tag:blogger.com,1999:blog-4665971923360779136.post812547361837186791..comments2024-01-31T10:22:40.389+00:00Comments on Tufty the Cat: Partial Priority - Questions for the Enlarged BoardTufty the Cathttp://www.blogger.com/profile/09803006996232662500noreply@blogger.comBlogger7125tag:blogger.com,1999:blog-4665971923360779136.post-88625628871032802292015-08-28T15:13:52.258+00:002015-08-28T15:13:52.258+00:00If D1 is a 54(3) document disclosing metal, then a...If D1 is a 54(3) document disclosing metal, then a claim to metal is not new. Splitting the claim into notional parts does not help because the combined claim is the same as is disclosed in D1. This is different from the poisonous priority case, where the combined claim is different but its scope encompasses the priority document. This is why partial priorities have to be used. I have said before that the partial priority solution to poisonous priority can only be used when there is no intervening prior art (see my article in the CIPA Journal). The same would also apply where there is 54(3) prior art. Tufty the Cathttps://www.blogger.com/profile/09803006996232662500noreply@blogger.comtag:blogger.com,1999:blog-4665971923360779136.post-79176905247911608772015-08-26T20:39:49.946+00:002015-08-26T20:39:49.946+00:00Why not necessary? I'm sure an appellant would...Why not necessary? I'm sure an appellant would like to have his claim new, whether D1 is a poisonous divisional or a regular 54(3) document.<br /><br />If D1 is a divisional disclosing copper with an earlier date than metal, then some argue that "metal" may be notionally split up in "copper" and "metal other than copper" to render the claim to metal new over copper.<br /><br />If D1 is a 54(3) document disclosing metal, then the same approach again renders the claim to metal new over D1.<br /><br />If the outcome makes no sense, maybe something is wrong with the approach?<br /><br />Maybe the notional splitting approach can be refined to avoid metal becoming new over metal, but what exactly are then the rules to be applied? I don't think a rule "it is not necessary and it makes no sense" is very helpful.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-4665971923360779136.post-90673650302866974772015-08-26T10:22:06.637+00:002015-08-26T10:22:06.637+00:00The claim to metal is not new over D1, so splittin...The claim to metal is not new over D1, so splitting it up to assess novelty is not necessary (and makes no sense). Amendment would be required, so in that case there would be a need to have basis for separate parts being claimed. Tufty the Cathttps://www.blogger.com/profile/09803006996232662500noreply@blogger.comtag:blogger.com,1999:blog-4665971923360779136.post-15449688864621743352015-08-26T08:48:48.214+00:002015-08-26T08:48:48.214+00:00How can metal not be new if both notional parts ar...How can metal not be new if both notional parts are new?<br /><br />That is the whole point of notional splitting: by splitting such that each notional part is new, the lack of novelty is overcome.<br /><br />Tim's comment does not address this example. No P2 here.<br /><br />Note that my example does not even need P1, provided one allows arbitrary "notional splitting" into a notional OR-claim and examines novelty and inventive step separately for each notional part. So this is not so much a problem of priorities as it is a problem of notional/generic OR-claims with parts that are not individually disclosed in the application. (The fix is clear: require the parts of an OR-claim to be individually disclosed. That prevents novelty and inventive step from being assessed on the basis of "notional" limitations having no basis in the application as filed.)Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-4665971923360779136.post-86561079915234558952015-08-26T06:58:58.107+00:002015-08-26T06:58:58.107+00:00See Tim Jackson's comment here. The claim to m...See Tim Jackson's comment <a href="http://ipkitten.blogspot.com/2015/08/partial-priority-questions-for-enlarged.html?showComment=1440174057436#c7628928257804544895" rel="nofollow">here</a>. The claim to metal is not new over D1, but the priority claim to copper is. Tufty the Cathttps://www.blogger.com/profile/09803006996232662500noreply@blogger.comtag:blogger.com,1999:blog-4665971923360779136.post-4106236943636120222015-08-26T00:08:09.614+00:002015-08-26T00:08:09.614+00:00What does Tufty think of the following example.
P...What does Tufty think of the following example.<br /><br />P1 discloses copper.<br />European application, filed one day later, discloses and claims metal.<br /><br />D1 is an EP (say by another applicant) filed before P1 and published after the application. It discloses metal. It does not mention copper.<br /><br />D1 is prior art under Art. 54(3). One would expect it to take away novelty of the claim to metal. But does it when we are being generous with (notional) OR-claims?<br /><br />How about notionally splitting "metal" into "copper" OR "metals other than copper"? (Either because there is P1 disclosing copper, or simply because metal encompasses copper.)<br /><br />Clearly "copper" is new over D1.<br />But "metals other than copper" is new over D1 ("metal") as well.<br />Since both alternatives of the OR-claim are new, the claim to metal is new over the prior disclosure of metal in D1.<br /><br />Does that seem right?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-4665971923360779136.post-17650124398549106042015-08-13T14:04:56.553+00:002015-08-13T14:04:56.553+00:00I quite like the idea of a "No" to quest...I quite like the idea of a "No" to question 1. I am not sure if it is my imagination, but the first question seems like it may have been written in a way that invites (or at least leaves a friendly door open to) a simple answer of "No". Such a simple answer would be rather ironic (and pleasing), given the amount of verbiage this subject has generated. Davenoreply@blogger.com