System diagnostics is an area of significant invention over the last twenty years. Intelligent diagnostic algorithms have become prevalent in our every day lives and we rely on them to tell us all kinds of important information, such as whether our car is not meeting emissions, or whether one of our electronic devices is able to establish a network connection. Often diagnostic inventions differentiate between two or more possible conditions, and the technical challenge is being able to accurately distinguish between them with limited sensor information, which data can also be an error source. The inventive aspect might be how to differentiate between multiple failure modes, and/or simply being able to detect and identify any particular failure mode.
In most ways, diagnostic inventions are no different than any other invention. However, in some pockets of the USPTO, certain examiners and supervisors look for ways to reject novel and inventive diagnostic inventions by using the written description requirement. Below is a generalized example generated by synthesizing numerous actual (recent) rejections from the USPTO. Specifically, these examiners are following an approach that attempts to reject claims aimed at diagnosing a particular failure mode by alleging that the claim is insufficient because it does not also detect all of the other failure modes possible. The USPTO explains this as follows:
… Applicant has described a specific process for how to improve diagnostics for the system. Applicant is only entitled to claim what has been disclosed, and the present claims are at odds with what a person of ordinary skill in the art would understand has been disclosed. Applicant has disclosed detecting both a first failure mode and a second failure mode, but only claims a single failure mode. Therefore, Applicant does not possess the invention as claimed because the claims do not cover a complete embodiment of the invention. Applicant has presented fragmented claims that are incomplete.
Now, this is despite the fact that the original claims presented a detailed, specific method for detecting the first failure mode, with a dependent claim adding the detailed method for detecting the second failure mode.
So, how to respond? There are numerous lines of attack against these types of rejections.
First, one can walk through the written description requirements and explain how the evidence supports the inventor’s possession of the invention upon the original filing. Second, one can cite to the case law regarding “essential” features and explain how there is no evidence in the record that the allegedly “missing” elements are essential. Third, the applicant can point out that claims do not need to include all the elements of a complete embodiment. The whole point of claims is to be more generic that the disclosed embodiment. The applicant might also bring a discussion to illustrate how cases like Lizard Tech. are inapplicable to situations like this one.
Further, in situations such as the above, it is often the case that the specification illustrates how the different failure modes can, and often do, occur independently or at different situations from one another. This further supports the idea the a claim requiring both is of little relevance in that it might only apply when both failure modes are present at the same time.
So if you see illogical rejections under Section 112 try to point out the lack of evidence supporting the rejection and then focus on the facts of the case to illustrate how the claims are consistent with the understanding of the invention upon the initial filing.