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« Junior Party Broad Files Reply to Sigma-Aldrich Opposition to Substantive Preliminary Motion No. 1 in Interference No. 106,133 | Main | Junior Party Broad Files Reply to Sigma-Aldrich Opposition to Broad Contingent Motion No. 2 »

May 24, 2022

Comments

Kevin, being a drafter of claims to simple technology much less esoteric than highly-specialized telecoms or life science cases, I agree with you that the Axle case is a good vehicle for the non-specialist Supreme Court to ponder what eligibility means. A once-in-a-lifetime opportunity, perhaps?

Where I gently disagree with you, however, is your supposition that drafting claims for simple mechanical subject matter is itself "simpler", best handled by new entrants to the profession. The first priority of good drafting is to put one's finger accurately on that exactly is the inventive concept which is new and inventive over all the art. When all you get from the inventor is one embodiment of their paper clip (or their vehicle drive shaft) then to secure a full scope of enforceable exclusive rights (for the concept, not just the prototype article) is a task that is challenging even for a patent attorney with a lifetime of claim drafting experience.

It seems to me that in chem/bio it is a common misconception that mechanical drafting is relatively easy. Kevin, I hope you don't suffer under that misapprehension.

Shockingly as it may be, I completely agree with MaxDrei -- EVERY area of art draws to it the level of skill to advance over that which went before.

I too have seen an inordinate (and false) view that because a putative Person Having Ordinary Skill In The Art may require a higher degree or more advanced education, that the patent practitioner ALSO must necessarily be more advanced.

Generally speaking - this is not so.

Max:

Apologies for giving the impression that I think bio/chem/pharma claiming is somehow better or more advanced - the message I was intended to convey is that the mechanical arts are ones that fall within the experience of many people (everyone knows what a chair is, for example), which makes it easier for them to concentrate on drafting and not get lost in the technology. Which I hope will prove true for the Court.

As an illustration of this mechanical complexity, have you every tried to draft a claim for a paperclip?

Thanks as always for the comment.

Meh, after finally slogging through the brief, I have to say that the 'meme' as it were of a the Supreme Court creating a Gordian Knot is much more compelling.

Thank you, Kevin, for the gracious reply and thanks, anon, for the back-up.

In answer to the question, no, I have never had a client with a paper clip invention. But there was one with a hose clip invention. His prototype was a single piece of wire bent into two laps of a circle, springy, and to be used by a tool, in the auto assembly industry, to secure a rubber hose to a spigot on the water-cooling radiator of the vehicle.

Chem/bio colleagues struggle to extract from such a prototype the inventive concept and then express it in words that will capture all design-arounds. Mech drafters imagine that chemical drafting is comparatively easier: just claim new molecule X, for example. But, as we all know, the legal issues of infringement and validity in the chem/bio area are comparatively complex.

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