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Supposed that in prior art, this claim exists:

Triangular shaped object 
Circular shaped object
Square shaped object

Would the following claim be allowed:

Triangular shaped object 
Circular shaped object
Rectangular shaped object

A rectangle is different from a square, so it contains an element that the prior art claim does not. However, a square is a specific version of a rectangle.

Would this be novel and non-obvious?

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  • A quick reminder that claims do not specifically make up the prior art. Disclosures in total make up the prior art. For example the claim that included a square could have been in a patent who’s specification also described rectangles. The splitting of hairs comparing claims to claims when assessing patentability is not a thing.
    – George White ♦
    Commented Sep 11, 2022 at 17:53
  • I think you got the answer to this from The Europeanist in relation to an earlier question.
    – George White ♦
    Commented Sep 11, 2022 at 17:59

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No- if a species is known, a more general invention will not be granted. It is not novel. There is a saying that “what would later infringe, if earlier, anticipates”. Or words to that effect. The square infringe on the rectangle so it also anticipates (makes not novel) the rectangle.

From the MPEP

2131.02 Genus-Species Situations [R-08.2017]

I. A SPECIES WILL ANTICIPATE A CLAIM TO A GENUS

"A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989) (Gosteli claimed a genus of 21 specific chemical species of bicyclic thia-aza compounds in Markush claims. The prior art reference applied against the claims disclosed two of the chemical species. The parties agreed that the prior art species would anticipate the claims unless applicant was entitled to his foreign priority date.).

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It is not novel because rectengular is general term that covers square, too. General terms can't provides novelty against specific terms.

Obviousness doesn't asses when there is novelty. Even if there is a novelty in your case, we still can't asses obviousness because it is impossible such an assesment without knowing technical problem solved and technical area of the invention.

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