3

The example is a statement such as

...a transmission function of at least one of:

a communications subsystem of the device, or program application installed on the device, capable of connecting with a communications service or data submission portal on a network;

a communications subsystem of the device, or program application installed on the device, capable of connecting with a device to which data can be transmitted;

–– where the conflicting prior art covers one of those options but not the other. In such a case, is the conflict unavoidable without stating that it includes both? Or restating without the use of 2 or more options?

(I intend to try asking the examiner about it, but based on past efforts I am not confident I will get a useful answer.)

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  • Regarding my specific example, I am considering if the 1st part ending in "...or data submission portal on a network" may alone be sufficient, in the sense that "a data submission portal on a network" could logically also include connection to "a device to which data can be transmitted." Any comment, if that is relevant terminology in your field of endeavor? – Charles Jan 11 '18 at 2:57
  • With regard to your specific question in the comment, this is impossible to answer in isolation, as the terms are interpreted with reference to the specification as a whole. The general meaning of the terms, while relevant, is far from conclusive. – Maca Jan 11 '18 at 4:09
4

Consider the claim:

1. A system comprising one of:

a first widget; or

a second widget.

This claim covers two completely different things: a first widget alone, or a second widget alone. It therefore is logically two claims written together:

1A. A system comprising a first widget and not a second widget.

1B. A system comprising a second widget and not a first widget.

A claim lacks novelty if the prior art shows all the features of a claimed embodiment. As such, claim 1 would lack novelty if the prior art showed either a first widget (logical claim 1A) or a second widget (logical claim 1B).

In principle, it could still be novel if the prior art discloses both the first widget and the second widget together, however.

If the claim were amended to read:

2. A system comprising:

a first widget; and

a second widget.

Claim 2 would lack novelty if the prior art showed a first widget and a second widget together in the same system. It is therefore a different claim from claim 1, though not necessarily narrower.

However, claim 2 may still may be obvious if the prior art discloses both separately. That comes down to the precise facts of course.

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  • 1
    You might want to add that “at least one of two“ is technically three claims and can therefore be separated to keep only those of the three that are grantable. – DonQuiKong Jan 11 '18 at 8:50

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