04-P6 book-pp23-58_36_Layout 1 22/05/2018 09:42 Page 57
4. How do I begin to tackle interpretation? Claim 4. The claim refers to ‘the channel’. What channel? There has been no reference to a channel before. The inner coating of plastic seems reasonable. It has metal particles embedded in it. But what is the ‘it’? One might think it is the plastic, but could it be the tile? The grammar is very ambiguous. If the final words of the claim had been… and it has a metal edge to engage the metal edge of an identical adjacent tile… you would have taken the last phrase as relating to the tile as a whole. Claim 5. What could be more straightforward? This is claim depending on a single preceding claim, which had introduced the concept of metal particles, with the claim specifying the metal as zinc. But look again at claim 1 which refers to a metal carbide. Maybe the ‘metal’ of claim 5 is a reference to the metal of the metal carbide. Claim 6. This claim is dependent on any one of the preceding claims, but the concept of the particles was only introduced in claim 4. The range is interesting. It goes from 0.5 mm to about 1 mm. So one end of the range is ‘made fuzzy’ or loosely defined by virtue of the word ‘about’ while the other end is precise. What can we make of that? Should the other end be equally ‘fuzzy’, or should it be precise as different language has been used? We will probably have to look at the examples in the patent for an answer to that one. Otherwise we will just have to jump one way or the other, and try hard to justify why the skilled person would reach that understanding. Also bear in mind that the courts may well take into account the technical possibility of accurate measurement. How do you measure diameter when there are a number of particles all of which can have slightly different sizes? Are the particles necessarily spherical? What is the diameter of a non-spherical particle? There are lots of considerations that may have to be taken into account. And we must do all of that in about 50 words! And even at this stage you can almost guess that somewhere in the infringement or the prior art there will be zinc particles having a diameter of 0.45 mm. So, a set of claims which, at a quick reading, seem to be generally ‘all-right’ can be seen to be riddled with problems and points that need to be construed that we can identify before we see the specification at all! That is often the case of claims in the FD4 examination. It will be necessary for you to develop an appropriate style of reading, mentally questioning every word and phrase, if you are to see all of the points that have been incorporated in the claims in the FD4 examination paper.
Infringement and Validity • 2018
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