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[ManOfManyBadIdeas]

I was recently doing a prior art search on a patent application I am
preparing and I ran across a very annoying specification. It reads
like a claim to everything under the sun, but it's not a claim, it's a
spec! For a paperclip spec it would read something along the
lines of "this invention is for everything in the universe, which
in some embodiments includes wire. The  preferred embodiement
for such wire is a <insert paperclip description here>".
Bottom line, it covers everything, including all of the prior art! It's not a big problem
for me because the spec not only "doesn't teach", or "doesn't enable",
but "teaches away" from my stuff.

My question is, what's the point to draft such a spec? It seems like one
can easily "doesn't teach" it away. But I can see how it can be intimidating
to file with such "prior art" in view. Does it make sense to have a spec like
that? In general do the examiners recognize that the main motivation to
draft such a spec is not to disclose, but to be general pain in the butt? Do
they have ways to deal with that?

[patentsusa]

I was recently doing a prior art search on a patent application I am
preparing and I ran across a very annoying specification. It reads
like a claim to everything under the sun, but it's not a claim, it's a
spec! For a paperclip spec it would read something along the
lines of "this invention is for everything in the universe, which
in some embodiments includes wire. The  preferred embodiement
for such wire is a <insert paperclip description here>".
Bottom line, it covers everything, including all of the prior art! It's not a big problem
for me because the spec not only "doesn't teach", or "doesn't enable",
but "teaches away" from my stuff.

My question is, what's the point to draft such a spec? It seems like one
can easily "doesn't teach" it away. But I can see how it can be intimidating
to file with such "prior art" in view. Does it make sense to have a spec like
that? In general do the examiners recognize that the main motivation to
draft such a spec is not to disclose, but to be general pain in the butt? Do
they have ways to deal with that?

I suppose the drafter is trying to keep open the possibility of a wide variety of claim combinations in continuations or divisionals.  If they are disclosing prior art in some parts of the spec, it might still be patentable if combined with new features of other parts of the spec.

I think the examiners start with the claims and the drawings before polluting their minds with the specification so they can interpret claims broadly as they are required to do, so I don't think it would bother them too much. 

My specification sort of reads like claims but that is because I draft the claims first then draft my specification based on my claims.

[khazzah]

"this invention is for everything in the universe

So, if the drafter is saying "paper clip isn't just for fastening papers, but can be used for lots of other stuff too" -- sounds like non-limiting language to me. Might be a good idea in view of Fed Cir case law that sometimes imports limitations from the spec.

which in some embodiments includes wire.

Absolutely a good idea to describe in terms of "embodiments". You don't want someone arguing that a plastic paper clip doesn't infringe.

The  preferred embodiment for such wire is a <insert paperclip description here>".

Actually, "preferred embodiment" can be considered narrowing. I just say "embodiment".

Bottom line, it covers everything, including all of the prior art!

I didn't see a description of the prior art, only a description of a paper clip -- and your hypo stated that the invention *was* a paper clip. So I don't see that your hypo spec "described the prior art".

Most inventions are combinations of known elements. Maybe you're characterizing those known elements as "describing the prior art"?

Also -- and I think we touched on this in another recent thread -- some drafters put lots of detail in their spec, perhaps more than is necessary. In many of the patents I read, much of this extra detail is to the non-novel aspects of the invention. Perhaps this is what you mean by "describing the prior art". If so, my explanation for that is: conventional wisdom says it can't hurt to describe too much. If you describe anything less than absolutely everything, you always run some degree of risk that you haven't enabled.

[Wiscagent]

... in some embodiments includes wire. The preferred [embodiment] for such wire is a <insert paperclip description here>". ...

ManOMany -

According to 35 USC 112

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person [...], to make and use the same ...

I don't know the case law related to (a) full, (b) clear, (c) concise, and (d) exact; but I suspect that some granted patents could be successfully challenged on the grounds that a-d were not satisfied.

At least in your example the paper clip is actually described.  How about the situation (discussed ad nauseam in this forum) where everything may or may not be something?

I prefer the style where (i) a general description is presented; (ii) several fairly specific embodiments are described; and (iii) alternatives are discussed.   The embodiments in section ii would include phrases like "... a 10 cm long, 2 mm diameter polyethylene tube ...", i.e. what was actually used (or could be used) in the gadget.  Section iii, then discusses how the tube could be different shapes, sizes, or made from different materials.

[Wiscagent]

A few minutes ago I wrote
everything may or may not be something. 

I'll put that on my list of rules to live by, right next to
clink 'em and drink 'em.

[JimIvey]

A few minutes ago I wrote
everything may or may not be something. 

I'll put that on my list of rules to live by, right next to
clink 'em and drink 'em.

Hear, hear!

... or is it "Hear here!", or "Here Hear!" or "Here here!"

My question is, what's the point to draft such a spec?

Real or imagined?  There might not be a real point to that, depending on what it actually said rather than what it sounded like.  Believe it or not, pointless stuff ends up in patent applications all the time.

Regards.

[ManOfManyBadIdeas]

I didn't see a description of the prior art, only a description of a paper clip -- and your hypo stated that the invention *was* a paper clip.
Most inventions are combinations of known elements. Maybe you're characterizing those known elements as "describing the prior art"?

That's a terrible omission on my part. Without it I just left it for everybody to guess what I mean!

The thing is, prior art is not *described*, but *claimed*. With your remark in mind, I'll make up what I
think may be a closer example. Suppose the invention is for a diesel car. Gasoline car is prior art. The
spec says "This is an invention of a vehicle, which in some embodiments comprises of a
body and four wheels. In some embodiments such vehicle may also include an engine. One such
embodiments is when the engine is a diesel engine". Then a diesel car is described. As you can see,
the spec claims that a whole lot of stuff has been invented, which would not fly (ideally ) if it was
in the claims in view of prior art such as a wagon, a train car, and a gasoline car. Nothing beyond
a diesel car is actually *described* in the spec.

To me it just looks like some sort of back door to turn the application into something that it originally
wasn't (add almost any stuff to the spec or claims later, because it's "in the spec"). If it's accepted
practice, I'd welcome the ability to do that of course

[ManOfManyBadIdeas]

I prefer the style where (i) a general description is presented; (ii) several fairly specific embodiments are described; and (iii) alternatives are discussed.   The embodiments in section ii would include phrases like "... a 10 cm long, 2 mm diameter polyethylene tube ...", i.e. what was actually used (or could be used) in the gadget.  Section iii, then discusses how the tube could be different shapes, sizes, or made from different materials.

This sound like a great ideal to always strive for, but which is rarely achieved .

[khazzah]

Suppose the invention is for a diesel car. Gasoline car is prior art. The
spec says "This is an invention of a vehicle, which in some embodiments comprises of a
body and four wheels. In some embodiments such vehicle may also include an engine. One such
embodiments is when the engine is a diesel engine". Then a diesel car is described. As you can see, the spec claims that a whole lot of stuff has been invented ...

Ah, now I get it! You're characterizing anything in the Detailed Description as the inventor's / attorney's representation of what was invented.

There is absolutely no requirement that the Detailed Description be limited to inventive aspects. And putting something in the Detailed Description is not a representation that it is inventive.

Why is non-inventive stuff in the spec?

One, even the inventive stuff is (almost always) a combination of known elements. The inventive diesel engine shares a lot of parts with the known gasoline engine. I'll bet even the parts that distinguish a diesel engine from a gasoline engine are known. Likely they're combined in a new way.

So some description of known elements is almost always necessary for enablement.

Personally, I believe that many apps are full of other known stuff that isn't necessary for enablement. Using your diesel engine example, if your claims are limited to an engine (not a vehicle) you absolutely don't *need* to talk about wheels, tires, breaks, etc. Yet I believe lots of folks would throw this stuff in even if they had no intention of claiming a car. It's just part of the mindset of enablement. And being overinclusive [at least in the manner mentioned] does allow you the option of claiming the car with the inventive engine.

Nothing beyond diesel car is actually *described* in the spec.

You're contradicting yourself here, because you specifically said that gasoline engines are "described" in the spec.

I think you meant to say that "nothing beyond the diesel car that is inventive is actually described in the spec."

[ManOfManyBadIdeas]

Suppose the invention is for a diesel car. Gasoline car is prior art. The
spec says "This is an invention of a vehicle, which in some embodiments comprises of a
body and four wheels. In some embodiments such vehicle may also include an engine. One such
embodiments is when the engine is a diesel engine". Then a diesel car is described. As you can see, the spec claims that a whole lot of stuff has been invented ...

Ah, now I get it! You're characterizing anything in the Detailed Description as the inventor's / attorney's representation of what was invented.

There is absolutely no requirement that the Detailed Description be limited to inventive aspects. And putting something in the Detailed Description is not a representation that it is inventive.

Why is non-inventive stuff in the spec?

One, even the inventive stuff is (almost always) a combination of known elements. The inventive diesel engine shares a lot of parts with the known gasoline engine. I'll bet even the parts that distinguish a diesel engine from a gasoline engine are known. Likely they're combined in a new way.

So some description of known elements is almost always necessary for enablement.

Personally, I believe that many apps are full of other known stuff that isn't necessary for enablement. Using your diesel engine example, if your claims are limited to an engine (not a vehicle) you absolutely don't *need* to talk about wheels, tires, breaks, etc. Yet I believe lots of folks would throw this stuff in even if they had no intention of claiming a car. It's just part of the mindset of enablement. And being overinclusive [at least in the manner mentioned] does allow you the option of claiming the car with the inventive engine.

I am not annoyed by the presence of prior art in the spec. I think it's useful to describe closest prior art
and discuss novelty and advantages of the invention in comparison. My problem is that the prior art is
not *described*, but *claimed* as own invention. To me the wording reads "I have just invented a four wheeled vehicle.
Oh, and also such a vehicle car with an engine. But I am describing only such a vehicle with a diesel engine
right now". The first two sentences would be flat out false, as both a four wheel vehicle, and such a
vehicle with an engine have been invented by somebody else.

Nothing beyond diesel car is actually *described* in the spec.

You're contradicting yourself here, because you specifically said that gasoline engines are "described" in the spec.

I think you meant to say that "nothing beyond the diesel car that is inventive is actually described in the spec."

I apologize for misguiding you, but when I said "car with gasoline engine is prior art", I did
not refer to what's in the spec, but rather the state of the field of invention. The spec
itself doesn't mention much of prior art at all. Nothing beyond the diesel car is described.

[khazzah]

My problem is that the prior art is not *described*, but *claimed* as own invention.

Then I'm confused. I read your prior posts as referring only to the SPECIFICATION and not to the CLAIMS. Only the CLAIMs are a "claim" to what is invented. As I noted earlier, statements in the SPEC should not be interpreted as a representation of what is invented.

[ManOfManyBadIdeas]

My problem is that the prior art is not *described*, but *claimed* as own invention.

Then I'm confused. I read your prior posts as referring only to the SPECIFICATION and not to the CLAIMS. Only the CLAIMs are a "claim" to what is invented. As I noted earlier, statements in the SPEC should not be interpreted as a representation of what is invented.

Well, I thought that specification is supposed to describe the invention in detail, as well as
closest prior art most of the time. So in some sense it is representation of what is
invented. I think the primary goal of specification is to enable others to practice the invention.
The primary goal of the claims is to protect the invention against infringement. The stuff
that is secondary to the primary goal will be mercilessly removed from claims, you can't
write a war and peace in there. And if you claim something incorrectly in the claims, you
are toast (at least until you amend the claims). My problem is that I think I see a claim in the
specification. It is a statement of what is invented, very compact, and devoid of any
descriptive detail. And the statement is incorrect. The standards for specifications are not
the same, so you have a lot of freedom, but what are the consequences of getting it wrong?
Because I think that the spec I am looking at is wrong, but of course it could very well be
me and not the spec.

The example above to me reads exactly as an independent claim ("We invented
a four wheeled vehicle", with a dependent claim ("we also invented what we described in previous sentence,
but with an engine", and another dependent claim "we also invented what we described in
prev. sentence, but the engine is diesel engine").

[JimIvey]

The example above to me reads exactly as an independent claim ("We invented a four wheeled vehicle", with a dependent claim ("we also invented what we described in previous sentence, but with an engine", and another dependent claim "we also invented what we described in prev. sentence, but the engine is diesel engine").

Ah, here's the problem.  In patents, claims are numbered sentence fragments at the end of the application/patent (unless you're looking at the text version in the USPTO search tool, in which case they're near the top).

Anything else is not a claim, even if "claim" (in plain English) might be an apt description.  It might look like a claim, sound like a claim, smell like a claim,...  but it's not a claim and does not define the invention.  In patents, the specification does not claim.  Period.

Incidentally, if that's the most annoying thing you've seen in a patent/application, you've been very fortunate.

Regards.

[ManOfManyBadIdeas]

The example above to me reads exactly as an independent claim ("We invented a four wheeled vehicle", with a dependent claim ("we also invented what we described in previous sentence, but with an engine", and another dependent claim "we also invented what we described in prev. sentence, but the engine is diesel engine").

Ah, here's the problem.  In patents, claims are numbered sentence fragments at the end of the application/patent (unless you're looking at the text version in the USPTO search tool, in which case they're near the top).

Anything else is not a claim, even if "claim" (in plain English) might be an apt description.  It might look like a claim, sound like a claim, smell like a claim,...  but it's not a claim and does not define the invention.  In patents, the specification does not claim.  Period.

Incidentally, if that's the most annoying thing you've seen in a patent/application, you've been very fortunate.

Regards.

I am just trying to figure this out. I like following examples and figuring out the way of
thinking behind them as a way of learning. This one stumped me. Since such a declaration
is not descriptive and therefore not enabling, it would fail at preventing patents in the area that
it declares for itself. At least that's what I think. So, what was the point of inserting
such a language into the spec? I am assuming that this was done on purpose, but even if it
was just sloppy(ish) work, and the possibility was pointed out in the thread, what was
the reasoning behind having language like that? The only possibility that comes to my mind
is having very broad language in the application as to leave the door open for spec/claim
amendment, as was pointed out in the thread earlier. But such declaration isn't even a door
since it leaves no fence to have a door in to begin with. So is it just one of those things
when somebody doesn't have the time/energy to define things broadly, and just declares
"I am going to define things broadly" and leaves it at that? Good motivation but poor execution?

[JimIvey]

So, what was the point of inserting such a language into the spec?

Who knows?  Here's a common one:  the inventor says his innovation applies mainly to diesel engines but would probably work well on a gasoline engine as well.  So, you write the specification so as to not limit yourself to diesel engines.

However, during prosecution, the examiner finds that the innovation is not new in gasoline engines, so you amend the claims to be limited to diesel engines only.  There ya go.  The spec does not limit itself to diesel engines, but the claims do.  So what?  The claims define the invention. 

If you're going to ask why we don't amend the spec to mirror amendments to the claims, there are a number of reasons.  They include thorny issues of "new matter" and inviting people to import other details from the spec into the claims, and that's something we avoid like the plague.

The claims define the invention.  The spec doesn't.  That's all there is.  There's nothing more to understand.

Regards.