Beneath The Surface

Intelligence, good looks, charm—let’s face it, patent lawyers individually and collectively are the complete package. We pretty much have it all. But a top patent lawyer needs more than that. To excel as a patent lawyer requires super-powers. Well, at least x-ray vision is helpful, the power to see under the surface.

One of the core activities in getting a patent is preparing a response to an Office action from the Patent Office after the claims have initially been rejected as unpatentable. There are two basic types of such rejections: (1) the substantive inventiveness of the claims over the prior art, and (2) the form of the claim language in satisfying the patent statutes. Among the various requirements in the latter category is that the claims are clear and definite enough to understand what they cover.

Claim rejections based on indefiniteness are often not a major problem for an experienced patent attorney. Typically, either a brief argument or a minor amendment satisfies the Examiner. And with experience, many of the pitfalls of indefiniteness can be avoided by good claim drafting techniques when an application is first prepared.

So, on the surface, it looks like either the form of the claims is proper in the first place so that indefiniteness issues do not arise, or if they do, a bit of minor attention cures the problem. It can seem like the main effort in prosecuting a patent application is to convince the Examiner that the claims are allowable over the prior art.

But a little x-ray vision can reveal a different situation under the surface. The claim language might not have problems sever enough to create an indefiniteness rejection. But there still might be places in the claims that are potentially unclear or ambiguous, a problem that I think of as micro-indefiniteness. This might not give rise to a rejection of the claims based on indefiniteness, but instead can create a rejection of the claims based on the prior art.

For example, one common situation is a rejection of the claims based on prior art that might have somewhat similar elements to what the claims require, but which are arranged in a different order. The obvious strategy is to argue back to the Examiner that the difference in the order of the elements is important. But this is also a situation to use x-ray vision to look underneath the surface of what seems to be going on. The Examiner’s seeming failure to take into account the required order of the claim elements might reflect some micro-indefiniteness in the claims that fails to connect the various elements together in the way that was intended. A deep and full consideration of the claim language and structure may suggest where such a problem might lie, and often a relatively minor change to the claim language may correct the problem.

It is worth noting that some patent attorneys strongly oppose any amendment to the claims that is not forced upon them, and therefore they roundly reject the above strategy. But not addressing the micro-indefiniteness of the claims can force responses to set forth longer, more complicated arguments and explanations which the Examiner may have trouble following or which may be unconvincing. This then creates a further rejection of the claims in another Office action. I believe that it makes more sense to make a small helpful change to the claim language, present a brief clear explanation of how the claims differ from the prior art, and obtain an allowance of the claims without further Office action.

So a little x-ray vision at the right time can be just what is needed in a patent attorney. Other super-powers may be available as needed.