1

QUESTIONS

  1. What is the nuanced meaning of "CLAIMED INVENTION AS A WHOLE"?
  2. Put another way: Why not just write CLAIMED INVENTION?
  3. What is the alternative, "claimed as a ???"?

USPTO PASSAGE

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the CLAIMED INVENTION AS A WHOLE would have been obvious BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION to a person having ordinary skill in the art to which said subject matter pertains.

https://en.wikipedia.org/wiki/Inventive_step_and_non-obviousness

4

It just means that any single small non-obvious aspect makes the "whole" invention non-obvious.

Or the other way around, for obviousness, the combination of all elements needs to be obvious, not only some, or some combinations, or one half and the other half but not combining those halfs, etc.

It's only a stilistic element to underline the importance of proving obviousness for the whole thing. It means the same as "the claimed invention".

2

As DonQuiKong said - “as a whole” means the whole claim needs to be considered rather than looking at it piecemeal or neglecting an element. A claim to something with an A a B and a C can’t be analysed as if it only claimed an A and a C.

It does not mean "all of the claims". Each separate claim is judged for obviousness on its own.

  • I am interpreting the phrase "whole claim" to be the entire collection of claims in the application as opposed to any less than such. Is my understanding correct? Your answers have always been very helpful – gatorback Jul 28 '18 at 19:14
  • @gatorback no, every single (but whole) claim. You can (and should/must) use other claims for interpretation, especially the dependent ones because the independent claim is presumed to be broader than the dependent claim, but every claim can be judged as a "single/independent" invention (united behind an inventive concept) – DonQuiKong Jul 30 '18 at 6:14
1

There are some strong hints here: http://www.foundpersuasive.com/inherency.aspx#

Example traversal:

Amended Claim 1 of the instant invention teaches (inter alia) sneakers having a light sensor, a motion sensor, a solar power module, at least one rechargable battery, and a control device to activate lights under user-selected conditions. Smith '375 does not teach _______________.

The office may have misconstrued Smith's discussion of gyroscopic tilt sensors. Smith teaches these sensors for the purpose of ____________, not for the purpose of activating lights under user-selected conditions. Because Smith does not teach all of the aforementioned features of the instant invention, Smith cannot support the rejection of independent claim 1 under 35 U.S.C. § 103. We respectfully request withdrawal of this rejection.

  • I am not an patent attorney: please clarify the question that is addressed and ideally "ELI5" – gatorback Jul 26 '18 at 18:18

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