued EP patent. It could be mine too, if you will share with me its serial number. Can you do that please?
That’s pretty funny.
Cancel each other out? How so?
A vehicle having an engine, tires and a steering wheel characterized in that it also has a transmission, brakes and seats.
A vehicle having seats, steering wheel and tires characterized in that it also has an engine, transmission and brakes.
If the combination is novel and each body includes at least one novel aspect, they just claim the same thing while emphasizing different aspects. No?
Les,
Your example is not the point being attempted to be made.
Using your example, look at the following two (modified) claims:
A vehicle having an engine, tires and a steering wheel characterized in that it also has a transmission, brakes and seats.
A vehicle having a transmission, brakes and seats characterized in that it also has an engine, tires and a steering wheel.
Now do you see the point?
wherein the water detector is configured to be reliably installed by an untrained installer or a homeowner and to not require the services of a plumber or electrician to perform installation
LOLOLOLOLOLOLOLOL
Wow.
As a promulgated rule with the force of law, 37 C.F.R. 1.75(e) authorizes the format described in the rule (aka “Jepson claim” named after Ex parte Jepson, 243 Off. Gaz. Pat. Off. 525 (Ass’t Comm’r Pat. 1917)).
This format is discretionary and has been used to avoid rejections during prosecution such as double-patenting. However, it has become a disfavored practice when there is no benefit to the inventor in admitting the elements of the prior art and is rarely used after Judge Newman noted that it is an exception to “the modern style, [where] patent claims no longer merely claim the salient features, the ‘heart’ of the invention.” Pennwalt Corp. v. Durand-Wayland Inc., 833 F.2d 931 (Fed. Cir. 1987) (en banc) (Newman, J., dissenting).
Trying to be helpful here. The EPC dates from 1973. The text of its Rule 43(1) is.
“The claims shall define the matter for which protection is sought in terms of the technical features of the invention. Wherever appropriate, claims shall contain:
(a)
a statement indicating the designation of the subject-matter of the invention and those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, form part of the prior art;
(b)
a characterising portion, beginning with the expression “characterised in that” or “characterised by” and specifying the technical features for which, in combination with the features stated under sub-paragraph (a), protection is sought.”
Relevant to the discussion here, in the Rule 43(1) text, note i) “where appropriate” and ii) “in combination” part of the prior art.
“Wherever appropriate,” as stated at EPO and “Where the nature of the case admits,” as stated at USPTO, strike m as both being conditional in exactly the same way.
Some smart ash lawyer will find a difference, but that is the “fun” of posting here, isn’t it?
The EPC Rule states “shall”. The CFR states “should”. Do you see any difference there? I do.
I do see the shall vs should difference.
But neither “should” nor “shall” comes into play unless the condition precedent of “Wherever appropriate,” or “Where the nature of the case admits,” is satisfied.
SVG, you might be surprised, how often, under the EPO’s Problem and Solution Approach, it is (in the opinion of the Examining Division) “appropriate”. That’s an example of when prosecution at the EPO can require significant advocacy skills and a high degree of professional judgement.
ah, my comment (in transition – and caught in the “don’t have a dialogue” filter) touches on the very thing that you hint at here: WHO exactly (and how) is this whole “appropriate” thing managed.
I would dare say that this though is NOT necessarily an item for “significant advocacy skills” as this should be a mere ‘processing’ step…
(with the caveat that within the processing, IF the applicant does not control and must, for whatever reason, convince the Office as to “appropriate,” then advocacy skills certainly would come into play)
…and, if not a mere processing step, I would be curious as to how exactly the law carves out this ‘power’ in your sovereign.
The EPC states that the task of the EPO is to grant patents. The Implementing Regs of the EPC state as the task of the Examining Division (ED) to examine whether the patent application meets all the patentability provisions, not only of the EPC but also of its Imp Regs (including Rule 43). The ED must in every case issue a Decision, either grant or refusal. A refusal decision is appealable (and often is appealed).
It is a rare case, where a Refusal Decision issues for failure to comply with Rule 43(1) in that the ED thinks a c-i-t form of claim is “appropriate”, Applicant thinks not and cannot convince the ED otherwise, and the ED feels strongly enough about the issue to refuse the application for that reason alone.
How rare?
Ever?
Max, are there guidelines for determining when it is “appropriate?” Or is it up to the whim of Examining Division person handling that case?
Guidelines Val? You mean like an EPO MPEP? Sure. Here:
link to epo.org
LOL – here is an 889 page document.
Don’t worry, the word “appropriate” only appears 194 times in those 889 pages.
So…. the precise helpful part of those 889 pages is…?
After brushing away dozens of non-helpful “appropriate” references, I note that page 566 indicates that Section 2.3.2 IV-3 is labeled “Two-part form “wherever appropriate.”
Page 601 continues (with section 2.2 Two-part form):
Where, however, a claim relates to a novel combination, and where the division of the features of the claim between the prior-art part and the characterising part could be made in more than one way without inaccuracy, the applicant should not be pressed, unless there are very substantial reasons, to adopt a different division of the features from that which he has chosen, if his version is not incorrect.
2.3 is also helpful.
and then to 2.3.2:
2.3.2 Twopart form “wherever appropriate”
When examining whether or not a claim is to be put in the form provided for in Rule 43(1), second sentence, it is important to assess whether this form is “appropriate”. In this respect it should be borne in mind that the purpose of the two-part form is to allow the reader to see clearly which features necessary for the definition of the claimed subject-matter are, in combination, part of the prior art. If this is sufficiently clear from the indication of prior art made in the description, to meet the requirement of Rule 42(1)(b), the two-part form should not be insisted upon.
You are welcome.
😉
As to that condition precedent, I wonder which party has the authority to determine whether or not “appropriate” has been obtained.
There is a H U G E (and fundamental) difference between an applicant determining whether or not something is “appropriate,” and the Office making that determination.
Further, if it is the Office making this determination, are the parameters of such a decision spelled out (in writing, with any possible challenge path, also in writing)….?
If it is the applicant making this determination, does the Office have the power/authority to challenge the determination? Would such authority to challenge also be written out (as well as possibly providing a rational basis for the challenge and how such a challenge would be met, including what may suffice for an “acceptable” or “not acceptable” answer to any such challenge)…?
Short of having a detailed system already in place, this appears to be an optional item (even as it is cloaked in the EP as something more with the “shall” verbiage).
And yes, these thoughts may also apply in the US sovereign, which then even more indicates the lack of power of the US patent office to levy ANY “penalty” – and no, Malcolm, this has ZERO to do with any notion of whether or not someone wants “patent quality” – no matter how that term may be defined.***
*** to be clear, we should be talking about “patent examination quality” as opposed to “patent quality,” as anyone who knows anything about processing knows that the Office can only control that which it is allowed to control, and efforts otherwise are d00med to failure – see again the Tafas case, which, sadly, seems to have been forgotten by many here.
Maybe the the system claim in Alice would have looked like this:
A data processing system having a communications controller, a data storage unit, and a computer coupled to said data storage unit and said communications controller, wherein the improvement comprises:
the data processing system enabling the exchange of an obligation between parties,
the storage unit storing therein (a) information about a first account for a first party, independent from a second account maintained by a first exchange institution, and (b) information about a third account for a second party, independent from a fourth account maintained by a second exchange institution; and
the computer configured to (a) receive a transaction from said first party via said communications controller; (b) electronically adjust said first account and said third account in order to effect an exchange obligation arising from said transaction between said first party and said second party after ensuring that said first party and/or said second party have adequate value in said first account and/or said third account, respectively; and (c) generate an instruction to said first exchange institution and/or said second exchange institution to adjust said second account and/or said fourth account in accordance with the adjustment of said first account and/or said third account, wherein said instruction being an irrevocable, time invariant obligation placed on said first exchange institution and/or said second exchange institution.
the data processing system enabling the exchange of an obligation between parties
Good lord what a pile of ridiculous g@ rbage.
And it only gets worse from there.
why on earth would you even bother teaching someone to draft a claim like that?
Dennis the filter is silly. I just replied to Silicone Valley Girl’s 112111 and it blocked me. It seems it cannot distinguish serious dialogue from frivolity. That’s a great impediment to worthwhile conversation in these columns, sorry to say.
“It seems it cannot distinguish serious dialogue from frivolity. ”
We agree on this point.
The “count” aspect – even (especially) as applied – is way out of whack.
But when a certain desired narrative cannot be obtained with objectively applied editorial controls….
So, I’m reading this question slightly different from most above. I’m reading “improvement” in terms of Enfish case law, as means for patent eligibility. For example:
17. A data storage and retrieval system for a computer memory, wherein the data storage and retrieval system improves the performance of the computer memory, compising:
With regards to that, I don’t see much issue, and I’ve seen a fair amount of the examining corp require some sort of “improvement” in the claims when allowing based on Enfish. While I don’t think those amendments should be required to win an Enfish argument, I don’t see this as actually having much weight to what is going as the statement is an inherent part of the system, and now it’s just being spelled out.
I remember when I was an Examiner trainee, my SPE told me that “while statutes have the force of law, and can not be waived, the Office has the authority to waive the CFR rules.” Granted, we did not do this often, but the Examiner’s did have that authority.
The CFR rule to which the OP referred is one of those that has never been enforced, and the beginning of it states “where the nature of the case admits.” Reconcile that with the fact that the inventor (or inventor’s counsel) has no obligation to do a search at all – and if one has not done such a search, then one lacks complete knowledge as to what the “conventional or known elements or steps even are” in the context of the combination being claimed.
So, I don’t see an issue at all.
The other thing about this is even if what you did is an improvement, the odds are high that what was improved has also changed so that the scope of the improvement is different than the prior art. (So, your improvement works on a larger set of things than the old prior art.)
Kernen: You know what? Life is weird too, because I think it’s weird that Adam Smith wrote that book in 1776 and it…
Buffett: Yeah, exactly.
Kernen: That’s not a coincidence. That when you’re able to own an idea, and you got, like, a court system that will back up your ownership of patent law, and then you can commercialize it, I think maybe that was it. I think intellectual property, and property rights, and things like that. Because prior to that, after 10,000 years of spinning our wheels no one … What was the average GDP per person? And then all of a sudden, starting when you were able to own an idea and commercialize it, suddenly it exploded, GDP, like, in multiple times.
Buffett: It unlocked human potential, Joe. I mean, you know, we aren’t smarter now than they were 240 years ago, and we certainly don’t work harder. But once you started opening up human potential,the sky’s the limit. And it’s just starting.
link to cnbc.com
So, how do the propagandist account for the innovation engine of the USA?
People like Mark Lemley are just a disgrace to academia and the human race.
In these columns, I am constantly reminded that “A man sees what he wants to see; and disregards the rest.”
Not to mention that man with the legendary big ol’ hammer, for whom every comments column is yet another nail.
Could you be a little more vague and general MaxDrei?
More vague? More general?
Sure. Read what you want to read, Night, from within the world’s great storehouse of non-patent literature, and then disregard all those other theories about what has made the USA the world’s greatest engine of Innovation that don’t fit with your own opinion.
For example, is the USA pre-eminent in the field of programs for computers? For how long now has it been pre-eminent? And was that long before the USPTO start routinely granting patents on programs for computers? Should we ask Bill Gates?
MaxDrei, a better question is how long have information processing patents been around? 22 years at least and really patents started to become a force back in the mid-1980’s.
And, actually, I was a developer with a start-up starting in the early 1980’s. What happened was that trade secrets were started to rule the world. Intel was making a processor so that your code could not be reversed engineered. Employment contracts forbad you to disclose anything that you were working on.
Guess what? All that went away with patents. There is no question from anyone that has lived through the rise of software from the late 1970’s to now (like me) that patents are at the heart of the success.
Since the 1970’s there has been, in the engine of innovation, an exponential rise in the amount of data being processed, and also in the engine of innovation a huge surge in patenting everything under the sun. I dare say, Night, that we can agree about that. The engine is running hotter than ever and will continue to do that, even more so if there is a prohibition on the impediment caused by patents on logic.
>>The engine is running hotter than ever and will continue to do that,
No that isn’t what I see. I see small groups of people trying to keep things secret now rather than trusting the patent system. I also see large corporations questioning patents altogether. I also see that patents are often why they spend so much on research.
Patents on logic? What are those? I hope you don’t mean information processing patents. You mean the core of what is driving innovation? You mean doing what the human brain did before? You mean patents on incredibly difficult science and engineering?
>>There is no question from anyone that has lived through the rise of software from the late 1970’s to now (like me) that patents are at the heart of the success.
This sounds like you’re saying that patents were more important for the growth of the software industry than the improvements in processing power, across the 70s and 80s.
Can you confirm or refute that?
I can confirm Ben that you sound like a third-class troll.
There is no question from anyone that has lived through the rise of software from the late 1970’s to now (like me) that patents are at the heart of the success.
ROTFLMAO
That’s some potent k00l-aid. Be careful out there, kids.
Ben,
I see NO such “one must be more important than the other” in Night Writer’s comment.
Perhaps a clarifying question for you: do you understand the equivalency (in patent terms) between the various “wares” that are in a computer system?
If, as I suspect, you “feel” that software somehow is NOT equivalent to hardware (or even firmware) – again, in the patent sense – then it is your feelings intruding into how you are viewing what people are writing here – and doing so in a rather unhelpful way at that.
August 31, 2017 at 3:32 pm
>>I can confirm Ben that you sound like a third-class troll.
(since apparently purely ad hominem posts are acceptable)
Crawl back under your rock, you has-been.
There was nothing vague about this.
The main problem with Jepson style claims nowadays is that while combo
ABC may well be old in one reference and the addition of D could well be new over that reference there could very well be a reference that shows ABD separately. If that is the case, what then do you put in the Jepson clause? C+D? What happens when these issues multiply by a dozen from a dozen refs for half a dozen features/combos of features?
Jepsons are for fools. You are making admissions and asking for your claim to be piecemeal examined.
I have written hundreds of claims, and in every one of them the “nature of the case” has conveniently precluded the use of Jepson claims.
Also, the prior art admission Jepsen format is totally devoid of context. However, context is often critical to determining obviousness.
Yes I agree you nasty looking lobster creature.
I think the rule is horrible for applicants.
1) it encourages the claim to NOT be read as a whole
2) it encourages the unintentional admission of prior art, that may not necessarily be prior art.
Specifically, regarding unintentional prior art admissions, sometimes the inventor assumes that certain things are prior art, because to her/him that was their first solution to the problem or because that solution seems so simple, when in fact the inventor has not real basis for assuming that what they thought was prior art was indeed prior art. Also the format encourages people to look for prior art where there might not be any prior art known to the inventor or anyone else that is involved in writing the claim.
The EPO 2-part (characterized in that) claim should not be seen as comparable with a Jepson.
Why? because in the pre-characterizing part of the claim one recites ONLY those features indisputably disclosed/enabled, in combination, in D1, where D1 is the “realistic starting point” document for the EPO’s unique “problem and solution approach” to the exploration of the obviousness issue. Without the PSA, the 2-part claim is meaningless.
A Jepson is totally different. It says something about what is “conventional”. Why would an Applicant choose to make an admission that a combination of the features in his claim is “conventional”? What is “conventional” anyway? There is no such admission in an EPO 2-part claim.
MaxDrei,
Do applicants upon initial writing of their applications set forth exactly which reference is to be considered to be D1?
If not, how then does the D1 reference (I am supposing that this reference then becomes “known” only after the application has been submitted to the Office) become integrated into claims without offending the “no new matter” rule?
And yes, I consider adding something if only to distinguish the rest of the claim as in fact adding new matter.
How? Typically by amending claim 1. One strikes out the word “wherein” and replaces it with “characterized in that”.
Whether you “consider” that particular amendment to add matter is not of interest.
Incidentally, the 2-part form is potent, in concentrating the mind of the wilfully blind US attorney in love with his own poor claim. What is relied upon for novelty over D1 is revealed explicitly, in all its poverty.
Perhaps I was not clear. I was not asking about the mere change in phrase “wherein” or “characterized in that,” but was asking specifically about the D1 reference.
Exceptionally, anon, this time you were clear. You raised a very important issue, at the cutting edge of professional competence of practice before the EPO.
At the EPO, if the drafter/prosecutor is not very careful, he navigates his client into the notorious Bermuda Triangle (whose vertices are Articles 54, 84 and 123(2) of the EPC). The subject is at the cutting edge of professional competence at the EPO.
And my answer was specific to the D1 reference. It used the word “typically” to avoid getting into the complexity.
Handling well-drafted cases from the USA (as one does) one finds that the drafter already knew the closest art, and chose the word “wherein” deliberately, given that knowledge of the background to the claimed subject matter. In such cases, the only amendment needed is to replace the W word with c-i-t.
The claims in the Bermuda triangle are typically those drafted by people with no experience of the constraints of the First to File world, by drafters with inadequate knowledge of the prior art, lacking any thought to hedge against the known unknowns in the world of the prior art. Sometimes they are beyond help.
“And my answer was specific to the D1 reference. It used the word “typically” to avoid getting into the complexity.”
So I look at your answer again:
Ah yes, you do use the word “typically,” along with “amend,” but you nowhere mention D1, but instead you delve into the word play between “wherein” or “characterized in that.”
Sorry MaxDrei, but I can divine not the aspect of an answer to my question.
Your follow-on comment appears to be complimentary, indicating that I have alighted upon some “cutting edge of professional competence,” but you you still do not address whatsoever the notion of how – without adding new matter – any sense of D1 is all of a sudden captured in a patent application written complete prior to ANY sense of D1 being D1.
Unless, as I postulated to you in the original question, does the applicant SET D1 at the onset?
You appear to lean this way with your comment of “Handling well-drafted cases from the USA (as one does) one finds that the drafter already knew the closest art” – but that is mere hindsight, unless – again – as I postulate, the applicant has the power to set D1.
I put it this way because (you may not remember), OFTEN here in the States, the examiner does NOT use any of the possible references supplied by (“including those very same “well-drafted cases from the US”) the applicant, and instead OFTEN the first pass of examination here reflects a key word search from the claims (and often as well, it appears that the specification itself has not been read for proper context).
Your “answer” of “. In such cases, the only amendment needed is to replace the W word with c-i-t.” simply is NOT a workable answer on this side of the pond.
Further still, your answer is still no answer whatsoever to the notion of introduction of new matter, as the mere “replace the W word with c-i-t” would ONLY work IF the D1 reference is already IN the specification.
Your “answer” runs smack into the problem here of patent profanity (read that as an archaic practice long ago abandoned because court effects have raised the risk of such practice) of in depth discussions of state of the art and OTHER people’s inventions.
I suspect that your “answer” merely reflects your decades long practice, and is not a proper reflection that takes into account the changes (judicially forced and otherwise) that have occurred.
In my experience, EPO examiners will require amendment of the background sections of specifications to explicitly identify and describe the “D1” references they identify, notwithstanding the fact that the references were not in the specifications to begin with. MaxDrei can explain how this practice implicates Article 123(2), if at all.
[Y]ou still do not address whatsoever the notion of how – without adding new matter – any sense of D1 is all of a sudden captured in a patent application written complete prior to ANY sense of D1 being D1.
Forgive me if I am merely telling you something that you already know, and Max can answer for himself, but I think that the answer to your question lies in the fact that the EPO just has a different idea than does the USPTO about what constitutes “new matter.”
Here in the U.S., you would never get away with amending your background section to reference new art of which the applicant was not aware at filing, but which was discovered during examination. In the EPO, this revision of the background section is not only allowed but positively required. Similarly, here in the U.S. one cannot proviso out novelty defeating disclosures in pre-AIA §102(e) art (analogous to EPC Art. 54(3) art).
In other words, while you, dear Anon, might consider that “new matter,” the sovereign authorities of the EPC have decided not to consider it “new matter” (as is their right), and it is in that discrepancy between US and EPO law that the solution can be found to your conundrum. You are correct that one cannot always count on being able to amend the claim to reflect the content of D1 without adding new matter (as defined by US standards), but the EPO permits the addition of that new matter (but not other sorts of new matter).
Here in the U.S., you would never get away with amending your background section to reference new art of which the applicant was not aware at filing, but which was discovered during examination
Are you certain? 35 USC 132 only prohibits the addition of new matter to the disclosure of the invention.
And what if I make that amendment at the international stage? Do you think the U.S. examiner would even notice it during prosecution of the 371 application? Once that application issues, is there any legal basis for challenging that amendment?
Well, you got me there. Precisely because I have considered it so impossible, I have never tried to update the background section of a U.S. application. Because I have never tried it, however, perhaps I am overstating its impossibility.
Has anyone here ever updated the background section of a U.S. application (or tried to do so)? Did you get a lot of push-back from the examiner, or were the amendments entered without difficulty?
You’re making it too complicated, anon. Claim 1 is “A widget, comprising A+B+C+D.” D1, which you may know about or which may only come up during examination, discloses A+B+C. Once the examiner asks you to, you amend the claim to “A widget, comprising A+B+C, characterized in that the widget further comprises D.”
No new matter. And pretty easy, if you’ve actually described and claimed a patentable distinction.
As Max says, however, this is NOT applicable to US prosecution, because we simply don’t use the concept of the closest single reference.
hmmm. not all comments are making it through (shockers, I know).
Dan H, elements within D1 are nto the same as references explicitly to D1, so no, I am NOT making this too complicated.
The better answer appears to be coming from Greg – that there is a material difference in what the different sovereigns allow.
What a coincidence! I just looked at Patent Docs, to read in the most recent post a “representative claim” (from a party pleasingly called McAward) featuring the following gob-smackingly, jaw-droppingly grotesque wherein clause:
wherein the water detector is configured to be reliably installed by an untrained installer or a homeowner and to not require the services of a plumber or electrician to perform installation
Not very impressive, is it, lads and lasses? Not to you, not to me, and certainly not to the PTAB. But as none of you includes in the claim anything not needed to confer patentability, we must suppose that these words are decisive for patentability, as usual with any wherein clause.
Would any of you though, resident in the world’s greatest innovation motor, counsel your client to petition the PTAB for a patent to issue on that particular so-called “invention”?
Max, I can beat that. I have seen claims that read right on the prior art with the only distinction a matter of increased performance:
1. The better car, comprising:
the old car claimed in combination; wherein the car is configured to go faster.
The disclosed improvement of course, might be an improvement to the engine, aerodynamics, tires, or whatever. But the claim covers them all.
And patent attorneys slapped themselves on the back for protecting their clients.
Why would an Applicant choose to make an admission that a combination of the features in his claim is “conventional”?
To make it clear that those elements are known in the art and don’t need to be described in detail.
That took two seconds.
Applicants make these admissions routinely in their specs, by the way. All the time. Every day. By the many thousands.
It’s not a big deal. Well, I take that back. It can be a big deal if you are just scrivening some horseshirt and you haven’t innovated diddlysquart. And that happens, too. Most of the major players in that category tr 0ll here and spend the rest of their time mewling over at Big G.’s place.
OK MM. I see all that. I was thinking there is a difference between admitting something is “known” and that something is “conventional”.
And: in what I write, the word “combination” is important.
EPO c-i-t claims have a pre-characterizing portion that (typically) recites a combination of features found in the prior art ONLY in that one patent publication D1. That’s a feature of EPO-PSA, not a bug. These pre-characterizing parts of EPO 2-part claims are never a declaration of a “conventional” combination of technical features.
Jepson claims are something else entirely.
Max, I am curious. If the EPO professional scrivener sees the invention as a combination of A-B-C-D-E, and his/her knowledge of the prior art shows one reference with A-B-C and another reference with B-C-E, how does he or she pick which is to be D1?
Or does he only recite B and C in the precharacterizing clause because that combination is the only part of the combination that they have in common and neither reference is really a D1?
Does the EPO professional tell the EPO or other office where the application is being filed that the two prior art references exist? Does he say “I wrote the claim this way because of these two prior art references disclose what they disclose?”
SVG, the c-i-t claim is not fit for your ABCDE invention and, as Paul Cole notes elsewhere in this thread, the EPO will not insist on it because a c-i-t is not mandatory.
Don’t let your scrivener file a c-i-t claim on your behalf unless it is divided relative to a D1 which truly is a realistic prior art starting point.
But when D1 is (as is often the case) Applicant’s own prior publication, and genuinely a realistic starting point for the notional PHOSITA, a c-i-t claim is often a handy way to show how patentable the claimed subject matter truly is.
Does that help?
yes, thanks.
“Recognize here (1) as a promulgated rule, the provision has the force of law but (2) very few claims follow this suggested form.”
Yeah, but it says “should,” not must. And it appears to be the consensus of the bar, that very few cases admit its use.