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[LivingItUp]

For 102 it does not matter what a phosita thinks.

Maybe in some circumstances it does.  What if a claim to a certain composition calls for water, and the examiner uses a reference calling for milk?  Milk is, after all, 90+% water, right?  Therefore, in a normal "comprising" type of claim, does the claim read on a similar composition but which uses milk instead?  Does it matter whether (or not) a phosita thinks milk and water are interchangeable in this sort of circumstance?

Water is defined to be colorless, odorless, has a certain boiling point , etc. That should distinguish it from milk.

It is less clear how a scapel - with explicit prior teaching of using it as a screwdriver - is different than the broadest reasonably interpreted screwdriver.       

[DogDayPM 9er9er9er]

Water is defined to be colorless, odorless, has a certain boiling point, etc. That should distinguish it from milk.

One would think so, but apparently not.  The examiner's insistence is that "water" reads on "milk" because milk contains water...

[dab2d]

For 102 it does not matter what a phosita thinks. And ask 100 different phosita what they think a screwdriver is, and get 200 different answers. Search on google and see thousands of different screwdrivers. I know some phosita would enjoy pulling and showing off their Swiss army knife and say see this knife is my emergency screwdriver.

But a POSITA would still be able to distinguish between a screwdriver and a knife. Even with the swiss army knife, the different elements are called different things. You still have a knife and a screwdriver. POSITA is not going to confuse the two. Even if you get the 200 different answers as to what is a screwdriver, you are not going to have any of them confuse a screwdriver with knife. 

[klaviernista]

For 102 it does not matter what a phosita thinks. And ask 100 different phosita what they think a screwdriver is, and get 200 different answers. Search on google and see thousands of different screwdrivers. I know some phosita would enjoy pulling and showing off their Swiss army knife and say see this knife is my emergency screwdriver.

But a POSITA would still be able to distinguish between a screwdriver and a knife. Even with the swiss army knife, the different elements are called different things. You still have a knife and a screwdriver. POSITA is not going to confuse the two. Even if you get the 200 different answers as to what is a screwdriver, you are not going to have any of them confuse a screwdriver with knife. 

You guys are arguing the flip side of the same coin.  It all comes down to claim construction.  That means you have to go through the Phillips analysis, which focuses  heavily on the specification and what one of ordinary skill in the art would understand the claim terms to mean. 

Of course, in many cases claim terms are so different from prior art or an alleged infringer's product that there is no question that the prior art does not anticipate, or that the alleged infringer's product does not, in fact, infringe.  But here its a closer call.  We are not talking about apples and oranges, but rather something more akin to "you say pot-A-toe, I say pot-AH-toe."  If the applicant wants to persist in using a term that can be reasonably interrpeted to mean different things, the applicant should put on evidence explaining why one the particular claim term should mean only one of those interpretations that is otherwise reasonable in a vacuum.  That evidence can be in the form of the specification, a 1.132 dec, dictionary definitions, consistent usage in the art etc.  Merely conclusory arguments are not likely to get any traction.

[LivingItUp]

Water is defined to be colorless, odorless, has a certain boiling point, etc. That should distinguish it from milk.

One would think so, but apparently not.  The examiner's insistence is that "water" reads on "milk" because milk contains water...

It seems like you are intentionally creating an outlandish hypothetical situation, and then using it as a basis to argue by analogy how the examiner would be wrong. Of course, we can create many strange hypotheticals, and use them by analogy to argue stuff.

The examiner will cite the MPEP sections concerning "overcoming a 102 rejection" to argue that the opinion of a POSITA is an improper way to overcome a 102 rejection. The original poster has written that the examiner wrote something similar to this in an advisory action.

Besides, maybe a POSITA in sewer water treatment would concur that "water" as known to a POSITA is only 90% pure. Therefore, based on what you wrote above, that milk is 90+% water, then yes, milk is water.

[DogDayPM 9er9er9er]

It seems like you are intentionally creating an outlandish hypothetical situation, and then using it as a basis to argue by analogy how the examiner would be wrong. Of course, we can create many strange hypotheticals, and use them by analogy to argue stuff.

Unfortunately it's pretty close to real life rather than being an intentionally created outlandish hypothetical.

[dab2d]

We are not talking about apples and oranges, but rather something more akin to "you say pot-A-toe, I say pot-AH-toe."  If the applicant wants to persist in using a term that can be reasonably interrpeted to mean different things

Are saying that the screwdriver is a species of the knife genus or vice versa? If it is not, they are different elements, and I still do not see how a 102 is proper. If there is any difference, a 102 is improper, and a 103 must be used.

Go back to another hypo. Would you consider a sword a screwdriver under 102? How about a shovel? I could see how a sword would be considered a knife, but not a screwdriver. Words have meaning. When the claim requires a screwdriver, the reference must disclose a screwdriver. Unless a knife is considered to be a type of screwdriver, I do not see how 102 applies.   

[khazzah]

Are saying that the screwdriver is a species of the knife genus or vice versa? If it is not, they are different elements, and I still do not see how a 102 is proper. If there is any difference, a 102 is improper, and a 103 must be used.

Disagree. Anticipation *is* proper if the Examiner's claim construction stands. Because under the Examiner's construction, knife is *not* different than screwdriver. That's why claim construction is the dispositive issue, and you must argue on this point.

[dab2d]

I guess my problem is that to me it is clear on its face that the two are different. I do not understand how one could construe the two to be the same. When I ask how they can be considered to be the same structure, most people go to the fact that a knife can be used as a screwdriver, as did the Ex. This gets back to the functionality argument which is improper to define structure. Otherwise, they are clearly different structures.

This seems to me to be a technical issue rather than a claim construction issue.

If claiming a screwdriver in the body of a claim does not in fact require a screwdriver, then what is the point of putting it in the claim.

"When I use a word," Humpty Dumpty said, in a rather scornful tone, "it means just what I choose it to mean - neither more nor less."
"The question is," said Alice, "whether you can make words mean so many different things."

I guess i am trying to figure out who is Humpty Dumpty... me or the Examiner.
 

 

 

[JimIvey]

screwdriver

n 1: a hand tool for driving screws; has a tip that fits into the head of a screw
2: a cocktail made with vodka and orange juice

That's what my online dictionary says.

The question probably isn't so much whether a knife is a screwdriver but rather whether "screwdriver" reads on the particular knife cited by the examiner.  If the above is the only definition available, I'd say things look good for the examiner since most knives have a tip that will fit into a head of some screw somewhere.

I agree that, if I ask for a screwdriver and you hand me a butter knife, you're going to get a "you gotta be kidding me" attitude from me.  However, if you respond with "that's all I got", I'll probably try to drive a screw with it.

If your best argument for allowability is that "screwdriver" means more than just something that can drive screws (without a helpful definition in the spec), that's a tough argument.  I understand that, intuitively, we all know what a screwdriver is and can pick one out of a line-up of knives.  However, "screwdriver" literally means "a driver of screws" and it's not so unreasonable to say that such a definition reads on things that are not commonly thought of as "screwdrivers".

I'm very sympathetic to the applicant here, but arguments based mostly on unstated understandings are the slimmest and most difficult to win with.

Regards.

[klaviernista]

"When I use a word," Humpty Dumpty said, in a rather scornful tone, "it means just what I choose it to mean - neither more nor less."
"The question is," said Alice, "whether you can make words mean so many different things."

I guess i am trying to figure out who is Humpty Dumpty... me or the Examiner.

It's the applicant, IF the term in question is defined in the specification (i.e., applicant acts as his own lexicographer).  Otherwise, during examination (FROM MPEP 2144.03):

"the pending claims must be "given their broadest reasonable interpretation consistent with the specification." The Federal Circuit's en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) expressly recognized that the USPTO employs the "broadest reasonable interpretation" standard:

The Patent and Trademark Office ("PTO") determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827] (Fed. Cir. 2004). Indeed, the rules of the PTO require that application claims must "conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description." 37 CFR 1.75(d)(1)."

[Simpletown]

Coming from the "everything is obvious" side of the table. How is a "screwdriver" not a functional definition? A screwdriver as mentioned above describes anything that can drive a screw. Its a pretty straight forward rejection with no further definition in the claim or specification...the dictionary and common sense will win out. Now if you told me "a flathead screwdriver" or "a phillips head screwdriver" I would know the exact structure you were imparting. Do you have a picture to work with? I know the examiner is treating screwdriver as functional language and you don't like it, but it seems like a really hard sell if you don't have anything to work with...as in a drawing. If you do have a drawing showing a normal screwdriver tip, why not state that it is a "blunt tipped object lacking a cutting edge capable of driving a screw", or use Means or Step Plus Function language? Then reference the figure and take it to the SPE/Board if the examiner insists the knife could be really really dull. It seems like if you actually described or gave a drawing of your devicce you should be able to overcome this easily.

[Robert K S]

It seems like if you actually described or gave a drawing of your devicce you should be able to overcome this easily.

Demanding of every applicant that he or she describe down to every last detail every common term transforms the examination process into a kind of "gotcha" game, in which any application can be rejected merely by diluting the plain meaning of common terms rather than performing the factual analysis of determining what would actually be understood by a person having skill in the art.  Do you think the Board and/or the courts will put up with having an agency that operates like a ten-year-old?  "You didn't say a screwdriver couldn't be a knife because you didn't predict my wile!  Gotcha!"  This kind of game is not amenable to judicial review.

[Simpletown]

I agree that a gotcha game shouldn't really ensue over every term applicant chooses to use. Perhaps this is a really good case of an overzealous use of "broadest reasonable sense". The question that plagues me is that if it being a screwdriver is the truly novel feature.....I would hope that you would try and describe the novel portion of the invention in the specification. This would allow for an easy fix of this problem. But I have no idea about this particular case, where it is in prosecution, etc., and you can never make a decent decision without a reasonable amount of facts.