The Language of Patents (Part II): Organizing the Descriptive Capability of the Detailed Description to Distinguish Patent Worthy Subject Matter from the Prior Art

In Part I of this series, we discussed  the importance of identifying and avoiding patentability-blocking ambiguities in a patent application. It is equally important that the patent application drafter bring a sensibility to the drafting of the application that recognizes that conceptually the application must not  simply be seen as a document whose job is to describe an invention but must also be understood to be a document that must have a descriptive capability that enables it to distinguish patent worthy subject matter from prior art. Thus, when the patentability of patent worthy subject matter disclosed by the application is challenged, the application can speak—it is able to defend its patentability. This capability is essential in both pre and post grant forums.

If an examiner considers claims directed to patent worthy subject matter not patentably distinct from the prior art, their opinion is based in substantial measure upon their interpretation of the claims (whatever their assessment of the prior art, their interpretation of the claims provides the reference by which patentability is based). Prior art rejections are how the examiner’s claim interpretations are expressed and communicated to applicants for their consideration and response.

There is a distinct pattern of prior art rejections that are encountered by practitioners. This pattern of prior art rejections tests the detailed description in specific ways. Therefore, the rejections themselves identify the type of subject matter that is needed to obviate the rejections. Because the character of an examiner’s interpretation of rejected claims implicates the specific type of subject matter that is needed to obviate that interpretation (the type of subject matter needed to establish a patentable difference between the claims as interpreted and the prior art), categorizing the pattern of rejections encountered by practitioners according to such interpretations, is the key to a precise identification of the type of subject matter that is needed to obviate the interpretations, and thus, the corresponding rejections.

Types of Rejections

Using this insight, the following categorization of rejections according to the character of their interpretations is offered: (1) rejections based on a broadest reasonable interpretation of the claims that is not inconsistent with the interpretation of the claims that applicant intended; (2) rejections based on a broadest reasonable interpretation of the claims that is inconsistent with the interpretation of the claims that applicant intended; and (3) rejections based on a broadest reasonable interpretation of the claims that implicates procedural rules and/or case law related to patentability.

Category 1

With respect to rejections based on a broadest reasonable interpretation of the claims that is not inconsistent with that of the applicant, the examiner considers that each of the limitations of the claims, based on an interpretation consistent with that which applicant intended, are taught or suggested by the prior art. These types of rejections test the completeness of the description of the invention, in particular, its capacity to provide evidence that proves the patentability. As used herein, completeness is intended to refer to the absence of description omissions (such as the description omissions referenced in the example above that can prevent a taxonomist from being able to distinguish a first species from a related but different species) that prevent a detailed description from distinguishing the subject matter considered to be the invention from patentably distinct subject matter even if the patentably distinct subject matter is similar in many respects to the subject matter regarded by applicant as his/her invention. If the examiner’s assessment of the prior art is accurate, because the assumption is that the subject matter is patent worthy, a detailed description of the invention that is complete and that has fully captured the signatures of the invention’s novelty, will be equipped with the language needed to clarify the claimed subject matter in a manner that avoids the prior art without surrendering coverage of the patent worthy invention. If the examiners assessment of the prior art is not accurate, a description of the invention that is complete along with the practitioner’s own assessment of the scope and content of the prior art, can be used as the basis for clarifying the claimed subject matter in a manner that avoids the prior art without surrendering coverage of the patent worthy invention, and/or as a basis for comparing and contrasting the thoroughly documented novel aspects of the invention, with the alleged similar elements of the prior art, to expose the prior art’s lack of a true disclosure of the invention.

Category 2

As to rejections based on a broadest reasonable interpretation of the claims that is inconsistent with that of the applicant, the examiner believes that each of the limitations of the claims, based on an interpretation that is inconsistent with the interpretation of the claims that the applicant intended, are taught or suggested by the prior art. In many of these cases, the limitations of a claim are considered taught or suggested in a sense not intended by applicant. As such, these types of rejections test the specification for language that can be used to clarify the intended sense of one or more aspects or elements of the claims, such that the broad interpretation used by the examiner is made unreasonable. The interpretations typically relate to aspects or elements of a claim such as context, environment, components, relationship of components, function, etc. that are essential to its novelty. In a discussion above, a claim directed to an independently movable headlight, is discussed as being rejected based upon an interpretation of the claim as reading on a fixed headlight whose only movement is caused by changes in the spatial orientation of an associated automobile (due to the slope of a hill, rightward and leftward turns of automobile, etc.). This interpretation broadened the context of the invention set forth in the claim to include fixed headlights and not just movable headlights. Because broad interpretations of claims can involve interpretations of the way that claim elements are structured and/or function that is different from the way that the applicant intended these claim elements to be structured and/or function (such as in this case), they test the detailed description for language that can be used to clarify the intended way that the claim elements are structured and/or function such that the intended way that the claim elements are structured and/or function can be made clear (such as by amendment) – and the broad interpretation of the claims used by the examiner can be rendered unreasonable. For example, with regard to the headlight example, the broad interpretation of the claim used by the examiner tests the detailed description for subject matter that specifically describes how the headlight is moved relative to the associated automobile that can be added to the claim to clarify the intended context such that an allegation that the claim reads on a fixed headlight is rendered unreasonable. In other instances, given the same or similar facts, an examiner may choose to reject claims based on an interpretation that tests the detailed description for subject matter that describes how components of the moveable headlight system operate to cause headlight movement that can be added to a claim or claims to clarify the intended way that claimed components work such that an allegation that the claim or claims read on fixed components of a fixed headlight system is rendered unreasonable. In still other instances, an examiner may choose to reject claims based on an interpretation that tests the detailed description for subject matter that describes the movement of the headlight within a headlight assembly that can be added to claims to clarify the intended way that the moveable headlight functions such that an allegation that a claim or claims read on the function of a fixed headlight system is rendered unreasonable.

In general, regarding rejections based on an interpretation that is inconsistent with that intended by applicant, though practitioners can’t predict when drafting the patent application, if such a rejection will be made, or if made, what elements of a claim may be involved, practitioners can predict that the involvement of any of the elements of a claim is possible. Therefore, equipping the detailed description with the capability to clarify the sense of the gamut of element types (context, environment, relationship of components, function, etc.) prepares the application for the full range of such rejection challenges.

Category 3

As regards rejections that are based on a broadest reasonable interpretation of the claims that implicate procedural rules and/or case law, the detailed description is tested for subject matter needed to distinguish the claims from the prior art according to the implicated procedural rule or case law. Common procedural rules and case law that are implicated by these types of rejections include but are not limited to procedural rules that prohibit reliance upon references that teach away from the invention (MPEP 2143.01(V) (e9 r10.2019)); procedural rules that prohibit reliance upon combinations that change the principle of operation of a primary reference (MPEP 2143.01(VI) (e9 r10.2019)); and case law that prohibit a determination of obviousness where the prior art does not teach or suggest the solution disclosed (Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371 (Fed. Cir. 2004)).

For rejections that implicate the rule that prohibits the use of references that teach away from the invention, the detailed description should include subject matter that can be used to support arguments that the references teach away from the invention, and/or clarifications of the application’s claims in a manner that underscores the objectives of the invention (which can be compared with disclosures of the prior art that suggest a different direction to demonstrate that the prior art teaches away from the claimed subject matter). For example, in the headlights case, subject matter in the detailed description that describes how the movement of the headlights achieves the objectives of the invention can be used to establish that descriptions in the prior art that teach that the design objectives reflected in the structure of the prior art headlight lens which would prevent the type of headlight movement that is needed to meet the objectives of the claimed invention, teach away from the claimed invention.  

In dealing with rejections that implicate the rule that prohibits modifying the prior art in a manner that would change the basic principle under which the prior art is designed to operate, the specification should clearly describe the operating principle of the invention such that this operating principle can be contrasted with the operating principle of the prior art, to help establish the invalidity of proposed modifications (to underscore the different principles upon which the prior art and the invention are based). For example, in the headlight example discussed herein, if the prior art reference described a headlight lens or cover structure that is designed in a way that would prevent the movement of the lamp, and a modification was proposed that changed that design principle, subject matter in the specification that describes the operating principle of the invention can be contrasted with the operating principle of the prior art to provide a reference and context (and motivation) for the proposed modifications that can help to establish the nature of the proposed modifications as changing the operating principle of the prior art reference. More generally, the specification should be equipped to describe the operation in a manner that the operating principle is clearly documented to enable such distinctions. For example, to describe what the operation is, how the operation is performed, and the how the operation achieves the objectives of the invention should be included to ensure that the capability to distinguish principle of operation is provided.

 As far as rejections that implicate case law that prohibits a determination of obviousness where the prior art does not teach or suggest the solution disclosed, the specification should clearly describe how the invention solves the problems of the prior art. This description can be used to challenge the obviousness determination as evidence that an important requirement of obviousness is not met.

The foregoing identification of the specific types of subject matter needed to obviate prior art rejections, based on the character of the claim interpretations which underlie the prior art rejections, enables practitioners to organize the descriptive capability of the detailed description to distinguish patent worthy subject matter from prior art. This can be done by equipping the detailed description with a descriptive capability that is structured to obviate the type of claim interpretations that are used to support allegations that patent worthy subject matter is unpatentable. For example, based on the observations made above, the descriptive capability should be structured to include at least: (1) a foundational capability that is derived from a level of invention description completeness that is characterized by the absence of features that prevent patent worthy subject matter from being distinguished from prior art (e.g., a level of invention description completeness characterized by articulable indicia of completeness such as an absence of the types of patentability blocking omissions described herein) (2) a specialized capability for clarifying the sense of aspects or elements of claims subject to an adverse interpretation, and (3) a specialized capability for providing evidence and/or clarifications that show that requirements for patentability, set by implicated rules and/or case law, are met. Patent drafting strategies that produce detailed descriptions whose descriptive capability is not organized to defend patent worthy subject matter from typical claim interpretation-based patentability challenges, puts practitioners in a position to have to respond to such challenges in an ad hoc fashion or by resorting to fall back strategies that surrender rights to patent worthy subject matter.

Importantly, organizing the descriptive capability of the detailed description to distinguish patent worthy subject matter from the prior art, to the greatest extent possible, helps to make the amendment process a matter of fine tuning claims in a manner that clarifies the differences between patent worthy subject matter and the prior art without ceding coverage of the subject matter to which the inventor is entitled. For example, in the headlight example, a matter of amending the claims in a manner that clarifies the difference between the moveable headlight and the fixed headlight (with language that makes the interpretation of the claim as covering a fixed headlight unreasonable), such that only the subject matter (the fixed headlight) that was never regarded by applicant as his/her invention, is surrendered.

This capability is not only useful during the pre-grant prosecution of regular utility applications but is also useful during post-grant proceedings. For example, during post grant proceedings, a robust capacity to clarify claims in a manner that distinguishes patent worthy subject matter from the prior art can best position a practitioner to address challenges or threats to the validity of a patent’s claims without it resulting in a loss of rights to the patent worthy subject matter.

‘It’s Not What You Know, It’s What You Can Prove’

A question that should be asked regarding the preparation of patent applications is, “has an invention really been disclosed if the application that discloses it is not equipped to defend it?” Though perhaps somewhat philosophical in nature, the question has practical dimensions. In the movie, Training Day, a favorite refrain of the diabolical but charismatic character Alonzo to his near fatally manipulated but determined trainee Hoyt is “it’s not what you know, it’s what you can prove.” Equipping an application with the descriptive capability to distinguish patent worthy subject matter from the prior art enables practitioners to prove what they know. At the U.S. Patent and Trademark Office’s patent academy (or today’s version of such), examiners are taught that the claims of a patent are the “measure of the invention.” If so, Alonzo’s refrain should echo as an apt admonishment to patent practitioners who have a desire to obtain for their clients the fullest “measure” of protection to which their inventions are entitled.