Understanding Patentability in Discrete steps | A simplified approach

Let us understand how novelty may be assessed in a more detailed way:

For Determination Novelty in a Method Claim we may check the claims in a manner described below:

(i) Suppose an inventor1 claims a method as follows

A method for saving data on a disc comprising the

steps of:

A;

B;

C;

wherein  <Interaction between steps A,B and C and portions or functionality unexplained in  steps A,B, C and limitations to claim 1.>.

 

If during search any document D1 is found having all the (equivalent)method steps i.e A, B and C than it is likely that there is no novelty in the above said claim.

 

(ii) Suppose the same inventor1 now claims the method again as follows in D2

A method of saving data on a disc comprising the steps of:

A+ a1+a2;

B;

C;

wherein< Interaction between steps A,B and C and portions or functionality unexplained in steps A,B & C >.

here a1+a2 are small incremental changes in the first step which make it different from earlier step A in Example (i).

Now as we now already know that document D1 exists but there is no document disclosing the incremental portion of step 1 i.e. A+a1+a2.  While assessment of the above said claim as a whole or in its entirety the claim is most likely be considered as novel. The reason being such a particular combination is not existing in prior art, since step 1 has changed and the elements of step 1 are most likely to interact with other steps 2 and 3 in a different manner. The interaction among the three steps is most likely to change.

 

(iii) Again the same inventor1 after few years comes up with yet another incremental invention D3 over the previous invention D2, the structure of the claim is as follows:

 

A method for saving data on a disc comprising thesteps of:

          A+ a1+a2;

          B+b1+b2+b3;

          C+c1+c2;

Wherein<Interaction between steps A,B and C and portions or functionality un explained in steps A,B & C>.

 

hereb1+b2+b3 are incremental changes in second step and c1+c2 are incremental changes in third step.

 

Now as we now already know that document D2 exists but there is nodocument disclosing the incremental portion of step 2 and 3 i.e. B+b1+b2+b3 and C+c1+c2. While examining the above said claim as a whole or in its entirety the claim is most likely to be considered as novel. The reason being such a particular combination is not existing in prior art, since step 2 and step 3 has changed and the elements of step 2 and step3 are most likely to interact with other steps in a different manner. The interaction among the three steps is most likely to change due to presence of different elements B+b1+b2+b3 and C+c1+c2.

Now assuming that there has been advancement in the technology and some other group of inventors2 have made incremental invention and published Document D4 around the same time but before D3 having a claim structure equivalent to the following:

 

A method for saving data on a disc comprising thesteps of:

          A+ a1+a2;

          B+b1+b2;

          C+c1;

wherein  <Interaction between steps A,B and C and portions or functionality unexplained in steps A,B & C >.

 

Here also the claim would be accessed on the parameter of novelty in its entirety or holistically and the same would be treated as novel.  Reason being such a particular combination is not existing in prior art. Particularly because there are additional incremental steps b3 and c2 being present in the claim filed by the inventor in D3. Therefore the claim of D3 are still novel over D4 because of the presence of additional discrete operation/incremental steps present in the invention which are still absent in D4.

(iv).Suppose the inventor1 now develops another invention D5 having structure of claim as follows:

 

A method of retrieving data from a disc comprising the steps of:

K+ k1+k2;

L;

M;

N;

wherein  <unexplained portion of steps K,L,M,N>.

Here the invention D5 is most likely to be considered novel because the context of the invention and the steps are altogether changed and there is no prior art at that particular time which is similar to the D5.

Disclaimer: To understand the contents of the blog it assumes familiarity with Boolean logic and general searching for documents in patent databases. The views and ideas expressed above are only a personal experience of the writer of this blog. These abstract ideas may not guarantee full implementation details. Therefore, the content of this blog should be double checked by technologists and legal experts for its correctness. The writer of this blog is not liable for any loss incurred by understanding /implementing the details/content present on this blog and it cannot form any legal opinion in a court of law. The sole purpose of this blog is to make the understanding of patent related work easier in academic interest only. This Blog is written to spread awareness on Patent system of India which may help inventors to write Good quality Disclosures for their inventions. The contents of this blog are independent thought process originated in the mind of the writer which are shared here for the purpose of discussion and accumulating more clarity on patent related matters. For More information contact the author of this blog at Mob: +91-7709269318 Email: kumar.vipin1980@gmail.com