Loooooooooooong summaries of the prior art

[MYK]

I'm in the middle of drafting an application, and the summary of the prior art is getting noticeably long.  The problem is that there are quite a few levels to consider in this technology, and I feel that I should give some foundation for each level of it as to how it relates to the problem and the solution/invention.

If I just jump straight into just the problem and solution without any foundation, I'm concerned about enablement issues -- all the 101 cases that Jim referred to yesterday for how courts have burdened software-related methods.  The hardware creates an inherent problem.  The invention solves it.  The invention is purely software, but how it works and why it works are all related to the hardware.

My patent litigation prof quipped (before an all-male class, so he could get away with it) that the complaints we wrote needed to be like skirts, short enough to be interesting, long enough to cover what was necessary.  (response deleted in the name of good taste --ed.) (the editor is a prude --MYK)

Am I overthinking enablement?  I'm not trying to cover particle physics to explain why chemistry works and therefore polymers and here's how to make a soda bottle.  I think I do need to get into some basic electronics to explain what the problem is and how the software works the way it works, though.  Or should I just assume that at this point everyone who is involved in this industry understands how the fundamental tools work?  Would it be best to find a recent patent in the field, point to it, and write "In U.S. patent 7,962,337, Steinbiss explains the the hardware, go see it if you've been hiding under a rock for ten years or more, it's well worth catching up."

[smgsmc]

We had a loooong thread on this topic a while ago.  Here's my take.

(a)  The approach you are taking is advantageous in the EP.  A careful delineation of the technical problem to be solved can be handy when you need to reply to an objection for lack of inventive step.

(b)  For the US, though, I keep my Background short (one or two paragraphs) unless the inventor insists on a detailed Background.  Two major factors to consider:  (1) Regardless of whether or not there is a statutory basis, many Examiners construe anything in the Background as Applicant Admitted Prior Art (AAPA). (2) There was an important Fed Circuit case (don't have the cite handy) that concluded essentially that if the invention solved a problem that the inventor was the first to recognize, then it would not be obvious to combine two or more prior-art references to solve a problem that no one else previously realized was a problem.  So if the inventor was the first to recognize the problem and develop an inventive solution, you don't want a long-winded discussion of the prior art in the Background:  too easy to let slip the newly discovered problem in there and have it declared AAPA.  Otherwise, this is a strong argument to overcome a 103.

(c)  When I do need to include an extended background to put the invention in context, I put it in the Detailed Description.  For example, suppose the invention is a new power control circuit for a mobile phone.  It's difficult to frame the invention without some tutorial on mobile phones.  But rather than putting the tutorial in the Background, I put it in the Detailed Description.

[ThomasPaine]

"...and the summary of the prior art is getting noticeably long."

Any summary of the prior art that you put in an application is too long.  It's not required, you're wasting your time and your client's money writing it, and the examiner is not even going to glance at it as he/she flips the pages to get to the detailed description of the application. 

There's no requirement to summarize the prior art in the application, no good can come of it, and you're wasting everybody's time doing it.

Stop it.

[khazzah]

summary of the prior art is getting noticeably long. 

I echo smg's and TP's comments about the dangers of the Background section.

The only thing that should go in the Background is an explicit discussion the prior art.  Any stuff needed to explain how your invention works should go in in the Detailed Description.

And I second TP's comments about choosing to discuss prior art in the first place. It *seems* like such a good idea: educating the Examiner about differences between prior art and invention leads to expedited prosecution. Doesn't seem to work that way in the real world. I've seen numerous file histories in which the Applicant went to great pains to distinguish over art by discussing this in the spec, only to be rejected by the Examiner over that very same art. And not only did the Examiner reject, he didn't budge!

But that doesn't address whether long discussions belong in the Detailed Description instead. On to that ...

The problem is that there are quite a few levels to consider in this technology, and I feel that I should give some foundation for each level of it as to how it relates to the problem and the solution/invention
....
The hardware creates an inherent problem.  The invention solves it.  The invention is purely software, but how it works and why it works are all related to the hardware.

Are two different things at play here? "How something works" is definitely enablement. But the problem/solution has to do with non-obviousness, right?

Then "Why something works" could be either, depending on what you mean. If "why" means technical principles, that's enablement. But "why this is a great product that the market wants" is non-obviousness, not enablement.

Am I overthinking enablement?  I'm not trying to cover particle physics to explain why chemistry works and therefore polymers and here's how to make a soda bottle.  I think I do need to get into some basic electronics to explain what the problem is and how the software works the way it works, though.

Really? I've only written a handful of patents about software that would benefit in any way from talking about *electronics*.  I have written a number of software apps in which a discussion of "hardware" was relevant, meaning computer architecture or network architecture.

Maybe I'm not understanding what you mean by "basic electronics".

U.S. patent 7,962,337, Steinbiss

Interesting choice of examples, because the drafter of 337 chose to put his extensive discussion of the basics of speech recognition in the Detailed Description :-)

If I just jump straight into just the problem and solution without any foundation, I'm concerned about enablement issues -- all the 101 cases that Jim referred to yesterday for how courts have burdened software-related methods. 

I'm confused by your putting 101 and enablement into the same bucket. You mentioned Jim's discussion of "how courts have burdened software-related methods", but I don't recall that being about enablement.

Sometimes people talk about 101 and written description -- problem when computers not discussed enough in the spec to allow amendments meant to get over 101. But that's not enablement.

[NJ Patent1]

MYK:  I basically clime-in with TP and Karen.  The words in the (statutorily not-required) background might help you.  They can hurt you (even in litigation of a formally unrelated patent – defendant's own! - I posted a horror story on this several times).  I also agree that enablement belongs in the detailed description.  And a US patent (or app) need not teach that which is known to the PHOSITA. 

Concerning "problem solution" in the EPO, I've taken two paths:  amend (enlarge) the background when required by EPO (yet to get "extending beyond" problem – maybe just lucky); or written a larger background, paired it way down for US, and filed two apps on same day (client had the $ and Euros). 

I don't and can't know your specifics (and fears).  But as a US practioner, IMO if you are feeling that your background is getting verbose, it probably is. Your gut is telling you so. 

[MYK]

U.S. patent 7,962,337, Steinbiss

Interesting choice of examples, because the drafter of 337 chose to put his extensive discussion of the basics of speech recognition in the Detailed Description :-)

You got me.   I didn't actually read that patent, I made up a number at random, glanced at it to see that it wasn't a cat hairbrush or bald-spot combover method (or actually related to the invention!), and threw it in the post.

I'll read through it now, though, and see how the information was presented in the DD to use as a model.

The points about putting it in the detailed description are well-taken.  I'll move it, which will make everyone happier.  We're unaware of prior art about the specific issue being solved.

[MYK]

you're wasting . . . your client's money

No.

Stop it.

'K.

[MYK]

Regardless of whether or not there is a statutory basis, many Examiners construe anything in the Background as Applicant Admitted Prior Art (AAPA).

When I do need to include an extended background to put the invention in context, I put it in the Detailed Description.

In this situation, it really is prior art, but I'll do that.  Also, thanks regarding the EPO practice.  I don't know if we'll file this worldwide or not, but I'm kind of hoping so.

Concerning "problem solution" in the EPO, I've taken two paths:  amend (enlarge) the background when required by EPO (yet to get "extending beyond" problem – maybe just lucky); or written a larger background, paired it way down for US, and filed two apps on same day (client had the $ and Euros). 

If the background information is in the Detailed Description, can it simply be moved to the background section, or would the EPO consider that improper?

[smgsmc]

Regardless of whether or not there is a statutory basis, many Examiners construe anything in the Background as Applicant Admitted Prior Art (AAPA).

When I do need to include an extended background to put the invention in context, I put it in the Detailed Description.

In this situation, it really is prior art, but I'll do that.  Also, thanks regarding the EPO practice.  I don't know if we'll file this worldwide or not, but I'm kind of hoping so.

Concerning "problem solution" in the EPO, I've taken two paths:  amend (enlarge) the background when required by EPO (yet to get "extending beyond" problem – maybe just lucky); or written a larger background, paired it way down for US, and filed two apps on same day (client had the $ and Euros). 

If the background information is in the Detailed Description, can it simply be moved to the background section, or would the EPO consider that improper?

I've filed mucho EPO applications with extended tutorial background (not summaries of specific prior-art references) in the Detailed Description without any problems.  That is, I've never had an EPO Examiner object that the tutorial material was in the wrong section.

There is one weird situation in which you must amend the application to summarize the prior art.  If you enter the EPO regional phase of a PCT app, the Examiner will tell you that your application is deficient if it does not have summaries of the prior art identified in the search report.  Most often that will be the case because you were not aware of those references prior to issuance of the search report.  Fortunately, you can simply amend the specification to add those summaries (no issues of new matter).   

[Tobmapsatonmi]

I've filed mucho EPO applications with extended tutorial background (not summaries of specific prior-art references) in the Detailed Description without any problems.  That is, I've never had an EPO Examiner object that the tutorial material was in the wrong section.

There is one weird situation in which you must amend the application to summarize the prior art.  If you enter the EPO regional phase of a PCT app, the Examiner will tell you that your application is deficient if it does not have summaries of the prior art identified in the search report.  Most often that will be the case because you were not aware of those references prior to issuance of the search report.  Fortunately, you can simply amend the specification to add those summaries (no issues of new matter).

Right.  Also note you can generally get the examiner to agree to hold this requirement until you get allowable subject matter nailed down.

[JimIvey]

Regardless of whether or not there is a statutory basis, many Examiners construe anything in the Background as Applicant Admitted Prior Art (AAPA).

When I do need to include an extended background to put the invention in context, I put it in the Detailed Description.

In this situation, it really is prior art, but I'll do that. 

While all that is in the background section can be admitted prior art, not all prior art needs to be in the background.  If the reader can guess what your invention is after reading only the background section, you're likely to have obviousness problems.  Consider solving a problem in one art using a known solution in a non-analogous art.  You shouldn't discuss both arts in the background section.  If you describe anything at all in the background section, describe the first art.  Save the discussion for how the solution from the non-analogous art can be applied to the first art in the detailed description.

In addition, all education of the examiner, judge, and jury (e.g., physics tutorial) should be done in the detailed description, not the background.

Regards.