Equipping Patent Applications for Pre-and Post-Grant Success
“The combination of the examiner’s responsibility to give claims their broadest reasonable interpretation and the presence of structural ambiguities in the detailed description of the invention is a recipe for the loss of rights.”
Patents that are expected to protect a company’s most valuable innovations must stake a claim to that innovation and be equipped to defend it. This is because being worthy of patent protection doesn’t guarantee that a patent application’s claims to an innovation will not be rejected and rights to that innovation jeopardized. A major reason for this is that an examiner’s interpretation of a claim drawn to an innovation that may be worthy of patent protection may cause them to determine that the subject matter as claimed is not patentably distinct from the prior art. Such an interpretation can block the patentability of the claim in the absence of evidence that the examiner’s interpretation of the claim is not reasonable.
Structural weaknesses of the detailed description that may or may not be addressed by patent drafting orthodoxy can result in a lack of a capacity to successfully manage challenges presented by an examiner’s interpretations of subject matter set forth in claims. An unorganized capacity to respond to such rejection challenges often leaves the practitioner with very little alternative but to amend claims in a manner that narrows protection to less than what the applicant’s invention should have received.
Therefore, the capacity of the application to readily supply evidence or language that can be used to obviate claim interpretations that block patentability of patent worthy innovation is key to avoiding an unnecessary loss of rights. To this end, patent preparers should endeavor to draft applications: (1) that are free of features that can operate to prevent patent worthy innovation from being distinguishable from the prior art; and (2) that have detailed descriptions that include a descriptive capability that is organized to distinguish patent worthy subject matter from the prior art.
Application Features that can Prevent Patent Worthy Innovations from Being Distinguishable from Prior Art
Under patent law, the broadest reasonable interpretation of a claim must be used to reject a claim even when a more straightforward, less broad interpretation, that would make the claim allowable, is available (MPEP 2111 (e9 r10.2019)). Such interpretations, in some cases, can enable the examiner to treat a claim in a manner that causes certain elements of the claimed invention to be considered to be taught or suggested by the prior art based on an interpretation of the elements of the invention that was not intended by the applicant. Consequently, because of the broad interpretation, prior art that does not teach or suggest aspects of the subject matter considered to be an essential part of the claimed invention by applicant, can be used to reject the claim. This dramatically increases the range of prior art references that can be used to reject a claim and thus the likelihood that a claim will be rejected. Importantly, it enables the rejection of subject matter that “but for” the broad interpretation would be patentable.
For example, consider the case of an examiner examining an application that claims an automobile headlight that is coupled to a component that is configured to direct the headlight upward, downward, rightward and leftward. Moreover, consider that these descriptions are included in the detailed description to provide the support required by 35 USC 112. Let’s further consider that the examiner interprets the claim to read on a reference that describes a conventional headlight that is coupled to a component that fixes the headlamp in relation to the associated automobile. And, that this reference is the best art that is available to the examiner. In rejecting the claims, the examiner reasons that the component in the headlight assembly to which the light is attached, directs the headlight upward when the automobile is traveling up a hill, downward when the automobile is traveling down a hill, rightward when the automobile makes a right turn and leftward when the automobile makes a left turn. The examiner’s approach shows that the claim is amenable not only to an interpretation that involves the movement of the headlight relative to the automobile (the intended interpretation) but also to an interpretation that does not require movement of the headlight relative to the automobile.
According to Merriam-Webster “the quality of being open to more than one interpretation” is termed “ambiguity”. In the instant case, the ambiguity is detrimental to the patentability of the claims. For example, the interpretation of the claims that involves the movement of the headlight relative to the automobile would likely result in the allowance of the application. However, the interpretation of the claims that the examiner may be required to use under patent examining procedure would likely result in a rejection of the claims.
Therefore, the probative force of the interpretation that involves the movement of the headlight relative to the automobile is trumped as long as a reasonable interpretation of the claim that does not include the movement of the headlight relative to the automobile reads directly on the subject matter described in the prior art. Thus, patent drafters should endeavor to eliminate the basis for such adverse interpretations from the claims and the detailed descriptions that they prepare. In eliminating the basis for such adverse interpretations, the probative force of the novel subject matter is freed to assert itself on the determination of patentability in a manner that is unfettered by an adverse interpretation.
However, ambiguity in a claim may not be apparent until the examiner provides an interpretation that exposes it. In such cases, the ambiguity may not be avoidable despite careful claim drafting. When this happens, the detailed description is tested for language that can be used to clarify the claimed invention such that protection of patent worthy subject matter may be preserved. However, if the detailed description contains the same ambiguity that the claim has, claim coverage that is consistent with that which the applicant is should receive for the innovation is jeopardized – the applicant may be forced to add scope narrowing details to the claim that surrenders coverage of patent worthy subject matter.
Identifying Ambiguities
In order to eliminate patentability-blocking ambiguity from an application, common types of ambiguity in patent applications must be identified. Perhaps the most obvious source of ambiguity is superficial ambiguity that is based on unclear language. In many cases, this type of ambiguity can be eliminated by clear writing. However, deep, structural ambiguities, which may be less apparent than superficial ambiguities, can rob an application of the capacity to distinguish patent worthy subject matter from prior art. For example, consider a taxonomist that is presented respective lists of details related to the anatomy, behavior, and habitat of first and second closely related species. Furthermore, consider that the taxonomist is required to provide an identification of the species that corresponds to each of the respective lists. And that the first list omits descriptive details that would allow the taxonomist to differentiate the first species from the second species.
In this example, if the first list corresponds to African savanna elephants and the second list corresponds to African forest elephants, and the first list omits details related to anatomy, behavior and habitat that enable the taxonomist to distinguish the African savanna elephant from the African forest elephant, the taxonomist could mistakenly determine that the list that described the African savanna elephant and the list that described the African forest elephant both described the African forest elephant.
In the same way that descriptions of the African savanna elephant omitted from the first list can prevent the taxonomist from distinguishing the African savanna elephant from the African forest elephant, aspects of an invention’s description that are omitted from the detailed description can create ambiguity that prevents patent worthy subject matter from being distinguished from prior art. These types of ambiguities are herein styled structural ambiguities because they relate to the completeness of the detailed description.
Structural ambiguities of the detailed description can be derived from sources that include but are not limited to dimensional, abstractive, or contextual description omissions that can prevent patent worthy subject matter from being distinguishable from prior art. Dimensional description omissions can involve elemental, environmental and functional description omissions that can prevent patent worthy subject matter from being distinguishable from prior art. For example, with reference to the hypothetical case described above, omissions related to novel elements of the moveable headlight system and the part that they play in the movement of the headlights that can prevent patent worthy subject matter from being distinguishable from the prior art. Or, omitted descriptions of environmental dimensions of the invention that describe the way the invention relates to or is shaped by its operating environment that can prevent patent worthy subject matter from being distinguishable from the prior art. Or, omitted descriptions of the function of the invention including the way that the moveable headlight system functions that can prevent patent worthy subject matter from being distinguishable from prior art.
Abstractive invention description omissions involve omissions in the depth of the description of the invention. For example, regarding functional descriptions, omissions in the description of the function that go beyond a broad recitation of the function (a high level of description abstraction), such as descriptions that may include component parts of the function and their interrelationship (an intermediate level of description abstraction), and descriptions of the specific manner in which the parts of the function are performed and accomplish the objectives of the invention, e.g., including physical components that may be associated with the parts of the function (a low level of description abstraction), that can prevent patent worthy subject matter from being distinguishable from prior art.
Contextual description omissions involve omitted descriptions related to context. For example, omitted descriptions of the way the structure and/or operation of the invention relates to or is shaped by its context that can prevent patent worthy subject matter from being distinguishable from the prior art.
Structure Your Detailed Description to Defeat Ambiguity
Recognizing the sources of ambiguity, and their operation, enables practitioners to prepare applications that are free of features that can operate to prevent patent worthy innovation from being distinguishable from the prior art. This is important because if ambiguities in claims directed to the most valuable innovation that is disclosed in an application are mirrored in the detailed description, the detailed description may not be equipped to support a clarification of such claims that can preserve the rights to that innovation. Thus, the combination of the examiner’s responsibility to give claims their broadest reasonable interpretation and the presence of structural ambiguities in the detailed description of the invention is a recipe for the loss of rights. To provide the application with the capacity to defend such rights, the descriptive capability of the detailed description should be organized for that purpose.
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Author: donscarpo
