Jepson Claims (Part II)

by Dennis Crouch

In an earlier post, I wrote about the Code of Federal Regulations’ requirement that patent claims “should” be drafted in Jepson form. 37 C.F.R. 1.75(e).  This claim structure uses the preamble to particularly identify the elements of the invention known in the art with the body simply reciting the “portion of the claimed combination which the applicant considers as the new or improved portion.”  In my view, Jespon claims are so nice to read because they actually spell out what has been improved by the invention.  Unfortunately, they also are seen as increasing the chance that the patent will be both narrowly interpreted and found invalid – and that the statement regarding the prior art will be seen as an admission.  For much these same reasons, most patents no longer particularly identify their “invention” beyond stating that it is embodied by each claim taken as a whole.  Prof. Kayton, who trained generations of patent attorneys in his PRG classes was particularly adamant about avoiding Jepson claims.

Gene Quinn on his blog writes “No patent attorney in their right mind would follow this suggestion.” (referring to Rule 1.75(e)).  While I largely agree that Jepson claims are problematic for the reasons stated above – I would caution patent attorneys to ensure that their ethical guidelines are being met.  In particular, when the law says that attorneys “should” do something, it seems improper to entirely ignore the law’s suggestion. Rather, the patent attorney should consider – as stated in the Rule – whether “the nature of the case admits” such a claim form.  An additional ethical trick when thinking through this is to consider whether a family-member patent claim has already been (or will be) filed in a separate jurisdiction that requires this form.

 

In a 2009 post, Aaron Feigelson reported some interesting data on the use of Jepson claims in the US.  Essentially that its use had dropped tremendously as shown by Feigelson’s chart below (reproduced with permission).

Jepsonpercent

Feigelson’s data just ran through 2009 and may actually overstate the prevalence of Jepson claims because he includes any patent with the word “improvement” in the claim. I just updated the data up through 2017 with the chart shown below – looking for patents having at least one claim with the following phrase “the improvement compris.”  As you can see, less than 1 out of every 1,000 newly issued patents is in this claim form. JepsonPerYear

The most recent patent with a Jepson claim is U.S. Patent No. 9,744,559 covers the use of nanoparticle materials for “high contrast surface marking,” and is only found in Claim 24.

24. In a thermally activated, chemically based marking method comprising the steps of:

applying a layer of a marking composition to the surface of a substrate and irradiating said layer with radiant energy which is absorbed by at least one component of said marking composition,

the improvement comprising the use of marking compositions comprising amounts of at least one pigment encapsulated in silica nanoparticles and further comprising nanoparticles of materials selected from the group consisting of silica, metal oxides and metal compounds comprising at least one of tungsten, molybdenum and chromium, and combinations thereof,

wherein these materials are all colloidally suspended in a liquid comprising aqueous and/or organic solvents, said amounts being sufficient to produce a marking layer atop said substrate having improved properties including at least one of stronger bonds, better color properties, and finishes smooth enough not to retain bacteria.

55 thoughts on “Jepson Claims (Part II)

  1. My exchanges with anon over the week-end has prompted another thought, set off by the words Dennis includes in his post, namely:

    “…whether a family-member patent claim has already been (or will be) filed in a separate jurisdiction that requires this form.”

    Is Dennis alluding to an EPO 2-part claim, the one that includes the words “characterized in that”? I take it that he is. I imagine that, for those US law firms that receive filing cases from addresses in Europe and Asia, it is routine work, to strike the words c-i-t from the independent claims received from overseas, and replace them with “wherein”.

    It occurs to me that while, at the USPTO, examination of a Jepson claim on its merits is these days rarer than a Black Swan, at the EPO a c-i-t, 2-part claim is debated, in nearly every application prosecuted in that Office. By now, they are the most usual claim format to be litigated in Europe.

    Dennis reports that:

    Prof. Kayton, who trained generations of patent attorneys in his PRG classes was particularly adamant about avoiding Jepson claims.

    But, given the striking similarity between CFC 1.75(e) and EPC Rule 43(1), the need for patent attorneys to take to issue those claims that will survive best in the litigations of the future, and anon’s comments over the week-end, I wonder whether everybody here agrees with Prof. Kayton, about how the courts will view Jepson claims in the future.

    1. examination of a Jepson claim on its merits is these days rarer than a Black Swan, at the EPO a c-i-t, 2-part claim is debated, in nearly every application prosecuted in that Office.

      THAT is an interesting juxtaposition….

      about how the courts will view Jepson claims in the future.

      I think that you forget the context of Jepson claims. Jepson claims and that “future in litigation” is NOT litigation in Europe of the (seemingly) near-identical c-i-t form, but rather, is litigation in the US where the existing patent profanity of our judicial reach has actually accelerated that asymptotic trend towards oblivion in our Sovereign.

      Your last comment still reads as if you are viewing the world solely through the lenses that you are comfortable with.

        1. LOL – Did you look at the graph of the Jepson claim in the US sovereign…?

          That would be analagous to the “pendulum swinging back” for buggy whips.

          Come MaxDrei, you have been so good on trying to have a real conversation. Let’s not inject the impossible as some necessary plank to your views.

  2. Let’s try a hypo then, to stimulate debate. Hypo’s are never satisfactory, and there’s a weakness in mine. But never mind, if it helps the debate.

    Suppose stents (cylindrical, network of struts, mesh, expandible) are of stainless steel and your invention (F) is to use a shape memory alloy (nitinol) instead.

    Most of you will appreciate what a gynormous (and real) contribution to the state of the art nitinol was.

    Your issued EPO claim is:

    Stent, exhibiting (features) ABCDE, and characterized by F.

    No doubt there, then, what you claim to have contributed to the art of stents.

    Your Jepson claim is: In a stent, the improvement comprising: ABCDEF.

    But in the USA preambles are not always strictly limiting, I gather. Now, if that is so, might not the EPO form of claim give you wider scope of protection, even in the USA?

    1. Not to pick on you MaxDrei (your answer below is much appreciated – at least in part).

      But….

      Your Jepson claim is: In a stent, the improvement comprising: ABCDEF.

      does not seem to follow your attempted set up of the improvement of merely (F).

      In other words, the Jepson claim instead would read:

      In a stent of ABCDE, the improvement comprising F [wherein F relates to the stent by…] OR [that…]

      I am not sure that you want to (or should, given the explicitly different treatment of preambles for Jepson claims) try to introduce the notion of the SEPARATE aspect that sometimes preambles in our sovereign are not always strictly limiting. This then wrecks the question of your final paragraph.

      As I see no other question in your hypo, there is nothing left over to debate (or to stimulate debate).

      1. At 7111111 below, anon, if I understand you right, you state that it is no greater admission to concede that something (say, feature combination ABCDE) is “conventional” than it is to concede that it is disclosed nowhere else but in D1, just one out of millions of published patent documents.

        Have I understood you right? If so, that would explain why so many of the US attorneys who instruct me are so averse to an EPO-style c-i-t claim (in which the claimed subject matter is characterized by F). Even though the extent of the admission is only that ABCDE is disclosed in D1 (just one out of millions of obscure patent publications) they suppose that it constitutes an admission that ABCDE is conventional in the art.

        At least in the UK, an admission that ABCDE is conventional would likely turn a failing obviousness attack on ABCDEF into a successful one. I’m surprised that it makes no difference in the courts of the USA.

        1. The only possible sense of reasoning that I see with your continued efforts to make a difference without a distinction into a difference with a distinction is something that you have not yet enunciated, MaxDrei.

          I think that perhaps the use of the phrase “prior art” has tripped up our attempts at understanding each other.

          In the States, it is well known that the term “prior art” means something different for a 102 rejection than it does for a 103 rejection. Perhaps we are not always precise in this when we discuss what it means for something to be prior art.

          I think that you are using the term “prior art” with the word “known” as a 102 style item, with the term “prior art” with the (attempted) difference of “conventional” as that “little but more” for a 103 style item.

          But that has not been how the term has been used in the discussions for this topic for THIS sovereign.

          The term “prior art” – and what an applicant so admits – is already fully taken as being the “prior art” for the 103 style item. As we are talking about combination things, the admission of the thing – in combination – is an admission that works for the 103 style item.

          Let’s take a closer look at your last paragraph and see how this might work itself out:

          At least in the UK, an admission that ABCDE is conventional would likely turn a failing obviousness attack on ABCDEF into a successful one. I’m surprised that it makes no difference in the courts of the USA.

          Are you telling me that – for your sovereign – an admission that ABCDE is merely known (as opposed to admitting that it is conventional) makes for a failing obviousness attack on ABCDEF?

          How does the characterization of ABCDE apart and separate from the additional combination with F change when that first part (alone) is deemed prior art – or not?

          Here, art that has ABCDE may or may not be prior art. That is a part of the 103 analysis and that is what separates the “world” of prior art that is 102 prior art from the different world of prior art that is 103 prior art.

          1. oops – hit enter too soon.

            Take that same last paragraph of yours.

            Saying that this is “conventional” then should only be a statement about that same separate ABCDE – and (again) quite apart from saying anything at all about how F may or may not be obvious in view of what is EITHER known or conventional.

            The focus ONLY on the ABCDE is (it appears) not enough. Thus whether or not ABCDE is merely “known” or is conventional cannot turn any obviousness attack one way of the other. It is simply not enough (as I am attempting to see how your sovereign is treating the singular item ABCDE).

            1. It will take time to try and figure out what you are asking, anon. For obviousness attacks in the UK, for example, you start from the PHOSITA and his common general knowledge. To that you can (except in very special circumstances) add a maximum of one prior art reference. Hence, it matters what is within the corpus of common general knowledge of the PHOSITA. Stuff that is conventional, for example.

              1. add a maximum of one prior art reference.

                I have learned something from you MaxDrei – never would I have imagined that obviousness is so constrained as to be limited to two references (if I read your comment correctly, you get D1 and ONLY get to “add a maximum of one prior art reference.

                In our sovereign, it is comparatively rare that a 103 rejection is made with just two references.

                But I think that you may be “couching” references in your “stuff that is conventional” comment.

                How does your examination group go about showing whether or not something is “conventional?”

                I think that if like our examination group (bound here by the APA and the requirement to show evidence of any type of assertion of conventionality), that this showing of conventionality is done with….

                …prior art references.

                Which rather eviscerates that “add a maximum of one prior art reference” comment.

                By the way, you are engaging in the circularity that I have already noted with the attempts at differences without distinctions. The “corpus of common general knowledge of PHOSITA is made up of prior art references (and official notice, but that official notice is heavily constrained, at least in our sovereign).

                1. In the courts of England, anon, it is not even D1 + D2. An assertion that a duly issued claim embraces obvious matter is made on the basis of the PHOSITA’s cgm, alone or supported by a specific prior publication.

                  How is the cgm established, by the testimony of technical experts, one for the claim owner the other for the party accused of infringement.

                  It might surprise you, but within Europe the courts of England are seen as being ferocious on obviousness. It’s all down to x-exam, you see, of those technical experts, right in front of the nose of the single judge who is trying the case.

                  The c-i-t form of claim is an artefact of the EPO’s pre-issue approach to obviousness, the well-known “Problem and Solution Approach” which starts with the identification of “D1” the most realistic “starting point” within the published prior art. The courts of England are not into PSA, so neither is the UK’s Patent Office.

                2. You have not explained what “cgm” comprises….

                  As I noted, you appear to be “couching” and hiding behind that term. What exactly would those called for experts rely upon? (at bottom, that would be prior art references)

                  Either you have ONLY the two reference obviousness limitation or you do not have that limitation.

                  Which is it? – this is question with only a binary answer.

                  (and thanks for spelling out that you are talking about two different non-US sovereigns)

                3. MaxDrei,

                  You posted the same hyperlink twice.

                  AS to one or more of the 35 comments, I am not sure if any are mine – they are all “Anonymous,” are they not? (except of course, the one single comment attributable to you)

                4. That was an interesting read, MaxDrei – but clearly not so clear cut as to how it aids in our discussion.

                  Consider for example that the tone of the article appears to be questioning the logic used by Judge Birss.

                  Then consider the article’s own follow on questions:

                  Unanswered Questions

                  1. How should ‘expectation of success’ have been addressed for this case? Should Birss J have analysed this based on ‘would the skilled formulator have expected the solvent disclosed in Turi to have worked?’ instead of ‘would the skilled formulator have tested the solvent disclosed in Turi?’. Often in pharmaceutical cases there is little chance of success for any one candidate, but the skilled person would have had reasons to test it.

                  2. If the inventive step analysis follows the normal steps in development of a pharmaceutical product, is there a danger of failing the Technograph test? How can one determine one has not failed the Technograph test?

                  3. Are other incremental inventions also likely to be found obvious? It seems that often for such inventions the contribution is modest and there is a lot of relevant prior art.

                  4. What does it take for a combination product to be inventive? Does it need to have an element of inventive selection or a demonstration of synergy?

                  The Technograph test itself is interesting, as the manner in which Judge Birss’s decision is laid out in the article, Judge Birss would not pass that test.

                  Also – Having now read the article in detail (and again the comments) – it is indeed some (but not all) of the comments regarding actual possession of utility that are mine.

                  I chuckle though at your own chastisement there for “mixing sovereigns” and avoiding the points that I was making. Inviting a name calling like “tr011” in order to NOT answer on point comments is reprehensible.

                  Yes, different sovereigns have different rules – as YOU are so often reminded. But there was nothing in that exchange for you to use that name calling and avoid the items under consideration.

                5. Also MaxDrei – I will point out that I was abundantly clear in drawing distinctions between the sovereigns in those comments.

                  There was absolutely NO attempt to confuse or to adopt what one sovereign has chosen as somehow being the “correct” way for ALL sovereigns (which is the vice to which YOU are repeatedly admonished when you mistreat the differences between sovereigns).

                  If you look at the actual dialogue therein, you will see that those being pro-Pharma were indeed asking that Pharma be treated differently within a sovereign.

                  The point remains that the controlling law – and particularly on the points being discussed – (within the different sovereigns) is NOT drafted in the desired sense that Pharma gets to be be treated differently.

                  Certainly, a legal concept such as obviousness, with its emphasis on Person Having Ordinary Skill In The Art will – in its application – draw on the different art fields according to those art fields, but that difference is not the difference in law that was being sought by the pro-Pharma folks, and not the difference being challenged.

                  You should also note that instead of any actual answers to the questions posed, and counter points presented, the mere “name calling” path was taken.

                  Those questions (and counter points) remain on the table.
                  Name calling does not – and cannot – make them go away.

  3. Thanks for the ethics tip, Dennis.

    I’m not losing sleep over the fact that in 99.99% of my cases, I never considered the use of Jepson claims, let alone suggested them to my clients.

    And 37 CFR is only “the law” insofar as it governs PTO procedure. The PTO isn’t the one who’s on hook when a claim is litigated. If the claim is invalidated, the PTO has zero responsibility for having allowed that claim in the first place, and no financial obligation to anyone – applicant, patentee, IPR petitioner or defendant – for the time and money wasted in pursuit of, and as a result of the issuance of, an invalid claim. Likewise for claims that aren’t infringed.

    Finally, I don’t think you need to get into with Gene Quinn about anything, but if you’re going to pick on Gene, the statement you chose wasn’t the one to choose, because he happens to be right in that instance.

    1. As I noted at 6.1:

      Quite in fact, the prevailing FACT of patent profanity that exists to drive the use of Jepson claims to that one tenth of one percent level would be a much larger force to consider as far as any “ethics” are involved.

      If Prof Crouch intends to throw stones from his glass house, he probably should be more aware of the reality of patent prosecution. Especially as he is responsible for teaching attorneys how to practice law.

      I “get” the angle that the rule is still on the books, and that a per se treatment of “that rule should NEVER be followed” (which appears to be the take away** that Prof. Crouch has) might rub him the wrong way, but the actual lesson**** of that article is what Prof. Crouch SHOULD BE paying attention to.

      Further, the “sensationalizing” aspect should also properly note this quote by Quinn in that same article: “Overcoming the admission implicitly created by a Jepson claim is not an easy task and, therefore, Jepson claims should be avoided in all but rare circumstances.

      I wonder what the ethics are of sensationalizing….

      ** I note that the article written by Quinn was published more than five years ago. And given that basically the entire corp of patent practitioners disdain the use of Jepson claims, continuing the trend of use asymptotically into oblivion, clearly what Quinn espouses is NOT driven by Quinn himself.

      **** One of the enduring criticisms about law school is the lack of touch with actual legal practice “out in the real world.” I view this exchange here as a great sign of that criticism. Quinn’s teaching – when the full total real world practice – which includes patent profanity – is taken into consideration is FAR better than what appears to be an attempt at injecting “ease” based on an (incomplete) academic view of patent law.

      I will agree that laws (and rules) should mean something, but tht is quite different than the reality that sometimes laws (and rules) that are left on the books – and that are completely discretionary anyway simply lose any meaningful impact to the reality of legal practice.

      I could rub salt into the wounds here by asking which teacher is actually doing a better job for real life attorneys, and that point should probably be emphasized if indeed Prof. Crouch intended a personal ethical slight, but I am not completely certain that such a personal slight was indeed intended.

  4. As an aside from the main discussion…
    “…said amounts being sufficient to produce a marking layer atop said substrate having improved properties including at least one of stronger bonds, better color properties, and finishes smooth enough not to retain bacteria.”
    Doesn’t this have significant problems with indefiniteness?

  5. Prompted by Dennis’s hat-tip to Jepson claims:

    “because they actually spell out what has been improved by the invention”

    I have a question about examination of 1.75(e) at the USPTO.

    Suppose, just for the sake of argument, that a stent maker P invents D and applies at the USPTO and also at the EPO for a patent for an improved stent. P claims: “Stent, with the improvement comprising ABCDEF.”

    The EPO finds prior art X, which discloses stents with all of stent features ABCE and F (but not D). It grants P a claim in classic EPO form, namely: Stent comprising ABCEF and characterized by D.

    Assume (again for the sake of argument) that i) X indisputably discloses the combination ABCEF and renders it indisputably part of the prior art ii) feature D has utility only in the presence of every one of features ABCE and F iii) the feature combination ABCDEF is indisputably new, not obvious, definite and enabled and that P’s showing the US Examiner the issued European patent helps to bring the USPTO round to a favorable view of patentability.

    Now to my question: Does the originally filed claim (which suggests that the improvement is ABCDEF) comply with Rule 1.75(e) and does anything stand in the way of its issuing?

    After all, Dennis, you can’t deny that the claim does indeed “spell out what has been improved” namely, a stent.

    1. Afterthought: A European might think that a claim which asserts the contribution to the art to be no more and no less than “D” is likely to have a wider scope of protection for that invention than one which announces that the contribution to the art is the narrower “ABCDEF”. Would a US litigator come to the opposite opinion? If so, why?

      1. Your hypo suffers from massive self-collision, MaxDrei.

        As often happens when you attempt to ask questions, to which it appears that you want a certain view to result.

        For example, you insist “feature combination ABCDEF is indisputably new, not obvious, definite and enabled” but THEN you appear to want to claim “D” alone – without making the necessary proviso that “D” alone is ALSO “indisputably new, not obvious, definite and enabled.”

        As it appears from your hypo that the applicant did NOT start out with “D” alone, and that the application ONLY talks about the larger feature combination ABCEDF, how would it be considered (unless – gasp – new matter – that the AT THE TIME OF FILING that the applicant clearly possessed “D” alone and viewed “D” alone as her invention?

        A further collision is your assumption (for the sake of argument) of “ ii) feature D has utility only in the presence of every one of features ABCE and F” which precludes a claim of “D” alone – since a claim of “D” alone lacks utility by your own necessary setup.

        Further yet (even as you have already admitted that I have “caught you”), you STILL want to have the Jepson claim format equated with the EPO “cit” format.

        Not sure how this now is prompted by Dennis’ top of the hat (or otherwise).

        Please go wash your hands from what you have been slinging at the wall.

        1. Your comments, anon, help me, in my quest. Given that EPO’s Rule 43(1) and the CFR’s 1.75 (e) are so strikingly similar in text, how can it be that, in everyday practice, they are administered and adjudicated so totally differently.

          1. Given that EPO’s Rule 43(1) and the CFR’s 1.75 (e) are so strikingly similar in text

            So then you ARE backtracking from your statement of “A Jepson is totally different.” then, right?

            It’s hard to tell, since you recycle your words (seemingly always coming back to the same point, no matter what “you have learned.”)

            Before you reply, please remember that adjoining this topic is the “no new matter” item that apparently is also very different between the sovereigns and the fact that THAT is inherently involved in the process of what each sovereign does in relation to the two (very different?) rules.

            With that in mind, your question in reply at 7.1.1.1 seems to be opposite of the question that you should be asking: why would the administration and adjudication BE in any way similar given how the two sovereigns treat the two items.

            1. It is my day to day experience that a Jepson claim is understood in the USA very differently from the way a c-i-t claim is understood in Europe. I’m trying to find out why, given the almost identical wording of 43(1) and 1.75(e).

              It may indeed be that the different “sovereigns” have different views of what constitutes “new matter”. But that is not the explanation. You might want to think about whether the EPO-style amended-in-prosecution c-i-t claim, if introduced during USPTO prosecution, would meet the “written description” requirement.

              Both Rules use the word “known”. My (tentative) explanation why a Jepson is totally different from a c-i-t is that the two sovereigns construe the “known” of their respective Rule totally differently.

              1. How do you see this construing to be different? (no snark)

                And how is it that you do not see (or do not comment upon) the difference in what New Matter means?

                Lastly, you (again) refer to “given the almost identical wording” – but have not answered me directly as to whether or not you are retracting your stated view of “A Jepson is totally different.”

                This lack of acknowledgement makes it entirely unclear just what your aim is.

                Is your aim to understand why “Jepson is totally different” (thereby holding onto your initial views), or is your aim to understand whether or not – and only then, to what degree – that the Jepson is NOT “totally different.”

                Noting that you have moved (here) from “totally different” to “very different” (but not knowing where on the scale “very different” falls in regards to “bigly different” and “hugely different,” – the relative degree to which you are aiming is also unknown.

                That relative degree may very well be answered by the KNOWN other differences.

                Or it may not.

                There is no way to tell from your questions. Since there is no way to tell from your questions just what you are after, there is no way to provide meaningful answers to those questions (outside of sheer luck).

                Lastly, I do not think that much weight can be given to your (admittedly tentative) explanation. While indeed the two sovereigns may treat PHOSITA differently, is not the rest of the treatment of “known” – particularly in regards to our 102/103 among the area of most commonality from sovereign to sovereign?

                1. Under the EPC, and in the context of the preamble of a c-i-t claim, “known” means “disclosed in D1”. No more than that.

                  In the context of the preamble of a Jepson claim, however, I understand “known” to mean something else, something wider than “known in D1”. Something more like “conventional”. As I understand it, when courts see a Jepson, they draw an inference, that Applicant is positively announcing that everything in the preamble is “conventional”.

                  When it comes to mosaicing for obviousness, I think there can be a huge difference in the extent of an admission by Applicant, whether a given combination of technical features is merely “disclosed in D1” or is “conventional” in the art.

                2. MaxDrei,

                  Thank you (sincerely) for continuing a conversation. One of my pet peeves in dealing with you in the past has been your tendency to quit when the going got tough.

                  Exploring your comment further about “known” means “disclosed in D1”. No more than that.

                  I see this as an attempt to make a distinction without a difference.

                  ANY disclosure in any prior art has exactly the same 102/103 effect as either merely being “disclosed” OR being “conventional.”

                  Thus, if an applicant announces in his specification that “X” was conventional, this has the exact same effect as announcing that “X” is disclosed in a reference.

                  So aside from the fact that you still have not mentioned anything towards my comments on introductions of New Matter – and the different sovereigns choices of treatment of such, all that I see from your comments is a continued slide away from your earlier position of “A Jepson is totally different.

                  Given that, my post at 7.1.1.1.1.1.1 applies fully to this reply of yours. I see nothing in your 5:10 am reply that carries the conversation forward, so please re-read my 7.1.1.1.1.1.1 post and follow up with providing answers to my questions concerning your aim (what you are after).

                  As it is, your continued slide away from your starting point, without a clear aim from you, is only making your posts ever more murky.

        2. “As often happens when you attempt to ask questions, to which it appears that you want a certain view to result.”

          Isn’t that true for 95% of the questions we ask? 😉

  6. RE: In particular, when the law says that attorneys “should” do something, it seems improper to entirely ignore the law’s suggestion.

    The “law” (35 U.S.C. 112) doesn’t actually say that. Rather, this is a USPTO suggestion. Fulfilling one’s ethical obligations is to comply with the statutory requirement:

    “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”

    Certainly one must “particularly point out” what is regarded as “the invention”, but there is more than one way to accomplish that, and the Jepson form is usually not the best way to get proper scope of patent protection under the existing claim interpretation precedent. Claims would end up being interpreted too narrowly.

    1. Fulfilling one’s ethical obligations is to comply with the statutory requirement:

      I agree – it is beyond pitiful to suggest that not following the optional path of Jepson claims is somehow an ethical concern.

      Quite in fact, the prevailing FACT of patent profanity that exists to drive the use of Jepson claims to that one tenth of one percent level would be a much larger force to consider as far as any “ethics” are involved.

    2. It’s not hard to imagine a patent system which treats a claim to ABCDEF’G, when ABCDEFG is well known in the art, as having failed to PARTICULARY point out the invention.

      But it’s not like patentee overreach has ever caused SCOTUS tweak (or smash) the system to the detriment of pantentees. So surely the best thing is to maintain the current course. Cheers.

      1. Your comment makes no sense here.

        How would the sequence with one element being a prime not particularly point out what the applicant feels to be her invention?

        You appear to be conflating particularity with obviousness.

        Early start on the holiday weekend for you Ben?

  7. “24. In a thermally activated, chemically based marking method comprising the steps of:

    applying a layer of a marking composition to the surface of a substrate and irradiating said layer with radiant energy which is absorbed by at least one component of said marking composition,

    the improvement comprising the use of marking compositions comprising amounts of at least one pigment encapsulated in silica nanoparticles and further comprising nanoparticles of materials selected from the group consisting of silica, metal oxides and metal compounds comprising at least one of tungsten, molybdenum and chromium, and combinations thereof,

    wherein these materials are all colloidally suspended in a liquid comprising aqueous and/or organic solvents, said amounts being sufficient to produce a marking layer atop said substrate having improved properties including at least one of stronger bonds, better color properties, and finishes smooth enough not to retain bacteria.”

    Is this a method claim or an apparatus claim? There are a lot of structural limitations for a method claim, and the improvement is almost all structure and no method. Is the preamble limiting?

    1. There are a lot of structural limitations for a method claim

      ??

      Welcome to earth where valuable methods include the mixing and application of materials and compositions that are described in objective terms with a basis in physical reality.

      We now return you to Vapor World where machine component claims are supposedly “limited” by Grandma’s credit rating score.

      1. described in objective terms with a basis in physical reality.

        LOL – what does that mean?

        I notice you trying to avoid your mantra of objective physical structure……

        Feel free to visit again the Grand Hall and the inherency doctrine – just in case, you know, you want to do more than your usual pablum….

  8. The Dennis comment about other jurisdictions prompts another question from me.

    In litigation in the USA, and given the likelihood that the EPO patent family member issued with a 2-part claim, does any litigator ever have a look at the EPO file, and try to use the issued c-i-t claim in the US litigation, as evidence of what the owner of the US patent has admitted to be “known”?

  9. Dennis, I have difficulty following your above suggestion, to:

    “consider whether a family-member patent claim has already been (or will be) filed in a separate jurisdiction that requires this form”

    Are you alluding to EPC Rule 43(1), that requires that Applicants “shall” use a 2-part (characterized in that) form of claim? I suppose so. But I wonder, does anybody here understand the crucial difference (in the size of the admission about the prior art) between a Jepson and an EPO c-i-t form of claim? BTW, for the text of rule 43(1) you can refer to #22 in the earlier Jepson thread.

    Examiners at the EPO often look at what claims the USPTO issued. If USPTO Examiners look at what the EPO issued, do they ever suggest to Applicants that a Jepson claim might be appropriate?

    1. Aren’t you the one stressing (quite vigorously) that the EPO claim form is hugely different than the Jepson claim form, Max Drei?

      1. Different? Yes, sure. But hugely? I don’t know, anon. I know that hugely is bigger than bigly, but not how different the difference has to be, to be “hugely” different.

          1. btw…

            link to patentlyo.com

            In part:
            The EPO 2-part (characterized in that) claim should not be seen as comparable with a Jepson.

            and

            A Jepson is totally different.

            Where then does “totally” fall along the spectrum of bigly and hugely?

            1. Caught me there anon. Bang to rights. Totally is absolute. End of the scale.

              What I have learned in the earlier thread is that the difference lies not so much in the respective wordings of the respective Rules (which are surprisingly similar) but in the way the respective Jepson and c-i-t claims are construed in litigation.

              Perhaps this difference, between what the Rule says and how a Jepson claim is treated in a real life case, is useful for Dennis, in teaching his students patent law?

              1. Perhaps only useful if one ignores the fact that the two belong to two different sovereigns (as aptly noted by Greg on the other thread) and that other sovereign choices also impinge on any comparative analysis.

  10. Another such widely-ignored USPTO claim rule “should” is 1.75(g): “The least restrictive claim should be presented as claim number 1..”
    [For the same basic reason – improved odds of allowance.]

    A truly dangerous [under extensive Fed. Cir. case law] “should” rule [as has been pointed out to the PTO and ignored by them for years] is the 1.73 “Summary of the Invention” – especially if using those “The Invention” words in a specification subtitle followed by a description of the invention narrower than what is ultimately claimed.

    1. Interesting comment Paul.

      As to the title of the particular section of the application, I know of no one that still uses “…of the invention” and that section is simply called: “Summary.” Further, there is standard boilerplate (that any attorney wanting to avoid malpractice) to explicitly state that the summary section is NOT to be taken in a limiting manner.

      Perhaps you are aware (and I would think this likely) that this TOO stems from judicial over reach creating patent profanity.

  11. The “tyranny” of the easy…

    Reminds me of the 1960’s paper on examining “software.”

    Guess what people, it is the nature of innovation that such will not hew to “the easy.”

    I am reminded of one of my favorite Einstein quotes (emphasis added):

    Everything should be made as simple as possible, but not simpler.”

    As for the LESS THAN one tenth of one percent use of this optional claim format, well, we are well into the tail of the flea that is on the dog wagging the entire dog domain.

    1. With numbers so few, I would be curious as to the art unit breakdown of where this archaic claim form is still being used (and perhaps the relative age of the practitioner using this optional claim form).

      I can easily imagine that if the numbers are further analyzed by removing an outlier concentration, the remaining use across the patentscape would be for all intents and purposes practically NIL.

Comments are closed.