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I understand "novel" means all features of the claim are described in a single document. However, I don't understand the meaning of "feature" here.

I have 5 wherein clauses in my claim. Each and every wherein clause when considered as a whole feature, not found in the prior art. But, If partial match applied then it exists in the document.

Let me give you an example.

A prior art contains two embodiments. One embodiment talks about likes.  Another embodiment talks about bookmarks. Both deals with URLs. 

Now the first embodiment says something like this. "When a like request is received, the liked URL will be compared against a list of blacklisted URLs provided by user. If the URL exists, then Like will not be added." 

The second embodiment deal with something similar, but for bookmarks. However it doesn't mention explicitly or inherently about user provided blacklisted URLs.   

Now my claim deals with a functionality like this. "When a bookmark request is received, the bookmarked URL will be compared against a list of blacklisted URLs provided by user. If the URL exists, then bookmark will bot be added. "

Does that mean, my invention lacks novelty here?

Note: I understand the claim lacks "non-obviousness". But my concern here is "novelty".

  • You might need to make the question more clear. Is the a method claim or an apparatus claim? – George White Dec 7 '19 at 18:24
  • @GeorgeWhite Sorry. Yes it's a method claim. I worded it poorly. I have updated my example. Please let me know if you still need clarification. Thanks – Giri Dec 7 '19 at 20:39
  • @GeorgeWhite Ok, I'll find a proper use case close to mine and update the example – Giri Dec 7 '19 at 21:27
  • @GeorgeWhite I have updated my example. Hope it makes sense now. – Giri Dec 7 '19 at 23:22
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I have trouble understanding your example. What is "list of items" and what is "purpose *"? In a method you usually define a set of steps, and perhaps some additional features that are not steps. Not sure what you mean by partial match either. I will try to answer your question anyway, but I may update my answer if you clarify these parts.

If "purpose X" is nothing else than a consequence of the "list of items", then it does not matter that the prior art reference is silent regarding "purpose X", it discloses the "list of items" and "purpose X" is inherently there. Should this be the situation you are presenting, then yes, your claimed invention lacks novelty.

If you were to draft "purpose X" as a step in your claim, and that one is not explicitly or implicitly disclosed in the prior art reference, and it neither occurs as a consequence of the other features which are disclosed in said reference, then the claim is novel.

As a side note, your question concerns novelty, and you stated this: "I understand "novel" means all features of the claim are described in a single document." That statement is not correct. Something is novel if all the claimed features are not described in a single embodiment of a prior art reference.

About that, a silly example: I can disclose (in a same patent application) a first aspect of the invention relating to a motorbike comprising a battery for starting an electrical engine, and a second aspect of the invention relating to a car comprising an electrical engine. I did not say anything in the application that the battery could be used in the car as well. Now you claim in your application a car comprising an electrical engine and a battery for starting an electrical engine. Is your car novel over my disclosure? Yes, it is.

You mentioned "a single document", but your invention may also be not novel over two documents. Another example: I have a subsequent patent application where I disclose just one aspect of the invention that relates to a car comprising a spoiler in the back shaped such that it provides increased downforce for better grip. Somewhere in the description I state, the car comprises a diesel engine, or can be a car as in patent application US2010****** (which is the one from my previous example). Now you claim a car comprising an electrical engine and the same spoiler of my application. Is your car novel over my second patent application? No, it is not, my second patent application discloses such car even if it does not read "electrical engine" anywhere in the document itself.

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    In the U.S. showing a lack of novelty also requires all elements in a single embodiment. – George White Dec 7 '19 at 20:25
  • @GeorgeWhite I didn't know this. Could you point me to the MPEP document? I thought such things only applicable to EPO. Does USPTO has any provisions like this? epo.org/law-practice/legal-texts/html/caselaw/2016/e/… – Giri Dec 7 '19 at 20:44
  • Sorry for the confusion in my last example. I have updated the example. Yes I meant a sequence of steps. My invention performs a step to achieve X. Whereas the prior art performs that step for a different purpose. – Giri Dec 7 '19 at 20:48
  • @Giri - it is complicated. One case CONNELL v. SEARS, ROEBUCK & CO. says "Anticipation [novelty] requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim. Soundscriber Corp. v. U.S., 360 F.2d 954, 960, 148 USPQ 298, 301 (Ct.Cl.1966). "Arranged as in the claim" means that you can't find elements of the claim scattered around a reference. If an examiner finds some elements in one embodiment and the rest in a second embodiment they usually use a 103 rejection rather than a 102. – George White Dec 7 '19 at 21:05
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    @Giri The claim is novel in my opinion. But one could argue how the second embodiment of the prior art actually works without disclosure of how the URLs may not be bookmarked in some cases if it not using the same working principle of the first embodiment. If nothing in the document suggests that the second embodiment works similarly, then it should be novel. – the Europeist Dec 8 '19 at 7:04

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