6.How do I deal with novelty?

How do I deal with novelty?

Coverage

The steps that should be taken when discussing novelty will be outlined.

After you have read this chapter, you should be aware of:

1. The importance of considering each claim in connection with the potentially novelty-destroying disclosure.

2. The importance of providing reasons why each feature of the claim is / is not present in the potentially novelty destroying disclosure.

In a typical FD4 paper there is at least one prior art disclosure that is clearly potentially relevant as a novelty-destroying disclosure, but sometimes there is more than one such disclosure. You must be able to decide which of the documents that have been provided are serious contenders as novelty-destroying disclosures. You should ideally briefly consider and dismiss any irrelevant disclosures, or those where there is just not enough information to reach a conclusion. However, remember to give reasons why you are dismissing disclosures as irrelevant. For example the disclosure may not be sufficiently detailed to be an ‘enabling’ disclosure. Then each relevant document or disclosure must be considered in detail in turn.

Do not overlook any prior art specifically identified in the patent, or prior art which is acknowledged in any other patent document included in the question – such disclosures can be novelty-destroying. However, you may have taken this into account in the interpretation section, perhaps showing in that section that you have interpreted the claims in such a way that they are distinguished from the admitted prior art because that is the only sensible construction available. Even if this has been done, it may be appropriate to comment specifically on the difference between the claim, as construed, and the disclosure of the prior art acknowledged in the patent.

Dates are important. Check carefully that any document that looks as if it may be relevant to novelty was actually published before the priority date of the relevant claim(s), or is available as a ‘whole contents’ document, under section 2(3) of the Patents Act 1977, as amended. Show the examiner you have done this when you start to discuss a prior art document, by indicating the publication (or filing) date and comparing it with the priority date of the patent.

In some FD4 papers the exact dates of some documents or disclosures are not given. In the surreal world of Infringement and Validity it has been known for supposed patent specifications

to be provided that do not carry any date at all. Of course, in reality this would never happen, but in FD4 the world takes on a strange perspective. Do not be afraid to assume that a disclosure that does not have a date was available before the priority date of the patent, but clearly explain in your answer that you have made this assumption, and remember to say that you would check the date. In the letter to the client, remember to ask for the date of publication, and indicate briefly the consequence of your assumed date being incorrect.

You must be very ‘aware’ when reading the letter from the client. It has been known for the letter to say that ‘a competitor has been marketing…’ a particular product. No date for the commencement of the marketing is given, but the product falls with the scope of the claims. Now it should be clear to you that if the marketing commenced before the priority date there might be anticipation, but if it commenced after the priority date there might be infringement. The analysis of whether the product is inside or outside the scope of the claims can be discussed, but the client must be presented clearly with the dilemma, and must be asked for the date of first marketing so that the dilemma can be resolved.

The skills required to assess novelty are really the same as those required to assess infringement. Are all of the features of the claims, as construed, present? So, the advice in this chapter is very similar to the advice in the preceding chapter.

When approaching the novelty section, you must again bear in mind that this section usually carries a significant proportion of the marks, and the marks are spread over all of the claims. There may be more marks available in the independent claim(s), but this is not necessarily so. It is safe to assume that there will be at least one mark for each claim, and so good answers will deal with all of the claims. It has been known for candidates to reach a conclusion that claim 1 is novel, and then to state that because the first claim is novel, then none of the dependant claims can be anticipated. While this may be true in the real world, if you do this in the context of FD4 the result is that a proportion of the available marks are put completely out of reach.

Firstly, you might very briefly identify all of the disclosures in the question that could possibly be considered to be disclosures of prior art. These disclosures may include the prior art disclosed in the patent, the prior art acknowledged in any cited patent specifications, and all of the described embodiments (including any modified embodiments that may be mentioned) and possibly a prior use outlined in the letter from the client, or some other technical publication. You can then give reasons why you are discarding any documents or disclosures that are of no relevance. It may be that the description is too brief to understand precisely how the item works – and merely stating that is providing a reason why you are not considering the document, and so again you are displaying your reasoning, which is what attracts the marks. However, if it seems that more information may be available, for example, if the poorly described embodiment is an item that has been made or sold by the client, remember to ask for more information. You might write ‘Ask for more information’ at the bottom right hand corner of the paragraph dismissing the disclosure, and underline it. This will show the examiner you intended to ask the client should you fail to do this in your letter. But by writing this, you will be able to ‘skim’ your answer as you write your letter to the client to find any questions that you need to ask.

You should now have two or three disclosures that warrant considering in detail – and you have to compare each of the disclosures in turn with the language of the claims to see if there is any single document that satisfies all of the requirements of any of the claims.

A technique sometimes used by the examiner is to have a prior art document where the preferred embodiment that is described in detail is not relevant, but somewhere (often in the middle of a bit of detailed description), there is a passage which mentions that in an alternative embodiment, which is not illustrated… If you see this, take great care. Often it is the alternative embodiment that is really relevant.

Again, it is to be expected that there will be marks for each of the claims on the marking schedule. So, regardless of the conclusions reached, you must keep going to the end of the claims.

The procedure that is used is the same as that adopted when considering infringement. Each phrase or feature of each of the claims must be compared with the prior art disclosure being considered, and a reason must be given as to why the feature is present or not. None of the wording of the claim should be omitted. Recall that marks are given for the reasoning displayed. This may seem very ‘forced’ – but to score the marks you have to demonstrate to the examiner that you have a reason for reaching your conclusion.

As with infringement, you may reach a situation where you are stating what is, to you, the blindingly obvious, but this is what the examiner wants.

As in the infringement section you will probably find it beneficial to practise a style that somehow forces you to give reasons. The style may be the repeated use of the word ‘because’, or the repeated use of ‘therefore’.

Again, you might find it simplest to adopt a style in which you give the reference number of the passage of the claim being considered, followed by ‘present’ (if the feature can be seen in the prior art), or ‘absent’ (if it cannot), with the next word being ‘because’. Alternatively, you can use the √ and Χ notation. Of course, you will then need a reason why the feature of the claim is, or is not, found in the disclosure being considered. So once again the three-column approach may be good, namely the feature, present or not, and because…

All of the words of the claim need to be considered, not just those that you have specifically interpreted. Each and every one of the claims needs to be considered, regardless of the conclusion reached for any specific claim. Do not just immediately conclude that a claim is novel because one feature is not shown in the prior art. Discuss all of the features to confirm which features are really there and which are not. This will help greatly when you come to inventive step, as you will know for sure which features are missing. Also, you will not be just throwing marks away.

In the novelty section you are (in a way that is identical to the infringement section) comparing the or each novelty destroying disclosure with each claim as construed by you. So you must compare the prior art embodiments with your meaning of each ‘chunk’ of the claim. Thus the words that formed your meaning of the claim should be used again, consistently, in the novelty section as the ‘yardstick’ for anticipation. The meaning of the claim should not change in any way between your consideration of infringement and your consideration of novelty.

Look again at the 2014 marking scheme for P6 and observe that in the novelty section a mark was given for reaching a conclusion at the end of each claim as to whether the claim was infringed, and up to 5 marks could be gained by just expressing a conclusion. In this marking scheme there were not any marks in novelty for indicating, at the beginning of each sub-claim, whether the dependency had been met, which might be considered to be inconsistent with the approach taken in infringement. However, it is safest, in FD4, to be thorough and deal with

dependencies in novelty, and even in inventive step, as well as in infringement as they can be equally relevant.

You might logically conclude that if a main claim is novel, all claims dependent on it are novel, but in FD4 you are expected to analyse the claims to see which features of the sub-claims are novel in their own right. You can then logically conclude that the features of the sub-claim are not novel themselves, but the claim is novel because of dependency. Again look out for a multi-dependent claim where some of the claims it depends from may be novel, and some not.

As a matter of examination tactics it might be thought prudent to try and reach a conclusion that at least one claim is novel. The main reason for adopting this strategy, if possible, is that you know that there will be a section in the examiner’s marking schedule for your discussion on ‘inventive step’. If you have concluded that a claim is novel, then a discussion of inventive step can begin, as you will have a difference between the invention and the prior art.

It may sometimes be necessary to interpret or construe words or phrases that appear in the potentially novelty-destroying document. If there is a need to interpret, then this may be done at the beginning of the section, or at the point where the meaning of the words or disclosure become relevant. As always, reasons must be given for the interpretation, with those reasons being primarily based in the document itself, or being based on the common general knowledge of the person skilled in the art. Remember that a document should be construed as at its date of publication, and the meaning of some words can change with time.

It is to be understood that specific words can have very different meanings in different contexts, and if a prior art document has words that are the same as words in the claims, it is not necessarily the case that words have the same meanings. This may especially be the case if the prior art document is not in the same field as the patent, or if the prior art document is very old.

One point that can easily slip through the net is whether the prior art disclosure is actually an ‘enabling disclosure’ or not. In other words, could a skilled person take the disclosure of the prior art document at its date of publication, and using no more than his or her common general knowledge and the teaching of the document make at least one working embodiment of the invention within the scope of the claims of the patent as construed? If there is not sufficient teaching in the prior art document to ‘enable’ the creation of an embodiment of the invention, then it cannot destroy the novelty of the claims.

As you finish the novelty section it may again be appropriate to at least write notes about possible amendments, and again put the word ‘Amendment’, underlined, at the bottom right hand corner of the relevant paragraph, to show the examiner you realise that amendment might help, and to help you find the point again when you are doing the amendment section (or as mentioned above, maintain an amendment section in parallel with preparing your answers to earlier sections). Your notes might outline how the claims might be amended to add in features that will make the claims novel. Remember that the amended claims cannot be broader in any way than the granted claims, but it is not necessary to combine whole claims when making an amendment. Individual features taken from the sub-claims, or from the description can be added to the main claim to give it novelty. If the notes are written neatly, they could just be used as (part) of your amendment section.

EXERCISE 4

Considering again the patent for the bowsaw blade, and the infringement, investigations reveal a woodcutting bandsaw blade imported from China, several of which were sold in the UK by a shop in Hull during a three-week period six months before the priority date of the patent. A bandsaw blade is supplied as a long strip which is cut to length and welded into a loop on the bandsaw machine. It is a steel strip having teeth set as shown. It moves in the direction of the long arrow, and only the leading edge of each tooth is sharpened.

Fortunately, you have a sample of the blade as sold. The packaging on the blade says that the ‘quadriset’ teeth provide an improved cut. Multiple cuts on one side of the cutting grove in quick succession generate a very aggressive cut, as the wood does not have time to relax between the time the first tooth cuts and the time the second, third and fourth teeth cut.

Now consider if you need to re-visit the interpretation of the claims of the patent to determine whether this prior art anticipates the claims. You could, at this stage, actually write a construction of the claims, giving reasons for the choices that you make when construing the claims. Explain the meaning of all of the words of the claims, even words such as ‘A blade according to claim 1’. Where possible give your reasons, giving references to the parts of the text where you have found ‘evidence’. You may prefer to defer doing this until you have read the comments that begin on the next page concerning the relevance of the bandsaw – or you may be brave enough to do it now, and then see if your analysis of the bandsaw was appropriate.

Now turn the page.

EXERCISE 4 – notes

Could the bandsaw blade be ‘for’ a bowsaw? Does a blade ‘for’ a bowsaw have to have something at the ends of the blade to engage with the pegs on the bowsaw? But if a blade ‘for’ a bowsaw must have something to engage with the pegs, what is the effect of claim 3? Is there an argument that the repercussive effect of claim 3 is such that claim 1 must cover a blade where there is no specific configuration at the ends of the blade to engage the pegs?

There are arguments in each direction. The FD4 examiner would be looking for you to follow one argument, giving your reasons. You might also outline the other argument, giving reasons why it is not persuasive. In many cases the two arguments are very closely balanced and it is difficult to choose one argument over the other, but you must make a decision.

Do the teeth of the bandsaw have ‘cutting edges’ in the sense of claim 1? Does this phrase (which has not given us any problem until now) mean that each tooth has two cutting edges, as described, or is the phrase broad enough to cover a blade which has teeth which only have one cutting edge each?

Could the teeth of the bandsaw be considered to be ‘arranged in groups of four’ as required in claim 1? This phrase, which seemed to be non-contentious when we were just looking at the infringement, now seems to be a problem. Maybe the original assumption that the meaning of this phrase was straightforward was wrong.

The teeth of the bandsaw are set in a way that is called ‘quadriset’. As in the described embodiment of the invention, there are four teeth offset to the left followed by four teeth offset to the right, and so on, but there are no gaps or spaces between the teeth. This arrangement of teeth, with four offset one way followed by four offset the other way is described as providing a specific advantage. Can we safely presume that this advantage is also found in the blades of Figure 1 and Figure 4?

Are spaces or gaps between teeth essential to make the teeth ‘arranged in groups of four’? Does claim 4 have a repercussive effect on claim 1? It would be possible to conclude that, if claim 4 has a repercussive effect, it is limited to the word ‘clear’. So claim 1 could mean that the teeth are ‘arranged’ in groups, and so must be in groups that are somehow physically separated, and claim 4 adds the fact that they are separated by ‘clear’ spaces. Thus claim 1 could include groups separated by ‘unclear’ (or ‘obstructed’) spaces.

Alternatively one could conclude that no spaces are necessary. Consider, for example, a row of evenly spaced plants in the garden. The first four plants have red flowers, and the next four plants have blue flowers. Then there are another four with red flowers, and so on. Could you say that the plants are ‘arranged in groups of four’? So maybe we could say that the teeth of claim 1 are in groups of four because they are offset in the groups – so the first group is offset to the left and the second set offset to the right. But if we do this, and effectively limit claim 1 to the nature of the offset shown in Figure 2, what is the effect of claim 2? So, does claim 2 have a repercussive effect on claim 1?

But then again, the object of the invention, in the third paragraph of the patent, says that the invention seeks to provide a blade in which the teeth are in separate groups….and surely that must mean there is a space? Or could it mean something else?

What a nightmare!

But if you find a nightmare situation like this in a FD4 examination, you know you have found a pot of marks. You have to walk round the possibilities, explaining why some seem more attractive than others, and as you will appreciate, once you have given a definite meaning or construction to the words of the claim, the question of whether an infringement or an item of prior art is inside or outside the claim is much easier to decide.

So a decision must be made as to whether a gap or space between the groups of teeth is, or is not, essential.

Looking at claim 2 whether the teeth of the bandsaw are, or are not, offset in the manner claimed depends on the meaning that has been placed on those words as discussed above.

Claim 3 does not seem to be anticipated in any way, and the same comment applies to claim 4.