I said it before, I’ll say it again: Meat and Potatoes.
We talked about search strategies today. Let me step back for a moment and clarify – when I say we did X today, I don’t mean the entire day. I mean that we had a lecture on it. So if any potential examiners are reading this and thinking “you spent the whole day talking about search strategies?”, the answer is “No.” In any given day we might have between one and four lectures, plus one or more quizzes, plus exercises.
Anyway, back to search strategies. I’m pretty impressed by the wide array of search tools available to examiners now, and somewhat amazed about how difficult things must’ve been even a few years ago. In addition to EAST and WEST, we have access to a large number of non-patent literature databases as well as “special search help” as available. There are quite a few options for beginning a search. We got lots of helpful hints for refining our searches and making them more targeted. But we haven’t yet gotten guidance on how to end the search when it isn’t fruitful. At some point, you just have to say “Gee, guess nothing does teach these claims, or motivate combination.” And lets be honest here… one has to be mindful of production. You have to know when enough is enough.
At the same time, you should know your freakin’ art. A lot of questions people seem to be having would be eliminated if they thought for a moment about what searching really means. It means that the invention you are examining didn’t come from God’s lips to the inventor’s ear, most likely. Inventions are almost always combinations of old things put together. That’s the nature of invention. New uses for old things. But that invention fits within a category, a class, and it should be a class with which you have some familiarity. That familiarity, along with the classification listing, along with broader searching techniques, ought to be able to guide you to some narrow sets of possible art that will spur you on to finding better art. It should give you a sense of whether or not the invention is brand spankin’ new or just kinda new. No, those aren’t legal terms.
And then there’s reading the claims (properly) as broadly as they can be construed in light of the specification, and thinking about things in a clever way. You probably can’t be taught that.
We had some 103 exercises this morning that had some very clever answers from whoever wrote them up. Of course, there’s a danger with giving those kinds of clever answers to students. First, they might mistakenly think that they, too, are that clever. Second, they might think that they’re not, and that maybe they’re not quite clever enough to do the job.
But that’s all I have to say about that.