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Obviousness
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   Patentability Question. Other similar patent(s).
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   Author  Topic: Patentability Question. Other similar patent(s).  (Read 2084 times)
Wiscagent
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Re: Patentability Question. Other similar patent(s
« Reply #5 on: Oct 25th, 2004, 11:40am »
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Generally, the reason for a statement such as "Whereas the present invention has been described ... modifications ... may be made within the ... scope of the invention." is, in the event of an infringement suit, to encourage a judge or jury to broadly interpret the claims.  Using your first mousetrap example, if a claim reads:  "A small animal trap comprising, part A, part B, a release device and a spring that accelerates said part A towards said part B, when activated by tripping the release device."  The way the claim is written, it does not specify if the spring pushes or pulls, so it should read on both embodiments of the mousetrap.  On the other hand, if the only examples show a spring that pulls, an manufacturer with a spring that pushes would argue that in the context of the specification "accelerates" must only refer to a spring that pushes.
 
A statement such as "Whereas the present invention has been described ... modifications ... may be made within the ... scope of the invention." is insufficient by itself, to establish obviousness.  As Mr. Ivey wrote earlier, the examiner should show some description, hint, or motivation to use the variation that your are trying to claim.  
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Richard Tanzer
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JimIvey
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  jamesdivey  
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Re: Patentability Question. Other similar patent(s
« Reply #6 on: Oct 25th, 2004, 6:51pm »
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Wiscagent is correct.  I'd state it a little more directly.  A statement like that is trying to make it explicit that the descriptive portion of the patent is merely an example of how the invention could work and is not meant to actually define the invention.  The invention is to be defined solely by the claims.
 
The law makes that implicit.  However, we patent practitioners do everything we can to make the coverage of the patent as broad as possible and explicitly invoking such an implicit rule is one of the ways we try to do that.
 
My own statement is something like:  "The above description is illustrative only and not limiting.  Instead, the present invention is defined solely by the claims which follow and their full range of equivalents."  
 
I have actually seen the converse disclaimer but I have no idea why anyone would want to use it: "The following detailed description sets forth the broadest application of the present invention as contemplated by the inventor(s)."  I don't see how the applicant can benefit from such a statement, but that's different from the language of the question here.
 
One important note is that such a statement is really about what the patent covers, not about what other inventions would be obvious in view of that patent.  So, that language really isn't about obviousness.
 
Years ago, I wrote a paper proposing an obviousness type inquiry to determine equivalents under the doctrine of equivalents, but that's not the law and the two inquiries are currently unrelated in the law.
 
Regards.
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James D. Ivey
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