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Understanding Patent Claims

Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
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Posted: Jul 12, 2014 @ 8:00 am
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In order to obtain exclusive rights on an invention the law requires that the patent applicant particularly point out and distinctly claim the subject matter which the inventor regards as his or her invention. Any patent, or patent application, contains a variety of different sections that contain different information. Generally speaking, a patent is divided into a specification, drawings and patent claims. Only the patent claims define the exclusive right granted to the patent applicant; the rest of the patent is there to facilitate understanding of the claimed invention. Therefore, patent claims are in many respects the most important part of the patent application because it is the claims that define the invention for which the Patent Office has granted protection.

35 USC 112 requires that the applicant shall particularly point out and distinctly claim the subject matter which he or she regards as his or her invention. The portion of the application in which he or she does this forms the claim or claims. The claims are in many respects the most important part of the application because it is the claims that define the invention for which protection is granted.

Like most statutes, Title 35 is not very specific with respect to the details regarding implementation of its directives. Notice that 35 USC 112 only states that a claim is necessary, but does not provide any information on the structure or format of the claim or claims. It is, therefore, necessary to turn to Title 37 of the CFR to expand upon what is actually required. The basic section that deals with claim requirements is 37 CFR 1.75.

 
Original Claims

It is necessary to include a full and complete description of the invention in the initial filing with the Patent Office. Rearranging of an application is always allowed, but the addition of new material is never allowed. In determining the breadth of what is covered by the initial filing the applicant may rely on the description contained in the specification, any drawings filed and the originally filed claims.

Today, as the result of the Patent Law Treaty Implementation Act, patent  claims and drawings are no longer required in order to obtain a filing date on a non-provisional patent application. While patent claims can always be added to an application if the original disclosure as filed will support the claims, it is exceptionally dangerous to file a patent application without drawings. Drawings are almost always going to be required, and adding drawings later will be difficult if not completely impossible because drawings invariably convey more than the textual description of the drawings. Having said this, it is advisable to file non-provisional patent applications with claims. Those claims filed with a non-provisional patent application are original claims. These original claims can support themselves, meaning claims are considered a part of the larger, overall disclosure. Having claims present at the time of filing helps ensure that at least what you are claiming has sufficiently been disclosed in the patent application.

Originally filed claims need not be exhaustive. Through prosecution patent claims can be amended and even added, provided of course the initial disclosure is broad enough to cover the added or amended matter. Therefore, when drafting a patent application it is good practice to spend time drafting quality claims. Do not simply rely upon your ability to add claims later because invariably you will wind up wanting to at some point add claims or elements thereof that are not described in the specification. Include enough claims with the initial filing to cover the invention and important variations.

 

Form of Claims

The claim or claims must commence on a separate sheet and should appear after the detailed description of the invention. While there is no set statutory form for claims, the present practice in the Patent Office is to insist that each claim must be the object of a sentence starting with “I claim,” “The invention claimed is”, or the substantial equivalent thereof.

Each claim must begin with a capital letter and end with a period. Periods may not be used elsewhere in the claims except for abbreviations. What this means is that each claim can be only one sentence. This is true regardless of how tortured the sentence structure is and how incomprehensible the sentence may be to those not trained in patent claim drafting. Where a claim sets forth a plurality of elements or steps, each element or step of the claim can be separated by a line indentation.

Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. The reference characters, however, should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims.

 

Claim Arrangement & Numbering

Claims should preferably be arranged in order of scope so that the first claim presented is the broadest (i.e., least restrictive).   All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable. Similarly, product and process claims should be separately grouped. Such arrangements are for the purpose of facilitating classification and examination. Failure to arrange claims in the desired sequence is certainly not fatal. The examiner who sees an inappropriate arrangement will issue an objection. Objections are issued as to form and do not relate to the substantive patentability requirements.

The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.” If the form of the claim (as distinguished from its substance) is improper, an “objection” is made. The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Patent Trial and Appeals Board, while an objection, if persistent, may be reviewed only by way of petition to the Commissioner. If the rejection and objection are for the same reason an appeal can be taken to the Board.

 

Independent Claims

An independent claim is a stand alone claim that contains a preamble and all of the elements necessary to define the invention. There are three types of independent claims: (1) a claim for a “thing,” such as a composition of matter, machine, apparatus or device; (2) a claim for a method of making a “thing”; and (3) a claim for a method of using a “thing.”

 

A Claim for a “Thing”

Below is the primary illustration in US Patent No. 6,009,555, titled “Multiple component headgear system.”

Claim 1, which is the only independent claim in this patent, reads:

1. A headgear apparatus to be worn by a user comprising:

a headband member for fitting about a user’s head, said headband member having a frontal portion adapted to substantially extend across the forehead of a user;

a visor member removably secured to said frontal portion of said headband, said visor member independently extendable from said headband; and

an eye shield member removably secured to said frontal portion of said headband, said eye shield member being of a configuration adapted to extend across a portion of a user’s face in frontal blocking relationship to a user’s eyes.

For information about claim drafting a claim to a “thing” please see: Patent Claim Drafting 101: The Basics.

 

A Claim for a Method of Making a “Thing”

Here is an example of a method of making — U.S. Patent No. 6,635,133, which relates to a method for making a multilayered golf ball. As you read the claim notice the use of gerunds, which is the proper way to draft a method claim.

Claim 1 reads:

1. A method of making a ball, comprising:

a) forming an inner sphere by forming an outer shell with a fluid mass center;

b) forming a plurality of core parts from elastomeric material;

c) arranging and adhesively joining the core parts around the inner sphere with a flexible adhesive and then crosslinking the core parts to each other by compressing them together at an elevated temperature to form a substantially spherical core;

d) molding a cover around the assembled core, wherein the elastomeric material has a cohesive strength and the adhesive has an adhesive strength that is stronger than the cohesive strength.

For more information about drafting a claim to a method please see: Drafting Patent Applications: Writing Method Claims.

 

A Claim for a Method of Using a “Thing”

Here is an example of a method of using claim — U.S. Patent No. 6,405,736, which relates to a method of using self adhesive hair extensions. I like this example for several reasons. First, it is something relatively simple that anyone can understand. Second, notice that it does not say that it is a method of using, which is somewhat commonplace in these types of claims. You could call this a “method of using self adhesive hair extensions,” what you are really doing is attaching the hair extensions. So be careful when looking for patents discussing a method of using a “thing.” Frequently the claims will not specifically use the magic words “method of using,” but the thrust of the claim is clearly using a “thing.”

1. A process for attaching removable, self adhesive hair extensions to the head of a user, which comprises the steps of:

a) forming a self adhesive hair extension by arranging a quantity of hair strands in a parallel arrangement so that the hair strands are aligned at a first attached end and a second attached end,

b) securing the first attached end of the hair strands to a base support unit,

c) sewing a rectangular shaped, self adhesive tape having a removable back to the base support unit,

d) forming a part line on the head of a user to form an upper portion of hair and a lower portion of hair,

e) temporarily sweeping the upper portion of hair up and away from the part line and over the top part of the head and securing it into position,

f) removing the backing from the self adhesive tape and making contact with the part line on the head of the user, aligning and securing the hair extension in place; and

g) repositioning the upper portion of hair back to its original position.

 

Dependent Claims

37 CFR 1.75(c) explains that One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Claims that refer back to and further limit another claim are called dependent claims. Dependent claims incorporate by reference each of the limitations of the claim from which they depend. Because dependent claims incorporate by reference each of the limitations of the claims from which they depend they are easy to write. Additionally, dependent claims are used in every application because additional fees are charged by the Patent Office if the application has more than three independent claims. Most patent applications have few independent claims and many dependent claims.

It is important to remember that dependent claims must further limit the claim from which they depend. This is most frequently accomplished by claiming a more narrow range (where appropriate) or by the addition of more elements. Claims written in dependent form that broaden the scope of the claim from which they depend are considered to be in improper dependent form, which should result in an objection.

 

Examples of Proper Dependent Form

Returning to the ‘555 patent, claims 2 through 9 are good examples of proper dependent form.  These claims read:

2. A headgear apparatus as recited in claim 1, wherein said eye shield member is adjustable with respect to said headband member.

3. A headgear apparatus as recited in claim 1, wherein said visor member and said eye shield member are secured to said frontal portion of said headband member by a set of rivets.

4. A headgear apparatus as recited in claim 1, wherein said headband member is formed from neoprene fabric.

5. A headgear apparatus as recited in claim 1, wherein a continuous bead of sealant material is selectively placed on said headband member.

6. A headgear apparatus as recited in claim 1, wherein said visor member has a lightwave transmissive portion and an opaque portion.

7. A headgear apparatus as recited in claim 1, wherein said visor member has a crescent-shaped surface and a concave-shaped edge, and wherein said surface of said visor member is increasingly transmissive of lightwaves within the visible spectrum as said surface extends away from said concave-shaped edge.

8. A headgear apparatus as recited in claim 1, further comprising a visor cover for placement over said visor member.

9. A headgear apparatus as recited in claim 1, further comprising a cord for connecting said headband to a piece of wearing apparel of a user.

Notice that the preamble for each of these claims begins “A headgear apparatus as recited in claim 1”. Dependent claims refer back to the invention, which in this case is a headgear.

Several things are worth mentioning.  First, the first word of each claim must begin with a capital letter.  Second, each of these dependent claims refers back to claim 1, which is an independent claim.  Dependent claims do not always need to refer back to an independent claim, they can refer back to a dependent claim, which allows you to use dependent claims to create claims of varying scope building little by little in specificity.  Third, each of these dependent claims further define and narrow the thing claimed in claim 1.  This is important because dependent claims must always narrow the claim from which they depend, and because dependent claims that refer to a thing MUST refer back to a claim that also claims the thing.  As a general rule, it would ordinarily be inappropriate to have a thing claim depend from an independent claim that claims a method of making or a method of using.  Finally, there is no particular magic to the phrase “A headgear apparatus as recited in claim 1.”  This preamble is certainly appropriate, but other flavors of the same that would likewise be appropriate include: (1) “The apparatus of claim 1”; (2) “The device of claim 1”; and (3) “The headgear device of claim 1”.

With respect to the body of the dependent claims quoted above, notice that claims 2 through 7 each further define the independent claim by adding limitations to elements already present in the claim.  This is accomplished by inserting the phrase “wherein said [insert element]” immediately after the preamble.  Compare this with dependent claims 8 and 9, which add elements to the independent claim.  The addition of elements is accomplished by inserting the phrase “further comprising a[n] [insert element]”.  Both the further definition of elements already present in an independent claim and the insertion of new elements act to limit the scope of the independent claim.  Therefore, both are appropriate dependent format, and both are frequently used when drafting patent claims.

 

About the Author

is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

 


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48 comments
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  1. Gene, lay readers (and I take it that they are your intended readership) might be wondering why one bothers to include dependent Claims at all. Yes, you say they limit the scope. But that can’t be the reason, can it? We don’t want to limit the scope, do we? Might there be another reason to include them?

  2. Max,
    As we know, examiners often reject the first independent claim but concede that a combination of dependent and independent claims would be patent eligible.
    I have seen numerous patent applications where the first independent claim is far too broad not to be blanketed by prior art, and the novelty lies buried down in the dependent claims. It appears in these cases that the attorney who drafted the application either understands fully the extent of the prior art and is “trying his luck” with the examiner, or else is woefully ignorant of the state of the art. I do harbour my suspicions over which is the more common option.

  3. Yes, “..how incomprehensible the [claim] sentence may be to those not trained in patent claim drafting” is very true. Understanding how a broad claim “reads” on technical prior art, and other aspects of claims, are also difficult for lay persons, especially in a jury trial with conflicting “advice” from highly paid attorneys and witnesses and very long and difficult to understand jury instructions from the judge. That plus the huge cost difference is one of the main reasons PTO IPR post-grant reviews [almost all with previously unconsidered patent or publication prior art] have become so remarkably widely used so rapidly. Over 1000 per year now. Both sides get to make arguments in an IPR, but the claims are read by Board APJs – patent attorneys who have become Administrative Patent Judges.
    Re the above question about dependent claims, is not the fee difference vis a vis comparable numbers of independent claims a major factor? Also, given the new Sup. Ct. case law increased risk of 101, 112 or ambiguity rejections of a very broad independent claim, dependent claims are increasing important to have something valid to fall back on. That is in addition to all the patent applications filed without any prior art search and thus with no real clue as to how broadly the invention may be claimable after the examiner’s prior art search.

  4. Thanks Paul. Why dependent claims? You answer:

    “……….increasing important to have something valid to fall back on”

    in which the operative word for me is “valid”.

    When the Independent claim turns out to be untenable, what Americans “fall back on” is the WD. Is that not “valid”? How is a dependent claim more “valid” than that?

    So may I ask again, why bother with them? For example, how often does it happen that a dependent claim is decisive to the outcome of a patent infringement action?

  5. Thanks Benny. That would be a good reason, to get from the PTO Exr a positive indication of patentability.

    So, Paul, dependent claims are like the “Auxiliary Requests” of EPO prosecution: Can I (Main Rquest) have Claim 1? If not, can I (Auxiliary Request) have a patent with this narrower version of Claim 1?

    It is just that Americans really do not like Auxiliary Requests. They think that if you include an auxiliary one, the Main Request will get short shrift.

    Paul, why is it diffrent then, with dependent claims. Doesn’t their presence incite the Exr to choose a narrow one and inform the Applicant that that’s all he can have? Wouldn’t Applicant be better off without them?

  6. MaxDrei-

    In patent infringement cases dependent claims are used all the time to assert infringement.

    I hear a lot from independent inventors that they do not want to narrowly describe their invention and only want the most vague description possible so that more is infringing. That is up to them, but the application will be useless and if a patent does issue the patent would be exceptionally easy to challenge and quite useless.

    If you have only one claim in your patent and the patent claim becomes invalid you are left with no patent claims in the patent, which is why you absolutely need to have dependent claims. Remember, the broader the claim the easier it is to invalidate the claim. Putting all your eggs in one basket just doesn’t make a lot of sense, particularly when for the filing fee you can have up to 20 total claims and up to 3 independent claims. Why would you ever not take 20 claims? That would be a very poor decision.

    Further, it is always preferable to have a specific claim that the defendant is infringing. If you have a highly specific dependent claim that is being infringed that can and does influence the decision-maker.

    Still further, in a patent you can protect more than what you are going to be doing. You define the invention broadly, but you absolutely want claims of varying scope (i.e., specificity) that describe exactly what you are planning on commercializing. So having a handful of very specific claims that narrowly cover the primary commercial embodiments is always advisable.

    Further still, post grant challenges have high fees, but the fees get even higher when a dependent claim needs to be challenged. If a dependent claim is challenged in a post grant proceeding all the claims that the dependent claim refers back to must be challenged and fees paid for those. So if you have a lot of dependent claims that little by little add specificity and the claims need to be challenged the post grant fees would be much higher, which in some cases could deter use of post grant proceedings that are highly unfavorable to the patentee.

    -Gene

  7. MaxDrei,

    I think you missed this line above:

    which allows you to use dependent claims to create claims of varying scope building little by little in specificity

    I am not sure what you are on about with your assertion of “It is just that Americans really do not like Auxiliary Requests. They think that if you include an auxiliary one, the Main Request will get short shrift.”

    I see no basis for this assertion.

    Further, you seem confused about fallback (claim – dependent, versus specification). WD is required no matter the level of the claim, but does not and cannot take the place of the claim.

  8. Ah ha. So (no surprise here then Gene) what Applicants do best with is:

    “……..a lot of dependent claims that little by little add specificity.”

    Reassuringly, it is just the same in Europe. To those Inventors who want only the broad claims, because they fear that the presence of narrow claims will somehow incite the Examiner (or court) to hold them to the core of the Invention and no more, and so reduce their enforeceable scope, I would suggest that the presence of a nicely graded array of dependent claims, each progressively adding a quantum of patentability to the independent claim, serves to enhance the impression of validity of the main claim, rather than to take from it. If there is so much of substance within the envelope defined by Claim 1, why then Claim ! ought to be valid too, no?

    Further question. Is not the graded set of which we speak (and the WD in support) tantamount to “patent profanity”?

  9. Just “fall back on the WD”? Do you mean just add limitations to the main claim by amendment during application prosecution [or a reissue] only when forced to do so? [Don’t try that in an IPR.] That is assuming there will be suitable claim element language in the specification that will avoid “new matter” issues but that is also not too narrow for an infringement? I doubt if it would help a DOE argument either.
    Trying to argue that unclaimed specification limitations should be considered part of an issued claim in litigation may work with some Fed. Cir. judges in some cases, but not most. Dependent claims that properly add such limitations in claim form is far better.
    Also, the U.S. patent statute says that invalidating one claim does not affect validity determinations of the other claims.

  10. MaxDrei,

    Can you re-phrase your ‘further question’ at 8 concerning patent profanity?

    There is no direct or causal connection between a “graded set” and “patent profanity.”

    Patent profanity deals with the application and composing the application to avoid the (unforeseen) effects that are generated by judicial decisions. Such is strictly apart from how one might – or might not – choose a claim strategy (other than to avoid the profanity no matter what claim strategy is chosen).

  11. Thanks Paul, especially for:

    “…….the U.S. patent statute says that invalidating one claim does not affect validity determinations of the other claims.”

    which of course is irrefutably logical. If Independent Claim 1 lacks novelty, that is no basis on which to find that the claims dependent on it are also lacking in novelty. Which might in turn be why so many Americans are angered and confused by the EPO’s “Auxiliary Request” system. As somebody with experience of prosecution at the EPO, what do you think about that?

  12. anon, I take “patent profanity” to be when the application contains something that implies that the Invention (for which protection is solicited) is in fact narrower than that which is defined in the independent claim.

    I see a ladder of abstraction ascending from the Best Mode of the Detailed Description, out to the concept of the Independent Claim.

    I see the dependent claims as the rungs of that ladder. I see them each as an opportunity given to the reader to call a halt, stop ascending and cry “That’s quite enough abstraction for me, thank you very much”. And it is the bits of the WD that are there to complement and support each dependent claim, explaining why each ladder rung is placed where it is, that will (unless the drafter is careful what she writes about the subject matter of these dependent claims) provide the reader with the justification to call a halt.

    For example with ranges of content of alloying elements. Consider “Inside this range, even higher values of Parameter X are achieved” as opposed to “To attain Benchmark Y, it was found necessary to operate within this narrow range X”. Which to choose? Which do you prefer, patent profanity or a patent to issue in Europe? Choose deliberately, on the basis of full knowledge of both systems. Perhaps, after all, you can reconcile the two.

  13. Gene at 6,
    You mention that ” post grant challenges have high fees, but the fees get even higher when a dependent claim needs to be challenged”
    Under what circumstance would I want to challenge a dependent claim rather than the independent claim it stems from? From my limited understanding, if I am not infringing the independent claims, I can ignore the dependent ones, and if I am infringing a dependent claim, I am in trouble with its’ independent source, first and foremost.

  14. Thanks MaxDrei for your particular understanding of “patent profanity.”

    That is not the commonly understood definition (not by a long shot) and it is good to note for the conversation that you are talking about something else.

    With that in mind, your reference of WD and support of claims can be understood for the rather unremarkable proposition that your claims must be supported by the specification. I believe that was a lesson learned on day one of application writing.

    As to your use of “the reader” calling a halt, can you explain who this reader is? Here in the states, not just any reader will do.

    And, while we may share many common beliefs, My moniker is with a capital “A.” You would do well not to carry the baggage of your quibbles when you do not have to.

  15. MaxDrei,

    Can you supply any backing to your assertion that “so many Americans are angered and confused by the EPO’s “Auxiliary Request” system“?

    This is the second time that I see you asserting something that on its face (and considering the article) seems to be rather groundless.Paul Morgan’s view paints the opposite of what you assert, that given the lack of impact between claims, that there would be no reason to be angry or confused.

    Why are you characterizing so, and with such a broad brush?

  16. Anon,
    You ask, “As to your use of “the reader” calling a halt, can you explain who this reader is? Here in the states, not just any reader will do”
    Let me explain who the reader is.
    Me.
    At our company, we read patents primarily to avoid infringing them, and the levels of abstraction and legalese, often combined with poor writing skills, sometimes with less than professional translation, doesn’t make my job any easier. How many people do you think actually read the whole of any particular patent, other than the IP mangers of the applicant, and the examiner?

  17. Benny,

    Thank you for answering.

    Of course, your answer is not correct, as the legal impact of the claims is geared not to a reader such as yourself.

    Yes, you are “a” reader. But the question of readership here is geared to the legal point. That reader is the person having ordinary skill in the art to which the invention pertains.

    Your “wanting” an easier read then, can be seen for the error that it is. This is a common and oft repeated error of yours. No wonder why we seem to butt heads often – you are intent on not understanding the legal dimension of a legal document.

  18. Anon,
    You appear to contradict yourself. You say that from a legal point of view the patent application is geared to the PHOSITA, then you tell the PHOSITA (me) that he is not the audience.
    I have read Patent applications drafted in varying shades of quality – some are lucid, some appear to make a deliberate attempt at obfuscation. I do understand the requirement for unambiguity, and how that makes a patent draft different from an engineering specification, but I refuse to accept the notion that “it is a legal document, so clarity is irrelevant”.

  19. Benny,

    There is no contradiction.

    PHOSITA is a legal term of art – and you are not that legal person.

    Further, you create a strawman argument concerning clarity. I never said clarity was irrelevant. Clarity is relevant – just not with you as the arbiter, since you are not PHOSITA.

    Lastly, what you refuse to accept – now that is irrelevant to the legal standard.

    I really wish that you would gain some minimal appreciation of law in dealing with patent law issues. I feel that I am being condescending, but also feel that you should know better. You seem trapped in a technical-only mindset that is just not helpful for you to understand the topics of conversation. Repeatedly, we run into exactly this type of issue. You seem recalcitrant and unreasonable in dealing with law.

  20. I feel like this question came up in a case in the past year or two (in the context of chemical compositions), but is an *independent* claim ever allowed to simply refer to another claim – e.g., just for shorthand?

    For example, suppose you have two things that fit together somehow – which for sake of argument you want as separate independent claims – could you spell out claim 1, and then in claim 2 refer back to “. . . the XYZ of claim 1″ without creating any claim dependency?

  21. Anon,
    As usual, you display greater skill in providing criticism than information. Despite informing the forum what a PHOSITA is not, you seem reluctant to make any statement as to what it is. One of the first things I learned about patents is that their true purpose is to encourage the dissemination of information in return for exclusivity – this does not mean disclosing the information solely to attorneys, who have no use for it, but to those who might implement the disclosure in return for financial compensation. This purpose will not be achieved if the disclosure is so poorly written as to be incomprehensible..

  22. Anon,
    Sorry to bother you again, I did a little research and found a definition of PHOSITA – here is what I came up with –
    “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same”
    You are no doubt familiar with this quote and recognize the source.
    It does say “clear , concise”, and refers, I believe, to a real “person skilled in the art”.

  23. Benny,you write to Anon:

    “Despite informing the forum what a PHOSITA is not, you seem reluctant to make any statement as to what it is.”

    This is always how he is. See, above, at # 14, where he tells me I’m wrong on “patent profanity”: Thus:

    “That is not the commonly understood definition (not by a long shot)….”

    but then chooses not to enlighten us on whether one or other, either or both of my simple sentences in the last para of my # 12, included only to illustrate what is and what is not profane, is or is not within the “commonly understood definition” of patent profanity.

    It is as if either his parent or his teacher followed the unhelpful principle “That’s for me to know and you to find out”. His participation in blogs is a way of getting his revenge for the treatment inflicted on him, and gives him a good feeling, no doubt.

    Next thing he will be telling you is that you are running away, afraid to have with him what he fondly supposes to be a “conversation”.

    BTW, despite the treatment meted out to SadPanda, Keep on writing. Gene does actually want readers who are not patent attorneys, and I, for one, enjoy reading your stuff.

  24. At # 15 above, Anon writes:

    Anon July 14th, 2014 8:55 am

    MaxDrei,

    Can you supply any backing to your assertion that “so many Americans are angered and confused by the EPO’s “Auxiliary Request” system“?

    Readers, I assert it on the basis of a career lifetime of experience in telephone conferences with patent attorneys in the USA, instructing me on the prosecution of cases at the EPO.

    I have the impression that Anon has no idea what an EPO “auxiliary request” is. Can Anon “supply any backing” (beyond his mere assertion) to reassure us that, before he read this thread, he had even heard of them? If one doesn’t even know what one is, how can one even start to think whether it might anger or confuse.

    Conversely, if you the reader do know what they are, you will immediately understand why other US patent attorneys find them irksome.

    It’s like the EPO “characterized in that” claim. Those US patent attorneys who least understand how they are construed in Europe are the ones who are most virulent in their knee-jerk criticism of them

  25. Benny, there is no mystery about who is the PHOSITA. But the question is one that lawyers can argue about until the cows come home.

    Here is a Link to a recent English case:

    http://www.bailii.org/ew/cases/EWHC/IPEC/2014/1306.html

    about flood defence barage devices.

    Here, the invention was characterized by the use of super-absorbent material as used conventionally in female hygiene devices. So was the relevant PHOSITA a civil engineer, a barage builder, a super-absorbent materials specialist, or indeed an engineer from the likes of Proctor & Gamble. The litigants (not surprisingly) had differing views.

    Benny you will understand that it is irrelevant to validity which prior art the named Inventor knew about and which she did nort. The determination of claim validity should be objective, rather than subjective, so we need the artificial legal construct of the PHOSITA, to keep the determination of patentability over “the prior art” as objective as we possibly can. The PHOSITA knows more than any real life inventor, but is less inventive than any person who invents the subject matter of a valid claim. This can confuse people with no knowledge of how the validity of patent claims is decided disspassionately, without emotion and with no loss of face.

  26. MaxDrei,

    Kindly refrain from such nonsense as:

    His participation in blogs is a way of getting his revenge for the treatment inflicted on him, and gives him a good feeling, no doubt.

    Thank you. Such is neither accurate, nor called for.

    Knowing what something is not is a benefit.
    I need not precisely define something to provide that benefit.
    In Benny’s case, providing a full legal definition would be akin to throwing pearls before swine.

    Small steps, sometimes, are the best steps.

    As to “treatment of SadPanda” do you have any particular issue in his “treatment” that bothers you? Something that you take offense to? Or will this be yet another thing that you add to the baggage you carry around with you , to help add insult when there is none?

    At 23, you want me to “define” a term you think I do not know. An odd request. Perhaps you should define the term straight up? Your use of the term in the context here seems to make an implication that is not in accord with the topic of providing a range of coverage with independent and dependent claims that is common nature for US prosecution. You seem to want to push an all-or-nothing independent only claim scheme, and use a phrase that I question to implicate a US desire that is just not there. Forgive me for questioning your “lifetime of experience,” but often your posts exhibit a rather Quixote-like experience that is quite frankly, rather bizarre.

    As to the “characterized in that” claims, you should not confuse the US tendency to not want to use that with “anger or confusion.” Methinks, you are a bit hasty in your criticisms (here and elsewhere) and a bit lax in expressing your own views with care enough of the effects of the words you choose. You are showing a tendency to project negative emotions, that are not called for. While I need not get into a psychological profiling session, suffice to say that such behavior of subjectively projecting emotions on others is not professional.

    As to “characterization” of PHOSITA, MaxDrei should be aware that not only will lawyers “argue about until the cows come home” (and still look for me to provide a definition, no less), but that the US concept is not the same as the EP concept, in at least as far as the KSR case has imbued the US PHOSITA with at least common sense inventive capability (and thus differs from the automaton version of the EP PHOSITA). Criticizing others about “leaving things out” while you do the same, is not a great characteristic to have, my friend.

  27. Are you still there Benny, Readers? If so, see what I mean? Here some extracts from Anon’s reply above:

    “I need not precisely define…..”

    “you want me to “define” a term you think I do not know. An odd request.”

    But Anon does mention, usefully, a difference between the EPO PHOSITA and the SCOTUS one. The EPO PHOSITA lacks any inventive faculty but the SCOTUS PHOSITA apparently does have one. Of sorts. How can that be, to test whether a claim is patentably non-obvious by enquiring whether it is obvious to an inventive PHOSITA. Curious, no?

    That reminds me of the now departed German national view of the inventive faculty. You used to need more of it to justify a 20 year utility patent than for one of their 10 year “petty” utility patents. The distinction was untenable, so has now been swept away by the SCOTFRG, which in its current jurisprudence simply says that the subject matter of a Claim (regardless whether of a 10 or a 20 year patent) is patentable if it is not obvious to a non-inventive PHOSITA. Who could argue with that? SCOTUS, I suppose, with its curious notion that there are degrees of non-obviousness.. Next thing it will be telling us that there are different levels of novelty. Or pregnancy.

  28. If so, see what I mean?

    Not at all MaxDrei. “What you mean” is not clear at all. You charge in with grand accusations and retreat with your tail between your legs. Baby steps for Benny, setting some straight forward advice for SadPanda, informing you how I used your term in the context of this thread, contrasting that use with your implication concerning US practitioners, and noting your own style of posting is all very straight forward from my end.

    From you?

    Well, just innuendo and you telling others how they feel (be it me or US practitioners).

    The only thing “clear” about what you mean is that you seem intent on feeling slighted (for yourself, for Benny and for SadPanda) based on both what I have said and what I have omitted.

    If I have said something in error, by all means, please provide a correction.
    If my baby steps to someone obviously untrained in the law lead away from a correct understanding of the law, by all means, set the path straight.
    If I err in pointing out the distinction between EP PHOSIT and US PHOSITA, again, please correct me.

    If there are no corrections to be made, why then the hostility with which you post? Why the sanctimony?

  29. Anon you categorize the EPO PHOSITA as an “automaton”. I do not agree. I say you are wrong. Incidentally, what drove you to choose the word “automaton”

    Consider a routine First Action from the EPO, in the bit where it looks at the dependent claims. When these are presented in the typical USA style (driven by a “Claim Differentiation” notion), the standard EPO paragraph asserts that these claims are directed to mere workshop variations and therefore to obvious matter. Incidentally, they also have the potential to render the subject matter of the independent claim, thus construed, non-enabled.

    For me, an “automaton” is incapable of finding workshop variations obvious. You might well disagree but, if so, tell us why.

    Not everything that is novel satisfies the non-obvuousness requirements of a patent statute. An “automaton” as the PHOSITA won’t serve. Even if not to you, that much is obvious to everybody else!

  30. I see a difference in drafting styles not illuminated previously.

    1. (ind) I claim a wodget comprising…
    2. (dep) The wodget of claim 1 being [mere workshop variation].

    This is an excessively poor drafting style. Claim 2 only adds limitation without benefit.

    Dependent claims that add nothing but “mere workshop variations” are one of the poorest types of dependent claims in the States, as it being a trivial matter to 103 such claims and then their over-dependence on the master independent claim fails for their purpose. If the independent claim falls, then there is no fallback position to be had. I beg pardon for assuming that you would know this.

    As to the automaton comment, I refer to your own offered definition of EP PHOSITA: “__” Wait, you have not supplied one. Well then, let me try: KSR discussed the notion of normal inventive common sense. My understanding of the EP PHOSITA is someone without this inventive common sense. Both versions of PHOSITA has the omniscient ability to know and understand all prior art in the field of art which pertains to the invention (whether the EP PHOSITA scope of this area pertained is as expansive as the US version of “may yield a solution” is a topic I have not seen explored). The US PHOSITA then takes this omniscient ability and can apply “common sense” and some inventive capability. The EP PHOSITA is forbidden to apply any such inventive capability – not even common sense, and must take the (albeit extensive) prior art exactly as it is. Thus the EP PHOSITA is an automaton – an unthinking but well endowed workman.

    I find fault with three tactics in your response:
    1) You seem to meander off into the weeds with your “novelty” and
    2) circular reference of “would not find it obvious” (when defining what is or is not obvious), and
    3) I note that you again fall back to a rhetorical appeal to the masses to back up your view, which has not been established on the merits.

    As to 1), it appears that you want to conflate the concepts of novelty and obviousness. I am not sure why. By their definitions, the object being evaluated for obviousness passes the legal test for novelty. I grant that their is a rejection style of combined 102/103, but such is a lazy way of rejecting under an either/or rather than both legal tests. Perhaps you can provide an example to better show your thoughts.

    As to 2), you define the word automaton in a way to eliminate the ability to find mere workshop variations without an apparent reason why such would not be able to be found. Again, the shared common capability is having the encyclopedic recall of the very thing you wish to exclude. Why would an automaton not have this unthinking ability to have this (vast) store of knowledge? From Merriam-Webster’s online dictionary, an automaton is a person who acts in a mechanical or machinelike way. This appears to be a perfect fit for one who can fully access the mere workshop variations (without more).

    As to 3), you exhibit a level of condescension undeserved by what you have been able to formulate in clear terms. The rhetorical tool of assuming that of course everyone else agrees with you comes across as a rather empty ploy and can be likened to a wagon pulled along an uneven sidewalk. You claim the wagon, but it is empty and thus your claim clatters noisily, drawing even more attention to your empty state. Better then, not to claim the empty wagon, and instead refer directly to the contents of the wagon. The reason you fall back to the wagon claim, is that you have nothing else to fall back to.

    As I indicated in post 27, if I have erred, please set me straight. You offer nothing on any of those points.

    Your wagon, sir, is empty.

  31. Anon, you can’t have it both ways. First you say I offer no definition of the EPO skilled addressee, then you write:

    “you define the word automaton in a way to eliminate the ability to find mere workshop variations without an apparent reason why such would not be able to be found”

    Really? Moi? Where?

    As to workshop variations, that is often how EPO examiners reject dependent claims, that their subject matter is obvious to the EPO’s skilled adressee. Your “automaton” though, does he find workshop variations obvious? Above, you say not. So the EPO addressee is not your “automaton” then, is he?

  32. The noise of the empty wagon is ringing ever more loudly.

    As I indicated in post 27, if I have erred, please set me straight. You offer nothing on any of those points.
    (still waiting)

    As to defining the word automaton to eliminate that which is available, you play coy (yes, you have failed to give ANY direct definition), but your position is given by at least your statement at 29: “For me, an “automaton” is incapable of finding workshop variations obvious. You might well disagree but, if so, tell us why.

    I have told you why, and all you spit back is nonsense. SO yes, I can have it both ways. Of course, instead of games, you could have actually answered with your definition, but I notice that you chose not to.

    As to “Your “automaton” though, does he find workshop variations obvious? Above, you say not.” Clearly I have done no such thing. As I explain that the shared PHOSITA characteristic is to have all of the prior art, which would include such known variations. Or are you playing coy again and now expanding what might be considered to be variations to include unknown variations? In which case, my comment as to your position aptly applies: you are attempting a circular “definition” I place the word in quotes as you appear to want to play semantics rather than have a serious legal conversation, and yes, I recognize that even though you have made statements from which I have attempted to piece together your “position,” you still as of yet, have not been forthright with a definition.

  33. Anon,

    Thanks for pointing out the “endowed with common sense” aspect of KSR.
    I have long focused on the “not an automaton” definition that KSR mandated while not paying much attention to the “endowed with common sense” aspect.

    “Common sense” can be oft and commonly, be downright stoop8.

    One can search through the so-called “skeptic” society blogs on the net to find many examples of “common sense” being totally irrational and wrong. So there is no point for me to belabor here on examples of this phenomenon.

    Have you ever used the “endowed with common sense” aspect of KSR during prosecution to demonstrate that such “common sense” would lead PHOSITA down the wrong path?

  34. Nice to see you making an entrance, step back. Perhaps you can help me and Anon on the issue whether the EPO PHOSITA is materially different from the American one, and whether at the EPO it is indeed an automaton, as Anon writes above:

    “the KSR case has imbued the US PHOSITA with at least common sense inventive capability (and thus differs from the automaton version of the EP PHOSITA).

    From KSR, what distinguishes the American PHOSITA from a mere automaton is that the automaton brain does not reach as far as finding mere workshop variations obvious, but that of a PHOSITA does.

    At the EPO, the settled position, unchanged since the dawn of EPO time in 1978, is that the PHOSITA finds mere workshop variations obvious. Incidentally, what does Anon mean by “the automaton version” of the EPO PHOSITA. This “version”: is it real? Is it the actual EPO PHOSITA? Or is it just something inside Anon’s head, unknown to anybody else?

    So far then, no difference. Despite what Anon asserts, the PHOSITA is, in both jurisdictions, NOT a KSR automaton. Despite what Anon asserts, this much is beyond dispute.

    When I criticise the KSR definition of the PHOSITA it is only because it tells us that a degree of inventivity is required, to find mere workshop variations to be obvious. For me, it might have been better if SCOTUS had avoided reference to inventivity and instead confined to discussion to one about uninventive common sense. You though, don’t like the concept of “common sense”. Are you happier with degrees of inventiveness?

    Anon wants a serious legal discussion. Me too. But one with Anon is beyond my skill level. I’m curious. Do you agree with Anon, that the EPO PHOSITA is an automaton? If so, why?

  35. I don’t understand why my long post of earlier today has not appeared.

    I wanted to quote Anon on the subject of the PHOSITA. To wit:

    “… the US concept is not the same as the EP concept, in at least as far as the KSR case has imbued the US PHOSITA with at least common sense inventive capability (and thus differs from the automaton version of the EP PHOSITA).”

    According to KSR, the PHOSITA exhibits his “inventive capability” (and, expressly, is distinguished by common sense from a mere automaton) by his ability to find mere workshop variants obvious. The defining characteristic of an automaton, according to KSR is a total lack of common sense, to the extent that even mere workshop variations are not obvious. Conversely, the PHOSITA has enough wit, enough common sense, to find them obvious.

    How then can the EPO PHOSITA be an automaton (as Anon asserts) when it has been the settled jurisprudence of the EPO since the dsawn of EPO time in 1978, that mere workshop variations are exactly the sort of thing that is indeed obvious to the EPO’s PHOSITA?

    I can’t help it, if SCOTUS chooses (infelicitously, unfortunately and confusingly, in my opinion) to dub this super-automaton degree of intelligence, wit and common sense “inventive”. It doesn’t alter the fact that, in substance, the EPO and SCOTUS concepts of the PHOSITA are the same.

    Step, Anon wants a serious discussion. Can you oblige him? I give up.

  36. MaxDrei,

    Please stop the direct mischaracterizations of US law and of my posts.

    To wit, you stated:

    According to KSR, the PHOSITA exhibits his “inventive capability” (and, expressly, is distinguished by common sense from a mere automaton) by his ability to find mere workshop variants obvious. The defining characteristic of an automaton, according to KSR is a total lack of common sense, to the extent that even mere workshop variations are not obvious.

    This re-statement by you is false. That is something that neither KSR nor I have said. In fact, it is the opposite of what has been said.

    This is the third time you have twisted something from what I have said into a ridiculous strawman. I draw the notion of being able to put together the known lists of items as something particularly NOT drawing on common sense, AND something that serves as a baseline in both US and EP PHOSITA, and you twist that to be something that requires more than the shared baseline. This is plain deception. An automaton – without common sense – has the capability to do (without common sense) what you so stridently wish to require common sense to do.

    Your subterfuge is not appreciated.

    If you want a serious discussion, instead of “giving up,” try giving up the manipulations and speak plainly and without guile.

    Since you have – as yet – not bothered to inform us of your actual definition (still being coy), before you “give up” perhaps you would actually like to join the conversation. Tell us explicitly what the EP PHOSITA canand cannot do. Does the EP PHOSITA have common sense? Does the EP PHOSITA have some, any, or no inventive capability?

    Accusing me of taking pot shots, while it is you that takes them is fairly audacious. I have asked you for corrections to my positions at least twice now – with no response from you on any particular point. You appear to only have a general (and apparently ill-founded) gripe on my comments. But to then leave the discussion when that discussion casts a critical eye on your own position, is well beyond the pale. Drive-by sniping, when such sniping is off the mark and ill-founded is frowned upon on this blog. If you have a problem with something that I have said – fine, have at it and we can discuss. Innuendo (for example with SadPanda) serves no one when you are unwilling to be open about what “bothers” you.

    Speak MaxDrei – explain yourself and your views. Teach us this EP PHOSITA. Point out where I have strayed. But please, do so accurately and without spin. Yes, this will take more effort on your part, and you will not be able to just throw everything at the wall and see what sticks, but it will make for better conversations if you do some of that critical thinking before you post.

  37. Messages appear to be blocked:

    MaxDrei,

    Please stop the direct mischaracterizations of US law and of my posts.

    To wit, you stated:

    According to KSR, the PHOSITA exhibits his “inventive capability” (and, expressly, is distinguished by common sense from a mere automaton) by his ability to find mere workshop variants obvious. The defining characteristic of an automaton, according to KSR is a total lack of common sense, to the extent that even mere workshop variations are not obvious.

    This re-statement by you is false. That is something that neither KSR nor I have said. In fact, it is the opposite of what has been said.

    This is the third time you have twisted something from what I have said into a ridiculous strawman. I draw the notion of being able to put together the known lists of items as something particularly NOT drawing on common sense, AND something that serves as a baseline in both US and EP PHOSITA, and you twist that to be something that requires more than the shared baseline. This is plain deception. An automaton – without common sense – has the capability to do (without common sense) what you so stridently wish to require common sense to do.

    Your subterfuge is not appreciated.

    If you want a serious discussion, instead of “giving up,” try giving up the manipulations and speak plainly and without guile.

    Since you have – as yet – not bothered to inform us of your actual definition (still being coy), before you “give up” perhaps you would actually like to join the conversation. Tell us explicitly what the EP PHOSITA canand cannot do. Does the EP PHOSITA have common sense? Does the EP PHOSITA have some, any, or no inventive capability?

    Accusing me of taking pot shots, while it is you that takes them is fairly audacious. I have asked you for corrections to my positions at least twice now – with no response from you on any particular point. You appear to only have a general (and apparently ill-founded) gripe on my comments. But to then leave the discussion when that discussion casts a critical eye on your own position, is well beyond the pale. Drive-by sniping, when such sniping is off the mark and ill-founded is frowned upon on this blog. If you have a problem with something that I have said – fine, have at it and we can discuss. Innuendo (for example with SadPanda) serves no one when you are unwilling to be open about what “bothers” you.

    Speak MaxDrei – explain yourself and your views. Teach us this EP PHOSITA. Point out where I have strayed. But please, do so accurately and without spin. Yes, this will take more effort on your part, and you will not be able to just throw everything at the wall and see what sticks, but it will make for better conversations if you do some of that critical thinking before you post.

  38. Is the EPO’s PHOSITA an automaton? Lest there be any doubt about it, readers, what Anon wrote above, at # 26, was:

    “… the KSR case has imbued the US PHOSITA with at least common sense inventive capability (and thus differs from the automaton version of the EP PHOSITA).”

    That is what started the argument between us. I said he had no basis to label the EPO PHOSITA an automaton.

    Now I suspect he has no verbatim Basis in KSR to talk of any “inventive capability” possessed by the US PHOSITA. So he seems to be wrong on both the EPO PHOSITA and the one in the USA.

    Later, at # 30, Anon wrote:

    “The US PHOSITA then takes this omniscient ability and can apply “common sense” and some inventive capability.”

    Step, Gene, help us out here won’t you? Anon is relying on the SCOTUS KSR decision text. But the KSR Decision talks of “ordinary creativity” doesn’t it (rather than Anon’s paraphrase “inventive capability”)?

    The EPO PHOSITA finds workshop variations obvious. Does an automaton make workshop variations? Anon provides a definition of an automaton, namely:

    “From Merriam-Webster’s online dictionary, an automaton is a person who acts in a mechanical or machinelike way. This appears to be a perfect fit for one who can fully access the mere workshop variations (without more).”

    An “automaton” should reliably output no more and no less than what is inputted into it (by a single teaching in the prior art, for example). If what comes out is a variation on what is inputted to a processor, well then that processor can’t be an automaton because it is not following instructions. What you get out is not what you told it to do. If you don’t know what you are going to get out, if it is not possible to predict its output, it ain’t an automaton.

  39. Didn’t get through. Try again.

    Is the EPO’s PHOSITA an automaton? Lest there be any doubt about it, readers, what Anon wrote above, at # 26, was:

    “… the KSR case has imbued the US PHOSITA with at least common sense inventive capability (and thus differs from the automaton version of the EP PHOSITA).”

    That is what started the argument between us. I said he had no basis to label the EPO PHOSITA an automaton.

    Now I suspect he has no verbatim Basis in KSR to talk of any “inventive capability” possessed by the US PHOSITA. So he seems to be wrong on both the EPO PHOSITA and the one in the USA.

    Later, at # 30, Anon wrote:

    “The US PHOSITA then takes this omniscient ability and can apply “common sense” and some inventive capability.”

    Step, Gene, help us out here won’t you? Anon is relying on the SCOTUS KSR decision text. But the KSR Decision talks of “ordinary creativity” doesn’t it (rather than Anon’s paraphrase “inventive capability”)?

    The EPO PHOSITA finds workshop variations obvious. Does an automaton make workshop variations? Anon provides a definition of an automaton, namely:

    “From Merriam-Webster’s online dictionary, an automaton is a person who acts in a mechanical or machinelike way. This appears to be a perfect fit for one who can fully access the mere workshop variations (without more).”

    An “automaton” should reliably output no more and no less than what is inputted into it (by a single teaching in the prior art, for example). If what comes out is a variation on what is inputted to a processor, well then that processor can’t be an automaton because it is not following instructions. What you get out is not what you told it to do. If you don’t know what you are going to get out, if it is not possible to predict its output, it ain’t an automaton.

  40. MaxDrei,

    I tire of your shenanigans.

    You are trying too hard to make a distinction without a difference, and you continue to clamor that “I’m wrong” without showing any particular inkling as to why “I’m wrong,” other than your say so.

    Ordinary creativity is akin to some inventive capability. Your attempt to split this hair is meaningless.

    EPO PHOISITA finds workshop variations obvious – this is something that I have said from the start (no matter how you have attempted to spin it otherwise) and finding known workshop variations is NOTHING more than having the encyclopedic knowledge of the workshop variations already present. The only difference is your attempted spin and false creation of a difference – where in fact, there is none.

    Your immediate addition of “An “automaton” should reliably output no more and no less than what is inputted into it (by a single teaching in the prior art, for example).” shows a errant view of novelty, as you seek to somehow imbue the vast (and dryly available) knowledge necessarily into one source – and NOWHERE has this been a prior point in our conversation. Stop attempting to move goalposts. You “jump the shark” here by wanting to somehow switch the automaton description to be one solely for novelty, and not for obviousness.

    Stay on point in your arguments please MaxDrei. And please, leave out the appeals to others – be a man and own your own arguments (and faults therein).

    And as usual, my invitation for you to show any actual error in my positions remains open (and to this point, remains un-utilized by you, notwithstanding the name-calling and generalized accusations of me “being wrong.”

  41. Max,

    Sorry, I am not up to date on EPO law and what the EPO considers as being a PHOSITA (if there is such a creature at all under EPO law ???)

    In the USA, the PHOSITA is a creature created by statute (35 USC 103 to be specific)

    Before you can decide who PHOSITA is, first you have to determine what is “the art”.
    Then you have to decide what constitutes “ordinary skill” in that art at the critical time.
    After that you get to the question of the non-automaton “person” who is the one having “ordinary skill” in that “art” and at the critical time.

    PHOSITA= Person … having ordinary skill … in the art.

  42. Thanks Step. Well said. Totally agree. Who could not? And no difference here between SCOTUS and the EPO.

    Anon, in the context of “automaton” I mentioned novelty because you can’t mosaic documents to assemble a novelty attack. You have to build the attack from just one prior art source. If you invoke more than one source, you are into obviousness. Once you are into obviousness, the lawyers can argue till the cows come home. That’s why the “workshop variations” vein of argument is so rich, whichever jurisdiction you are in.

    You accuse me but, in fact, you are the one who seeks to make differences where none exist. You say to lay contributors that the law is too difficult for them to grasp, that only folks like you have the needed knowledge and experience. Conversely, i say that the underlying concepts are not difficult to grasp.

    The learned doctors of divinity used to argue that the common man can’t possibly understand. They did this to protect their privileged position as sole explainers and interpreters of divine law. These days, they appear ridiculous.

    You are fond of quoting Einstein, that things should not be made more complex than they really are. I agree. As far as I can see, the EPO PHOSITA and the KSR PHOSITA are (as every right-minded person would suspect and wish) are the same concept

  43. MaxDrei,

    You forget the other end of the Einstein quote (but no simpler), and you still have failed to point out any deficiencies in what I have said.

    Your explanation of novelty is fine for novelty (as no one took to argue differently) and yet fails to explain why you ventured there in the first place.Your retreat is noted – and yes, it is a retreat.

    It appears that your “answer” on obviousness (which is the crux of the conversation) is that “lawyers can argue till the cows come home.” And you still dwell in the rhetorical tool of placing yourself in the group of “every right minded person.’

    Not much of an answer there.

    Once again, your position devolves to “because I said so,” in regards to the US and EP PHOSITA being the same, when clearly they are not. There is not doubt that PHOSITA in each sovereign is a similar concept. Same is not similar. You then cannot help yourself with “as every right-minded person” – the clattering of the wagon continues (that is not a strength of position my friend, it is a weakness of argument). You celebrate Step’s note, but then misrepresent that note as well (Step is questioning what the EP PHOSITA is – and perhaps rightly so, as you have yet to define him, notwithstanding my efforts to piece together what you may think from the snippets that you have revealed).

    You also misrepresent what I say concerning level of knowledge (common man cannot understand) as that has never been my position. What Benny – a common enough man for example – has shown is that the common man can easily misconstrue what the term of art means, placing himself in the shoes of PHOSITA. You over-generalize from a correct example (unless of course, you also happen to think that Benny’s application is correct. Do you think that Benny’s application is correct?

    Whether or not the concepts are easy to grasp – you have done nothing to show that you have grasped them. Quite in fact, your game playing indicates that you do not grasp them, as you still do not grasp the difference between an automaton and a person who may contain a common sense level of inventive skill.

    The ball is in your court. Try to do something intelligent with it.

  44. Anon,

    I don’t think it does much good for the reputation this blog to have a back and forth ad hominems with MaxDrei.

    I suspect that you and I can agree that KSR changed the definition of the “person” part of PHOSITA from being:

    1) An automaton subject to the rigors of explicit TSM (Teaching, Suggestion, Motivation) before KSR

    to

    2) A non-automaton who is no longer subject to the rigors of explicit TSM and is driven by “market forces” and design imperatives and “common sense” after KSR.

    The question left unanswered is what are the characteristics of this non-automaton “person”?

    Is he or she capable of reading documents or does modern PHOSITA only watch YouTubes?

    Does modern PHOSITA have a broad understanding of “science” or is this creature so super-specialized as to be incapable of stepping back and seeing the bigger picture?

  45. Yes but you, ANON, are the one who started all this, with your assertion that the EPO PHOSITA and the KSR PHOSITA are different. The former is an automaton, you say, the latter not.

    When you have substantiated that assertion, built a prima facie case, it will be for me to reply. That’s going to be a long time coming though, because the only clue you have, as to what the EPO PHOSITA is, is what you read in my posts.

    And so, you haven’t yet substantiated your assertion. All you can do is try to find discrepancies in what I have written, and then rely on them.

    Meanwhile, I continue to say to you (and, more importantly, to other readers) that the EPO PHOSITA and the KSR PHOSITA is the self-same concept.

    There is no good reason for any patent lawyer to suspect that they might be different. The same concept of the PHOSITA is needed, in any properly functioning patent law system. If you say different, that proposition is inherently unlikely, and so the burden is on you to substantiate your initial unfounded assertion.

  46. Step back,
    I think the answer to your last question would depend on whether you are asking the examiner or the applicants’ attorney. Reading a few rejection/responses I soon find a difference of opinion on that one, with the attorney usually presenting his client as a cretin with no knowledge of anything outside his fields specific IPC classification, and the examiner taking a more real-world view.

  47. Thanks again Step, for the interesting thought, that before you kick away the existing TSM foundation, you ought to supply some other firm ground to take its place. In defence of Anon, I think his ad Hominems are only there to goad me into replying, because he likes so much to argue with me.

    Thanks Benny, for the thought that as with most things, one’s viewpoint depends on where one is coming from. Good that you are hanging on in here, despite Step’s concern that you might be turned off.

    I suggest to you that the creeping effect of decades of attorney argument at the PTO, that the cited art fails to destroy novelty and fails to render obvious, is to render the PHOSITA more and more of an automaton. KSR can then be seen as a correction, a touch on the tiller, to stop that creep.

  48. Benny @46,

    I think your critique of patent practitioners, and their assessment of who PHOSITA might be, has some credence.

    However, for examiners and their ideas of who PHOSITA might be, it is fairly clear that they deal mostly with artisans of extraordinary skill (a.k.a. inventors / patent applicants) and with hindsight based views (e.g. 3 years or more after the critical time) of how PHOSITA’s thought in the past.

    Our internet driven world moves so fast that we don’t even hear the sonic boom from our future-shocking rocket trips into the future. Example: who knew about Google Glasses 3 years ago?