We had two lectures today. One was on 112, 2nd paragraph, and the other was the second part of claim interpretation.
112, 2nd rejections are only to be applied when claims are unclear to such an extent that the examiner cannot make sense of them.
It seems like a lot of people are having trouble figuring out why one would use an objection as opposed to a rejection. It was easy when the explanation was “Object to problems in the specification (or elsewhere), reject claims.” But as always, it isn’t that simple as we dig further into things. So, if I have a claim that I can reasonably reject on 112, 2nd grounds, or I can object to the claim, which should I do? What is the practical consequence? One way to look at it is to ask how applicant might challenge the decision: rejections can be appealed, objections are petitioned. I don’t think that means very much to novice examiners – petition vs. appeal really doesn’t change the game for us much at this point.
An interesting perspective about when to object/reject on 112, 2nd grounds: If you can reasonably figure out what applicant meant, or how to fix the claim to make it “right,” just make an objection. If you can’t figure out what the heck is being claimed, make a rejection. It may be similar to raising the “high priority” flag on an email; it’s supposed to be stronger when you reject as opposed to when you object. Or perhaps by stating an objection, what you’re really saying is that the problem is not itself material to patentability; a rejection raises that doubt.
The lecturer seemed uncannily prepared for us to falsely associate 112, 2nd with “breadth” as opposed to “clarity.” When all you have is a hammer, and every problem starts to seem like a nail. Since we really haven’t done any direct work with 102 or 103, I think many of us find ourselves looking over the exercises and saying “That’s not patentable, and I’m going to find a reason why!” So we (incorrectly) attempt to apply 101, 112, or whatever bit of terminology we learned that day. It’s part of the process. I should say that I don’t think there’s a knee-jerk rejection reflex going on, it’s just that many of the exercises we are given have very, very broad claims that would probably be easily addressed with a prior art search. Lacking that capacity, we come up with all kinds of crazy things.
We also learned about product-by-process claims and some of the court decisions that have shaped that jurisprudence. Just a quick rundown: a product by process claim is really a claim to the product produced by the process. As such, if some other art shows an identical or obvious variant of applicant’s product, the claim must be rejected… even if the process is entirely different. Unless, of course, there is a substantial structural difference between the products created through the different processes.
That’s not to say that applicant can’t claim the process for creating the product, if the process is itself novel and non-obvious.
I think we have four lectures tomorrow… so it is time to cut this post “short.”