Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[dab2d]

I got a species requirement for a very broad claim. I tend to work in mechanical, but this is chemical.

The claim is basically A comprising X, Y, Z.

The Examiner has now said that we are required to elect an x, required to elect a y, and required to elect a z.

Granted X, Y, Z are each very generic and can be any number of different chemicals, but that is what the claim calls for. How is the Ex able to make that a species requirement? 

[Jellothighs]

I'm not sure if I understand your question.  It seems you don't think the examiner can require an election.  If so, on what grounds?

Do you have a dependent claim for each one of the number of different chemicals?  If so, let's say there are 5 different possible X's, 5 different Y's, and 5 different Z's, and depending on how they're claimed, that's 125 possible different species (I think).  I'm guessing the examiner didn't want list out all 125 species and asked you to pick 1 of the 125.  Using the word "elect" in elect an x, elect a y, and elect a z is a little confusing.  Perhaps the examiner should have said to elect a species with your choice of x, y, and z.

[bartmans]

Sometimes US Examiners confuse species election with restriction (sigh). I would check the text of the Office Action to see if the Examiner mentions any consequences of the choice that he is asking you to make, since the consequences of a species election and a restriction requirement are different.

Regards.

[JimIvey]

A friend who does life sciences patent work told me long about that 100-way restrictions are common in chemical practice.  You have my sincerest condolences.

Regards.

[NJ Patent1]

dab2d:  Per Bartmans, check the OA to make sure it is not an "election of species" - rather than an "election of invention" requirement.  The former is quite common in the situation described in the OP, as I best understand it, and IMO usually proper too.  The Examiner is not going to serach for#X times #Y times #Z combinations (# = number of species w/in the respective genus).  If it is an election of species, there should be some form paragraph in the OA w/ word "species" and searching a "reasonable number of additional species", etc.   

[dab2d]

It is really as simple as it seems.

A comprising X, Y  and Z. These are agents in a compound

The election states that we must elect an x, we must elect a y, and we must elect a z.

There is only one dependent claim and it does not alter X, Y  or Z. 

It states that the species are independent or distinct because the claims to different species recite mutually exclusive characteristics of such species.... there is only one claim at issue. How can you have species within a claim that is not a grouping? An analogy would be that A comprises of metal, plastic and ceramic.... how in the world can there be a species requirement.

I will check into the election of invention, but a broad claim should not be treated like this.

[dab2d]

I found this:

Where only generic claims are presented, no restriction can be required except in those applications where the generic claims recite such a multiplicity of species that an unduly extensive and burdensome search is necessary.  See  MPEP  § 808.01(a).  If after an action on only generic claims with no restriction requirement, applicant presents species claims to more than one species of the invention, he or she must at that time indicate an election of a single species. - Joseph K. McKane, SPE, Art Unit 1626, April 27, 2004

[NJ Patent1]

"It states that the species are independent or distinct because the claims to different species recite mutually exclusive characteristics of such species.... there is only one claim at issue. How can you have species within a claim that is not a grouping? An analogy would be that A comprises of metal, plastic and ceramic.... how in the world can there be a species requirement".

dab:  OK, in that scenario, no Marksh group or dependent claim limiting metal to, say Group IIIa, I'd have to agree.  But, per ur quote,  IMO there really is substantial multiplicity in "metal", "ceramic" and "plastic" . 

[JimIvey]

IMO there really is substantial multiplicity in "metal", "ceramic" and "plastic" . 

How many claims read on a "substantial multiplicity" of embodiments?  God help us if we're ever limited to single-embodiment claims only.

Regards.

[NJ Patent1]

Jim;  It maybe very well be "art specific". 

There are at least circa 50 elements on the periodic table that IMO as a chemist I could fairly consider to be "metals" (i.e. not non-metals).  Plastics? There are at least as many (and actually thousands more) as there are sub-genera reflected in recycling codes (those #s in the triangle of arrows on the bottom of, e.g., a soda bottle, at least in Europe).  There are at least 6 such recycling designations that I am aware of.  Ceramics?  Fugeddabout it.  I'll be uncharacteristically generous and say, arguendo, that there are only 100. I could narrow this down, but first someone would have to tell me which element to pick as the "major element" (i.e somebody pls elect a species), so I'll leave it as 100

50 times 6 times 100 = (drumroll please) 30,000. (Thank you Texas Instruments!!!).  That's a bit more than a single embodiment. 

To begin with, in the hypo presented, an Examiner would have to tape-over non-metals on the periodic table, remember that big chart hanging on the wall in high school chem? (hydrogen, oxygen, carbon, yadayada), hang the redacted table on the wall, and throw a dart.  Bingo! I'll pick Indium.  Next roll a dice to pick a number from 1 to 6, and then select "a" ceramic", say one based on alumina.  No art found?  Beautiful!  Allow the claim to all 30K species, or throw another dart, roll the dice again, pick cerium, and go search again.

Back to reality - as I percieve it -  were I an Examiner I'd bounce that hypo claim for lack of written description and as non-enable across its (IMO outrageous) scope.  Would that be proper?  I.e "claim 1 is rejected under 112 paras 1 and 2 ......? 

[patentatt]

Back to reality - as I percieve it -  were I an Examiner I'd bounce that hypo claim for lack of written description and as non-enable across its (IMO outrageous) scope.  Would that be proper?  I.e "claim 1 is rejected under 112 paras 1 and 2 ......? 

I'm glad that you're not an examiner.

[JimIvey]

Back to reality - as I percieve it -  were I an Examiner I'd bounce that hypo claim for lack of written description and as non-enable across its (IMO outrageous) scope.  Would that be proper?  I.e "claim 1 is rejected under 112 paras 1 and 2 ......? 

I'm glad that you're not an examiner.

Yeah, I have to agree that I'm glad you're not an examiner (anymore).  There's no such thing as "outrageous scope."  There is only anticipated and obvious.  Claims either satisfy 101, 102, 103, and 112 or they don't; no need for outrage.*

So, 30,000 embodiments is too much?  How about a claim that includes an element of "a database containing one or more user records"?  How many integers are there that are 1 or greater?  Here's a hint:  more than 30,000. 

Beyond that, how many variations are there for user records?  They can vary in the break-down of names (first, middle, last, prefix, suffix, and combinations thereof -- including all-in-one), they can vary in the number and types of contact information such as home/work/other addresses, home/work/other/fax/mobile/etc. phone numbers, home/work/other e-mail address, links to profiles, company names, title, picture, etc.  I'll skip the math, but I'd wager the number of permutations ranks in the thousands. 

And, that's for just one element.  Have a different type of record and your number of specific embodiments covers ranges into the millions.  How many ways are they to sort, receive, send, or parse data?  Multiply by that as well.

If you was to get a bit existential, looking at millions/billions of widgets at a molecular level, they are all unique. 

As I've said to examiners from time to time, "too broad" means 102 or 103.  Show me the art.

Regards.

* Every now and then, I toy with writing "The Tao of Patents".

[NJ Patent1]

 "Claims either satisfy 101, 102, 103, and 112 or they don't;"  Can't argue w/ that.  At least in chemical cases - similar to the hypo - it's 112 that is implicated, w/ little regard to the art (except what may be in ken of the PHOSITA).  Guess I may be imprecise with the word "broad" or "overbroad" when I really mean that there is not enough WD to indicate to the PHOSITA that applicant / patentee "had posession" of such a  broadly claimed invention (the entire genus of all plastics, metals, etc.) , and/or the claims are not enabled across their entire "breathtaking scope" (to quote some judicial opinions).  My "outrage" stems from having to deal with such patents in, say, an opinion letter. 

[NJ Patent1]

Jim:  On the commute home I considered ur post further. 

It’s not the absolute number of possible “user records” in a database that would give me pause.  I’m in no way skilled in the computer / software arts, but even I know a Cray could handle a LOT of them, fast, and not break a sweat.  The number of different ways to construct a “user record” is what might get my attention were I an Examiner. 

Based on the permutations you presented / suggested, WD and enablement (“overbreadth” in my imprecise slang) might IMO well be implicated. 

WD and enablement are of course case specific (IMO few things in patent law aren’t).  Wands gives us 6 (or 8?) factors for the later, Ariad confirms the mathematically precise “in possession of the invention” test for the former, and reminds that a US patent is a quid pro quo “deal”.  (you get protection for what you fairly disclose and enable).  So if “the number of permutations ranks in the thousands” then yea, were I an examiner NOT skilled in the art, I might indeed have a problem with that. 

How to distinguish the scenarios?  Maybe you suggested it: " looking at millions/billions of widgets at a molecular level, they are all unique."  Flaunting my ignorance, I view a “database” as a stored (on spinning reels of magnetic tape) collection of separated binary data.  What that collection of 0s and 1s represent (age, height, weight, zipcode …) could be “unique” per se but not really relevant to what is claimed (need to see the rest of the claim).  Maybe sometimes a database is just a base (collection) of data, maybe sometimes not, that just gets "massaged" as part of a bigger picture.   

OTOH,  a “plastic” or a “metal” or a "ceramic" is a composition of matter, inseparable from its individual (albeit possible similar) physical / chemical properties (so say the courts), and such don’t represent anything but themselves.  Polystyrene (as in foamed coffee cups) and polycarbonate (as in projectile-resistant glazing) are quite different. 

As one who claims to be skilled in this art (chem.), absent some examples or sound prediction, you’d never convince me that if PS works, PC would of course work too.  Furthermore, getting back to that claim in the OP, where are the %-ages?  1% to 99% for all? 

To cut back to the OP, I see no problem requiring the OP to elect one metal, one plastic, and one ceramic for initial search and examination on the merits.  In chem practice, such election does not mean that the allowed claims, if any, will be limited to these species.  a generic clai could be held patentable. 

[JimIvey]

We've had many lengthy discussions in here regarding the written description requirement.  It tends to do a claim under only in court when a claim is enforced against someone who, in my opinion, might be best handled with the reverse doctrine of equivalents -- the accused device is substantially outside the scope as contemplated by the applicant and the examiner.  If I recall correctly, there isn't much, if any, authority that the written description requirement has been successfully used during examination to reject a claim in view of some hypothetical but undescribed embodiment that the claim might some day cover.

The number of different ways to construct a “user record” is what might get my attention were I an Examiner. 

Based on the permutations you presented / suggested, WD and enablement (“overbreadth” in my imprecise slang) might IMO well be implicated. 

Seriously?!  Well, maybe I should excuse your thoughts given your admitted lack of experience in software applications.  Unless the particular invention really behaves differently based on the number of addresses stored in a user record, why should the number of addresses stored for a user, or the absence of addresses altogether, matter?  If the invention does not interact with fax numbers in any way, why should the existence or absence of a fax number matter?  If the invention requires one or more e-mail address, why should the number of e-mail address, beyond the first, matter?

Honestly, how many embodiments is too much?  Reminds me of the criticism of Wolfgang Morzart in "Amodeus" -- "too many notes".

Personally, I think the whole stupid issue could be avoiding if the Office would read "and" as "and" instead of "or."  If I recite a metal; sure, each metal is capable of independent use but is probably not patentably distinct.  If the Office used ordinary English in its statutory interpretation, this absurd practice would disappear.  I hate to say it, but a system with 2 user records in a database is capable of independent use from a system with 3 user records.  So, under the idiotic statutory interpretation maintained by the Office could result in an infinite-way restriction requirement for any claim reciting "n or more" of anything.

If that doesn't scare you as a practitioner or your clients, you don't fully understand the full implications of such a rule.  This idiotic statutory interpretation could easily and instantly gut all applications of any value whatsoever, effectively repealing our patent system. 

Regards.