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[asldfgaowergfnoasding]

Hi all,

I am a new patent examiner. I asked my trainer the following question and wasn't satisfied with the answer.

Background:

First:
        Claim 1,  a process of x steps where one of 5 elements is selected for the first step.

        Claim 2,  The process of claim 1 where the first of the 5 elements is selected.

Second:
        Claim 1,  a process of x steps where one of 5 elements is selected for the first step.

        Claim 2, a process of x steps where the first of 5 elements is selected for the first step.

Difference.   1 independent 1 dependent vs 2 independent

What, if any, is the difference between the two claim 2's?

Why would it be necessary to include both claim 2's (ie 1 independent, 1 dependent, another  independent)

Thanks in advance,

Jim





(Please excuse the name. I wanted to pick one not in use. This is the third time I have typed this question. The first time I didn't include my email. The second time I chose a name already in use. Each time my entire post was erased and I had to retype it)

[eric stasik]

First:

         Claim 1,  a process of x steps where one of 5 elements is selected for the first step.

         Claim 2,  The process of claim 1 where the first of the 5 elements is selected.

Second:

         Claim 1,  a process of x steps where one of 5 elements is selected for the first step.

         Claim 2, a process of x steps where the first of 5 elements is selected for the first step.

Difference.   1 independent 1 dependent vs 2 independent

What, if any, is the difference between the two claim 2's?

Why would it be necessary to include both claim 2's (ie 1 independent, 1 dependent, another  independent)

Thanks in advance,

Jim

Dear Jim,

Thanks for posting your question.

A dependent claim includes all of the limitations of the claim from which it depends.

In the first combination:

Claim 1 says ONE (and only one) of five elements is selected for the first step.

Claim 2 (dependent) says additionally that the element which is selected is the first of five.

In the second combination:

Claim 2 says only that the first of five elements is used. It does not preclude selecting additional elements for the first step.

Of course, this might not make any sense depending on what the invention is. Whatever is claimed has to be supported by the specification and drawings.

Kind Regards,

Eric Stasik

[asldfgaowergfnoasding]

Thanks Eric. I don't think I have explained my question very well. It is hard to frame the question without using an actual application as reference. I'll try again.

case A:  
           Claim 1:    a process of
                                 A
                                 B
                                 C
                                 D

           Claim 2:    The process of claim 1 with the additional
                            step E

case B
           Claim 1:    a process of
                                 A
                                 B
                                 C
                                 D

           Claim 2:    a process of
                                 A
                                 B
                                 C
                                 D
                                 E


case C
           Claim 1:    a process of
                                 A
                                 B
                                 C
                                 D


           Claim 2:    The process of claim 1 with the additional
                            step E

           Claim 3:    a process of
                                 A
                                 B
                                 C
                                 D
                                 E

The main difference is in case A the second claim is dependent on the first. In case B claim 1 is restated and the additional feature is added. In case C both are stated.
I can't see a difference between a and b. Claim 2 and 3 from case C seem to be redundant.

Hope this clarifies my confusion. lol

[Isaac]

One thing you did not indicate in your restatement of the problem is what kind of transitional words were used (comprising, consisting etc).

In the case C, we know that claim 1 allows additional steps because the dependent claim 2 adds step E.

But perhaps claim 3 is expressed in a closed form (e.g. using "process consisting of" rather than "process comprising" so that only steps ABCDE can be present.    

Otherwise I reach the same conclusion you do.

[asldfgaowergfnoasding]

Thanks Isaac.

The reason I didn't include any transitional words was because everything was identical. The claims were obviously copied and pasted.

[JimIvey]

Dear asl...,

I personally don't see any meaningful distinction.  I suspect you're seeing yet another attempt to give an applicant fair coverage in view of Festo.

If you're new, you might not be aware of Festo or at least weren't paying attention to all the academic debates of the last year or two surrounding Festo.  

In essence, any amendment which narrows any claim for any reason related to patentability bars application of the doctrine of equivalents entirely.  My understanding is that the bar applies only to the amended element, but I don't have the language in front of me and it's been back and forth so many times that I may not be remembering the current state correctly.

One of the theories as to how to preserve the doctrine of equivalents is to avoid your case a and use either case b or case c.  

Imagine that Claim 1 is rejected and the rejection cannot be overcome but Claim 2 is allowable.    In case a, you cancel Claim 1 and amend Claim 2 to include A, B, C, and D (just like you have in case b).  Now, you've amended Claim 2 for reasons related to patentability ... or have you?  In my opinion, Claim 2 has changed form but not substance.  However, it's exactly the same result as amending Claim 1 to include E -- a concession that E is required for reasons related to patentabilty.

Now, consider case b.  You cancel Claim 1 and Claim 2 is not amended.  Technically, this is true, but the result is exactly the same.  It's an admission that E is necessary for patentability.  I think there's even a recent Fed Cir case that says as much -- same as an amendment of Claim 1.  But you can't blame us for trying.... ;-)

You're right that Claims 2 and 3 of case c are redundant.  Practitioners sometimes try both approaches in hopes that one or the other will preserve the doctrine of equivalents for their client.

Personally, I think the doctrine of equivalents is so substantially eviscerated that it's not worth the mental gymnastics to chase it around.  I'm in the minority here.  However, I believe there isn't any disagreement that practitioners should make every effort to not give away something that you don't have to.  However, that requires incredible foresight (almost clairvoyance) to anticipate every possible workaround -- and it's nearly impossible any time a claim involves a numerical range.  Luckily, the arts I work in rarely require such a range.

I hope that clarifies.  Of course, the best I can do is guess at the reasons in your hypothetical.

Regards.

[eric stasik]

Dear asldf,

Mr. Clark's observation is the key to this puzzle. If the word is "comprising," then I don't see any real difference.

I am interested - what did your trainer say which led you to post your question here? Has the forum added any depth or color to the answer?

Mr. Ivey's comments about Festo are worth nothing.

(I'll never understand US law. All this reliance on precedent - case law - ad nausem citing of case after case after case to prove a point - and then one decision completely contrary to case law throws everything into disarray. I understand that the doctrine of equivalents was judicially created and I suppose it can be judicially taken away, but still it makes no sense to me how all this works. What is the point of relying on case law, when next week the Supreme court can say "oh, never mind"?)  

Getting back on topic, I am a little unclear as to the claim drafting strategy to defend against Festo - don't you run into claim differentiation problems?

I fully agree with Mr. Ivey that this is something that practitioners have to be on top of. Festo is huge. It is relatively rare that an infringer makes an exact literal infringement and it is my experience that the doctrine of equivalents is almost always invoked in an infringement allegation somewhere along the line.

On the positive side, Festo provides a strong incentive to not file overly broad claims which - in an era of publication - serves the public's interest.

Interesting post asldf....

Regards,

Eric Stasik

[asldfgaowergfnoasding]

Wow, thanks guys.

JimIvey:  Very informative. I am not sure if that was the applicants intent because they actually used each of the three cases for various dependent claims.

eric stasik:  You are going to laugh when you hear the trainers answer, "we just except them" (me: "why) "because, just because". My section head was able to provide more insight but from an examiners point of view. It is nice to get the explanation from the other side.

Thanks again.

Jim

[eric stasik]

Dear Jim,

Thanks for your feedback. Actually, I didn't laugh when you explained what your trainer said to you. "Just because" is not an answer to a valid question.

By the way, although the relationship between examiners and applicants/representatives is often adversarial - we (agents and attorneys) are not on "the other side." I prefer to think of us as all being on the same side of the inventor, but with perhaps slightly different views.

At the end of the day, we all share the same responsibilty: to ensure that inventors are properly protected.

Thank you for your question and I hope you to see you as a regular participant here - but perhaps with a simpler name!

Kind Regards,

Eric Stasik

[JimIvey]

Mr. Ivey's comments about Festo are worth nothing.

Maybe worth "noting?"  Not that I'm particularly thin-skinned, but it seems more consistent with your comments which followed....

;-)

Regards.

[eric stasik]

Dear Asld.....

I stand corrected.

Mr. Ivey's comments about Festo are WELL worth noting. As are most of his posts.

I was a little unclear however about the claiming strategy to defend against Festo..... trying to claim the same invention using slightly different claim constructions of identical scope seems to run contrary to the doctrine of claim differentiation.

Can anyone provide illumination on this? What is the current best practice?

Kind Regards,

Eric Stasik

[JimIvey]

Dear Mr. Stasik,

The idea in claim drafting in view of Festo is generally this:  get the same result you would have by conventional prosecution but avoid any amendments to any claims.

There are numerous suggestions as to how to do this.  I'll try to remember a few for illustration.

One was what I wrote about before.  Write all claims as independent claims and include as many combinations of elements as possible.  That way, chances are that some of the claims will likely be allowable without amendment.  The problem, as I see it, is that canceling an independent claim with A, B, and C and getting another claim with A, B, C, and D is the same as amending the first claim to include D.  I believe there's at least one court opinion saying as much.  So I don't think it works.

Another suggestion was to go through the PCT, conduct all prosecution through Chapter II (IPE), and then get your cleaned up claims into the US at the national phase.  On one hand, you get really fast back and forth at about 24 months from your filing date -- and potentially a rapid path (by USPTO standards) to an allowable case.  On the other hand, I'm not sure you won't wait for 3 more years in the PTO when you enter the national phase.  And, if the US is the IPEA (the International Preliminary Examination Authority), I'm not sure that amendments there won't count in Festo.

I think someone suggested filing continuation applications rather than amendments.  I think this one is ridiculous.  Each continuation goes to the end of the queue and you could easily spend your entire 20 year term in "pending" status.  That's one of the reasons for the 20 year terms.  

Other things you should expect to see (as an examiner) in the Festo aftermath include refusal for seemingly minor clarifications in the claims.  For example, I've had examiners object to "two or more" language because of alternative phrasing.  Of course, this is ridiculous (does anyone really have a difficult time determining whether there are two or more of anything in a particular group?), but it's easy to get around -- simply amend "two or more" to recite "at least two".  However, in view of Festo, examiners should expect more resistance to these types of amendments.  As much as I think the objection is ridiculous, I think the resistance is also ridiculous -- Festo only applies to claims which narrow the scope of the claim.  I don't believe that particular amendment narrows the claims at all.  The practitioner should be able to identify amendments which narrow and those which don't.

Bottom line: expect weird claim constructs and tougher resistance to reasonable (or inconsequential) amendments desired by the examiner.

The problem with Festo is this:  the coverage of a claim depends on whether it was changed in the PTO.  I suppose it always has.  The doctrine of equivalents (DoE) generally never allowed you to undo amendments made during pendency of the claim.  However, when the accused device was between the prior art and the literal bounds of the claim, you might have had a chance.  Under Festo, you're clearly better off (and you claim is clearly potentially broader) if you claim had not been amended.  For example, if two claims are identical and had identical arguments made in the PTO in their histories, but one of the claims started out differently and was amended to be identical, the two identical claims have different breadth of coverage.  

To me, that's absurd.  And patent practitioners here are doing what they can for their clients to avoid that unnecessary narrowing of coverage.

The lesson of Festo:  the Federal Circuit *hates* the doctrine of equivalents.  The Supreme Court insists on it.  Expect the Federal Circuit to narrow the DoE in every way it can get away with.  Practitioners should write their cases as if the DoE doesn't exist.  And, don't give away anything you don't have to.  This is where an ounce of prevention (prosecution) is worth a pound of cure (litigation).  Of course, that statement also reflects the relative budgets.

Anyone else here know of interesting, clever, or weird Festo strategies?  I'm sure there are more that I'm forgeting.

Regards.

[eric stasik]

Dear Mr. Ivey,

THANK YOU very much for your excellent explanation. It was especially valuable for you to explain this from the examiner's point of view.

I feel I have a much better grasp on the issue. Again, this is the reason I participate in this forum. Thanks to people like you, I learn something new almost everyday.

Kind Regards,

Eric Stasik

[Isaac]

I haven't heard any real claim drafting strategy Festo work arounds that I believe will work.  As Mr. Ivey points out, writing additional independent claims hoping that they won't have to be amended probably won't work.  I believe the Festo just leaves the possibility that practitioners would work a little harder before submitting to the PTO.  Quite frankly, I don't believe that is a  realistic possibility.   There is always going to be art that the practitioner way to find prior to submitting.

The only thing I can suggest is that if there are non patentability related reasons for making an amendment, you want those reasons on the record.   I agree that practitioners are going to fight and argue more with the PTO about changes that don't make a hill of beans difference.

I view Festo a little more kindly than Mr. Ivey.  It does have the problem he points out.  The problem is that Festo is an imperfect tool.   Amended claim elements are most likely the ones that got special attention during prosecution. I'm also sympathetic with the CAFC's goals.
I think the CAFC is correct that the balance between DOE and the public notice of exactly what the claims cover is could use some tweaking.  An absolute DOE bar is a blunt tool, but maybe it will promote settling versus litigating and add some certainty.

My main problem (and I believe the Supreme Court's biggest issue) with Festo is that it retroactively gutted the scope of already issued patents drafted without Festo in mind.

The Supreme Court may like the DOE more than the CAFC, but they didn't exactly reverse the CAFC in Festo, so they see some merit to it.

[JimIvey]

I just wanted to quickly thank Mr. Stasik for his kind words and to thank him and Mr. Clark and many others for their contributions here as well.  

One of the biggest downsides of leaving a big firm and going solo (or even to a very small firm) is losing the "shop talk" over cigarette breaks (I don't smoke but my colleagues did and I never missed an opportunity for a break).  Those academic discussions are great for keeping on top of new developments and flushing out details of the finer points of various aspects of the law.  This is critical to doing good work.

I'm trying to find a way to bring the whole of big firm quality of work to the solo/small firm (SOHO -- Small Office, Home Office) environment.  And, this forum is my best weapon in that endeavor to replace the friendly academic debates of cigarette breaks into the SOHO.

I participate in other forums, but this is by far the best.

Thanks to everyone for participating.