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[PatObv]

Hello all - I've recently gone solo in an in-house gig.  I'm basically running the full shop from typing to docketing to electronically filing.  Pretty much love it, although I certainly miss the feedback and griping I had in private practice.  Luckily a patent attorney friend of mine just opened up a solo shop.  We commiserate and help each other, but this is an attempt to get feedback from a wider audience (while possibly griping some, to boot).   

I received an Office Action today that, for the first time ever in my experience, rejected a claim under 112, second for having the term 'selectively'.  According to the Examiner, the term implies a condition is not always the case, which renders the claim indefinite.  In another claim, the term 'substantially' is said to be indefinite because "relative terms render the claims indefinite."

I've used these terms for roughly a decade, and a search on the PTO's own website reveals about 325,000 different patents that include the term 'selectively' in the claims since 1975.  There is no allegation the terms are indefinite to one of ordinary skill and no citations to any authority.  I always hate these types of rejections because I feel like if I reply thoroughly, I might alienate the Examiner.  Should I try to be succinct while still making sure I get the message across?  On the surface, it looks like a token rejection to get the first claim count.  The 102 and 103 rejections are very weak (the 102, in particular, being only partially justified by ignoring the claim phrase that contains 'selectively').

Anyone seen this before, and am I being silly to 1) think this is obnoxious and 2) be worried about 'over doing' the reply?

[Isaac]

I received an Office Action today that, for the first time ever in my experience, rejected a claim under 112, second for having the term 'selectively'.  According to the Examiner, the term implies a condition is not always the case, which renders the claim indefinite.  In another claim, the term 'substantially' is said to be indefinite because "relative terms render the claims indefinite."

There are no pe se rules that substantially or selectively are indefinite.  Does the spec say anything about what a selective blah-blah operation is?   Can you distinguish a selective operation from a non selective operation using the spec.  If you argue that you can do so, does your argument imply the selective means something obvious?

[JimIvey]

I don't think I've ever used "selectively" in a claim, but I could be wrong.  I try to avoid "substantially".

Instead, I try to figure out what "substantially" should mean in my context.  Of course, during prosecution, you might not be able to fix the spec this way, but here's an example.

Suppose a server is to assign a unique identifier to something, like a client computer.  Is it really and truly unique throughout the universe?  Of course not.  But it's substantially unique, as in for the substantive purposes of the server, the identifier is unique.  More particularly, the identifier is unique among all identifiers assigned to client computers by the server for this particular purpose.  And, that's the language I tend to put in the spec and in the claims.

Hopefully, your spec will have some language that defines what's "substantial" for the particular purpose of the claimed element.

Years ago, I had a rejection like that (for "substantially") and didn't know how to get around it.  So, I've really tried to avoid that word ever since.

Regards.

[Isaac]

I've use substantially quite often, but I give support in the spec for fleshing out when things are substantially X.   For example I've used substantially parallel, substantially co-linear, and substantially the same in temperature, length, color etc.

I've inherited many cases where substantially has been used.  Generally, the spec drafters have given standards for determining when something is substantially X.  Where they fail to do so clearly, an examiner is probably doing the applicant a favor by forcing the practitioner to respond to a 112, 2nd rejection. 

[PatObv]

I don't have a problem with arguments for either rejection, and I have no doubt that both terms are acceptable (as evidenced by their broad use in other patents).  As Isaac points out, I was using 'substantially' in the context of mechanical claims, such as "substantially horizontal".  I hate to rely on the Doctrine of Equivalents, so I try to broaden the claims so that a future infringer couldn't change the claim element marginally from horizontal and avoid the claims.  I don't think I've ever used "substantially" in my chemical claims drafting.  One of ordinary skill in the art would easily understand that substantially parallel or substantially horizontal means.  As long as one of ordinary skill would be reasonably apprised of the scope of the claim, the patent drafter doesn't have to provide the degrees from parallel or horizontal.

"Selectively" here indicates that a part can be joined together or selectively disassembled.  The Examiner is correct that I'm stating a condition that is "not always the case".  The MPEP covers this when discussing alternative formats and, again, it is acceptable use (and just about required language in my context).  It isn't too far askew from saying "optionally" (2173.05(h)).

I'm just frustrated to get the rejections in the first place.  I've already decided to go 'all in' on the response (meaning really educate the Examiner, in the nicest manner possible, with citations and what not).  I'm not sure how serious they are or if this was just to get the first count, but I don't have much choice but to respond in detail.

[Isaac]

I don't think I've ever used "substantially" in my chemical claims drafting.

I've seen drugs claims that recite an "effective amount of X"  The spec of course spells out what constitutes an effective amount using terms you would not want to stuff in the claim.   I treat substantially much the same way.

 One of ordinary skill in the art would easily understand that substantially parallel or substantially horizontal means.

I think you need some context even for substantially parallel.   Subtantially parallel means something completely different when you are doing precision machining than it does when you are building a tree house.   If you haven't used substantially in the spec, then it may be difficult to get it into even an originally filed claim.

"Selectively" here indicates that a part can be joined together or selectively disassembled.

I have no idea what this sentence means and I'd never even get that far if you didn't tell me what selectively means in the specification.   

IMO, "optionally" isn't a good concept to introduce into a claim.   Perhaps you should instead introduce some conditional  language into the claim.

[MLM]

When I use 'selectively' I try to link it with some element or act that does the selecting.

I recently got a 112 indefiniteness rejection for "a point on or near a line."

[PatObv]

Whether it needs context depends on whether the scope of the claim is reasonably conveyed.  'Substantially' might be superfluous given doctrine of equivalents.  

Here is an example of how one might use selectively in the context I'm describing: "a [part A], part A comprising a portion X and a portion Y, portion X being selectively separable from portion Y, part A further comprising .... "

Would you think this language makes the claim indefinite?  One of ordinary skill



 

[Isaac]

Would you think this language makes the claim indefinite?  One of ordinary skill

I don't claim to have ordinary skill, but I don't know what is meant by X being selectively separable.  What does it means beyond X being separable from part A?

The DOE may make something superfluous, but what if you are amending a claim to make X parallel to Y or are canceling a broader claim that does not mention the relationship between X and Y.  Under Festo, you probably cannot count on the DOE in that case.

[PatObv]

I hit send mid thought so the last line is incomplete.

"What does it means beyond X being separable from part A?"

Not sure I follow. It means portion X has the ability to separate from portion Y, i.e., the portions are selectively separable.

[Isaac]

I hit send mid thought so the last line is incomplete.

"What does it means beyond X being separable from part A?"

Not sure I follow. It means portion X has the ability to separate from portion Y, i.e., the portions are selectively separable.

I'm baffled.  I acknowledge that the baffling may be my own fault.

Your claim says only that portion X is selectively separable from Y.   What effect would removing the word selectively have on the meaning of the claim?

[PatObv]

In that example, none that I can think of.  Is it indefinite as written?

[MLM]

To me, selectively separable suggests that there is some condition associated with separation of X from Y.  X is separable from Y under selected conditions.  What is doing the selection? What are the conditions under which X is separable from Y?

"Separable" alone just suggests that X is separable from Y, period.  As in removably coupled.

[Isaac]

To me, selectively separable suggests that there is some condition associated with separation of X from Y.  X is separable from Y under selected conditions.

Even if you leave selective out, the claim seems to imply that there are some situations under which X stays attached to Y.  I still don't see how selectively means anything until you specify what "some condition" is.

[PatObv]

I'd agree in this example, but still curious if you think it is indefinite as written?