{"id":151804,"date":"2022-10-03T07:15:59","date_gmt":"2022-10-03T11:15:59","guid":{"rendered":"https:\/\/ipwatchdog.com\/?p=151804"},"modified":"2022-09-30T10:49:55","modified_gmt":"2022-09-30T14:49:55","slug":"language-patents-part-ii-organizing-descriptive-capability-detailed-description-distinguish-patent-worthy-subject-matter-prior-art","status":"publish","type":"post","link":"https:\/\/ipwatchdog.com\/2022\/10\/03\/language-patents-part-ii-organizing-descriptive-capability-detailed-description-distinguish-patent-worthy-subject-matter-prior-art\/id=151804\/","title":{"rendered":"The Language of Patents (Part II): Organizing the Descriptive Capability of the Detailed Description to Distinguish Patent Worthy Subject Matter from the Prior Art"},"content":{"rendered":"
\u201cEquipping an application with the descriptive capability to distinguish patent worthy subject matter from the prior art enables practitioners to prove what they know.\u201d<\/p>\n<\/div>\n
<\/a>In Part I of this series, we discussed \u00a0the importance of identify<\/a>ing 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 \u00a0simply 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\u2014it is able to defend its patentability. This capability is essential in both pre and post grant forums.<\/p>\n 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\u2019s claim interpretations are expressed and communicated to applicants for their consideration and response.<\/p>\n 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\u2019s 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<\/em> 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.<\/p>\n 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.<\/p>\n Category 1<\/em><\/strong><\/p>\n 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\u2019s 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<\/em> and that has fully captured the signatures of the invention\u2019s 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\u2019s 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\u2019s lack of a true disclosure of the invention.<\/p>\n Category 2<\/em><\/strong><\/p>\n 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<\/em> 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<\/em> 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<\/em> 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<\/em> 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<\/em> such that an allegation that a claim or claims read on the function of a fixed headlight system is rendered unreasonable.<\/p>\n In general, regarding rejections based on an interpretation that is inconsistent with that intended by applicant, though practitioners can\u2019t 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.<\/p>\nTypes of Rejections<\/strong><\/h2>\n