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[john122]

Hi all,

Since this question relates to international practice, I wasn't sure where to post this thread.  (I hope the admin will create a new section for international questions, besides EP)

The question I have relates to "Unity of Invention."
The application has 5 claims, claim 1 being independent and claims 2-5 depend on claim 1.
Claim 1 is directed to encoding an "audio signal"; some of the bits of the "encoded audio signal" are substituted  with a "digital message" based on some criteria.
Claims 2-5 each recite what the digital message is - for example, an authentication code, text, etc.

The international examiner rejected claim 1 in view of a prior art reference.
The international examiner, however, refuses to examine claims 2-5 because he alleges that these claims lack "Unity of Invention" with respect to claim 1.

In my opinion, I believe that claims 2-5 do not lack "Unity of Invention."
These dependent claims further recite what the "digital message" is.
Moreover, these dependent claims are within a single inventive concept.  (Am I right or wrong?)

Has anyone here been successful in traversing a "Unity of Invention" objection?  If so, what language did you use to traverse the objection.
Any input would be great.
Thanks in advance.

[Isaac]

In my opinion, I believe that claims 2-5 do not lack "Unity of Invention."
These dependent claims further recite what the "digital message" is.
Moreover, these dependent claims are within a single inventive concept.  (Am I right or wrong?)

The examiner may be correct.  If claim 1 is rightly rejected, it does not contain an inventive concept.  If claim 2 is patentable, it is due to some feature not recited in claim 1.  Thus claim 1 and claim 2 either lack unity or neither is patentable.

[dbmax]

     Sounds more like a semantic error.
     Claim 1 is out of the picture except as a preamble to claims 2-5.
     You now have 4 claims  2-5, incorporating the text of claim 1 as a preamble.
     If Claims 2-5  all recite mutually exclusive digital messages lacking a common novel feature, then they may lack unity.
     Is there any novel common feature among claims 2-5 that could be added to claim 1 to overcome the prior art?

db

Edit: strikeout is us restriction practice, not PCT.

[WinceJD]

It is not a matter of semantics - methinks Isaac has it right.  "unity of invention" refers to a "special common technical feature".  It is the common feature shared among the different inventions in an application - in your case each of claims 2 to 5 seems to be distinct but for the dependence on claim 1.  The central point is that to be a "special" common technical feature the commonality has to be novel, i.e., not in the prior art.  If the examiner has appropriate prior art that negates novelty of claim 1, it is not a "special" common technical feature and unity is broken.  In other words, the examiner has to examine each invention because claim 1 alone does not make them patentable.

I think you can figure out now how, if at all, you might traverse successfully.

[Isaac]

Nicely said WinceJD.  I was fumbling for the term 'special common technical feature' and failed to come up with it.

[dbmax]

Isaac and WinceJD,

I stand corrected.

Crudely put:

If Claim 1 is not novel, then it can have no separate novel feature in common with the other claims, even if the remaining claims would pass the unity test as a group.

Therefore the lack of novelty in claim 1 halts examination until payment of additional fees, regardless of the novelty or unity of the remaining claims.

This seems a rather harsh interpretation of PCT Rule 13.2 by the examiner, certainly more harsh than I would have expected without knowing more about claims 2-5. But further review of MPEP 1850 and PCT ISPE Guidelines has convinced me that the examiner used this rationale.

This should be a cautionary tale.

Thanks,

db

[john122]

Thanks for the replies, but I'm still confused about "Unity of Invention."

Let me get this straight.  If claims 1-5 satisfy the requirements of "Unity of Invention," and the examiner rejects claim 1 for lacking novelty, the "Unity of Invention" of claims 1-5 can still be broken?  (This is a bit confusing to me.)

Also, the single inventive concept here is that certain bits - e.g., N bits - of an "encoded audio signal" can be substituted with a "digital message" based on some criteria.  The fact that dependent claims 2-5 recite what the "digital message" is lacks "Unity of Invention"?

[Isaac]

Thanks for the replies, but I'm still confused about "Unity of Invention."

Let me get this straight.  If claims 1-5 satisfy the requirements of "Unity of Invention," and the examiner rejects claim 1 for lacking novelty, the "Unity of Invention" of claims 1-5 can still be broken?  (This is a bit confusing to me.)

It is confusing compared to US restriction practice.   Under US practice, examiners do not do any searching of the prior art to determine whether a group of claims is separately patentable over another group.  The examiner just makes a rough estimate of patentability based on his experience.  Typically restriction requirements are not revisited during prosecution.

Unity of invention is different.  The prior art plays a very strong role and unity of invention can be revisited after a search.
 
Claims 1-5 only satisfy the requirements for lack of unity under the assumption that a technical feature that is common to the claims is novel (special).  After a search establishes that the common feature is not novel, that initial assumption is no longer valid. 

Also, the single inventive concept here is that certain bits - e.g., N bits - of an "encoded audio signal" can be substituted with a "digital message" based on some criteria.  The fact that dependent claims 2-5 recite what the "digital message" is lacks "Unity of Invention"?

That is the more difficult part of the analysis, but if you argue that those features are not significant you are pretty close to admitting that claims 2-5 are not patentable unless claim 1 is patentable.

[dbmax]

John122:
     Heres another way of looking at it. You may have unity, and you may have invention, but you don't have unity of invention (according to this theory), else Claim 1 would not have been rejected for lack of novelty.
     Fortunately this rule is more subtle than it looks on the surface, else no app would ever get examined beyond the first rejected claim.  At one time, I believe the European receiving office rejected this approach under the theory that a claim without novelty was not an invention, and therefore could not destroy unity of invention. Times change.
     
All:
     Presuming claims could be amended to meet the unity requirements, would one of these other strategies work?
          1) Don't pay the extra fee. Demand IPE. Amend claims to comply with unity requirements.
          2) Don't do anything. Take up the unity/divisional question at the national or regional stage.

db

[Isaac]

At one time, I believe the European receiving office rejected this approach under the theory that a claim without novelty was not an invention, and therefore could not destroy unity of invention. Times change.

Interesting.  A USPTO examiner recently posted here that he would use this approach.  It does seem quite harsh.  I would not be surprised if the EPO was not using it even now.

[dbmax]

     Presuming claims could be amended to meet the unity requirements, would one of these other strategies work?
          1) Don't pay the extra fee. Demand IPE. Amend claims to comply with unity requirements.

According to MPEP 1875:
All claims directed to inventions which have not been searched by the International Searching Authority will not be considered by the International Preliminary Examining Authority.

     I dont see any justification for this policy in Article 34, which seems to call for de novo determination of unity of invention. One would hope that an amendment to claim 1 (supported in the spec) to overcome the novelty objection would qualify for examination in a US IPE. 
     PCT ISPE Guidelines @ 10.75 seems to indicate that the first invention mentioned in the amended claims is always entitled to IPE, regardless of ISR results (and despite 10.72). 
     Am I reading correctly?
 
db

[JustAnotherExaminer]

Technically, all claims that are properly rejected under prior art lack unity with one another.  Lack of unity is a sort of "at the discretion of the examiner" type of thing.

[JimIvey]

Technically, all claims that are properly rejected under prior art lack unity with one another.  Lack of unity is a sort of "at the discretion of the examiner" type of thing.

So, once you've searched and analyzed and provided a prima facie case for unpatentability of a claim, you can refuse to search and analyze the claim?  Seems a bit silly to me.

And, I'm sure there's some authority somewhere for that.  I'm sure the PCT doesn't say that whatever the examiner wants to do is cool.

Regards.

[dbmax]

Technically, all claims that are properly rejected under prior art lack unity with one another.  Lack of unity is a sort of "at the discretion of the examiner" type of thing.

My question was twofold,

1) Would the US IPEA refuse to examine claim 1 after amendment to overcome an ISR prior art rejection, on the theoretical grounds that the amended claim describes an invention which has not been previously searched?

 2) If so, is this contrary to the way other offices interpret PCT?

This apparent tension between MPEP 1875 and PCT ISPE Guidelines 10.75 raises questions over the rationale for amendment under Article 34. Combining this US policy with Article 34(2)(c), it is difficult to find a situation where the US IPEA would ever issue an opinion. The result in John's case would be that no claim would be examined by the US IPEA, which result appears contrary to Article 34(3)(c).

The MPEP policy also exceeds 37 CFR 1.488, where the policy is supported only in certain instances where lack of unity is found in the amended claims and the offending claim is not the first claim p(b)(3), or the US IPEA chooses (apparently at its option) to issue a report with no claims examined p(b)(1).

Edit:  As Bartmans points out in a later post, those provisions of 37 CFR 1.488(b)(1-2)  find support in PCT Rule 66.1(e).

Thanks,
db

[bartmans]

2) If so, is this contrary to the way other offices interpret PCT?

At least the European patent office also holds that claims that have not been searched during PCT (or - if applicable - during the extended European Search after PCT) will not be examined, and can only be furthered when a divisional application is filed with such claims.

Regarding the original question about lack of unity: there is a difference between a priori and a posteriori lack of unity. A posteriori lack of unity can be found when the general concept is found to lack novelty or inventive step. Consider the following claims:
1. A widget comprising a metal.
2. A widget according to claim 1, wherein the metal is Au (gold).
3. A widget according to claim 1, wherein the metal is Ag (silver).

The novelty of claim 1 could be destroyed if the prior art would show a widget with iron. Then claims 1 and 2 would be deemed to lack unity and a rejection/restriction (depending on the country where the application is examined) would be issued.