Paper B E/M 2014 -- Making the right connection
Paper B for Electricity / Mechanics (E/M) 2014 of the European Qualifying
Examination (EQE) was held last Wednesday 26.02.2014. Below we present the claim set of our solution.
A patent application was filed for an electrical connector having a 'pin contact'. An office action has been received in which the Examiner objects to novelty on the basis of two documents. In addition the Examiner had a few minor objections: clarity and unity.
Your clients tells you that he wants protection for two different positions of these pin contacts. So we have to be careful that to keep this in the scope of protection. Helpfully, he also supplies you with new claims.
Looking at the office action, it seems that the Examiner is right, and that both documents are in fact novelty destroying. However, it does seem that Claim 2 as filed is novel over D2 and Claim 3 as filed is novel over D1. We cannot directly follow the suggestion of the client either, since we appear not to have basis for any of his Claim 1 amendments.
The description itself seems to offer little additional information beyond original Claims 2 and 3 that we might use to overcome the novelty problems. The combination of claims 1-3 seems to overcome the objections of the Examiner and satisfy the client's wishes. Claim 3 does have the drawback that it includes the position of the pin connector, so we will have to try to get this out of the new claim. Fortunately, it appears that this is possible. One could argue this by following the guidelines (H-V, 3.2.1) or case law, e.g., T582/91.
Based on these considerations we come to the claim set given below. A disclaimer applies here; we have no more knowledge of the solution than any of the candidates. So we may be on the wrong track entirely. One should also realize that your argumentation is worth most of the marks.
2. Electrical
connector (1) according to claim 1, the connector (1) being preferablyis
32. Electrical connector (1) according
to claim 1, wherein the pin contact (22) protrudes
open
position, the insulated cable (C) is guided through the straight tube (32)towards the
hinge (14), until it abuts against the stop (34), which prevents theinsulated
cable (C) from reaching the hinge (14)
43. Electrical connector (1) according
to claim 31,
wherein an opening of the straight
54. Electrical
connector (1) Insulated
cable (C) according to claim 1, which wherein the insulated
cable is received in a blind hole (36).
© Copyright DeltaPatents, 2015
A patent application was filed for an electrical connector having a 'pin contact'. An office action has been received in which the Examiner objects to novelty on the basis of two documents. In addition the Examiner had a few minor objections: clarity and unity.
Your clients tells you that he wants protection for two different positions of these pin contacts. So we have to be careful that to keep this in the scope of protection. Helpfully, he also supplies you with new claims.
Looking at the office action, it seems that the Examiner is right, and that both documents are in fact novelty destroying. However, it does seem that Claim 2 as filed is novel over D2 and Claim 3 as filed is novel over D1. We cannot directly follow the suggestion of the client either, since we appear not to have basis for any of his Claim 1 amendments.
The description itself seems to offer little additional information beyond original Claims 2 and 3 that we might use to overcome the novelty problems. The combination of claims 1-3 seems to overcome the objections of the Examiner and satisfy the client's wishes. Claim 3 does have the drawback that it includes the position of the pin connector, so we will have to try to get this out of the new claim. Fortunately, it appears that this is possible. One could argue this by following the guidelines (H-V, 3.2.1) or case law, e.g., T582/91.
Based on these considerations we come to the claim set given below. A disclaimer applies here; we have no more knowledge of the solution than any of the candidates. So we may be on the wrong track entirely. One should also realize that your argumentation is worth most of the marks.
1. Electrical connector (1) for connecting
to an insulated cable (C) having a sheath of
insulating material and an electrical conductor,
the electrical connector (1)
comprising:
a) a body (2) comprising a front wall (4),
two side walls (6), a rear wall (8), and a
bottom wall (10);
b) a cover (12) for closing the body (2)
when the cover (12) is in a closed position;
c) a hinge (14) arranged along the front
wall (4) of the body (2) and connecting the
cover (12) to the body (2);
d) an electrical contact element (20)
having a pin contact (22) and blades (24) for
cutting the sheath, the pin contact (22)
protruding out of the body (2) and the
blades (24) being disposed in the body (2),
e) wherein the cover (12) comprises a guide
(30) for guiding the insulated cable (C),
the guide (30) having a straight tube (32)
and a stop (34), the straight tube (32)
being orientated towards the hinge (14),
wherein the
connector is configured so that when the cover (12) is in
an
open position, the insulated cable (C) is guided
through the straight tube (32)
towards the hinge (14), until it abuts against the stop
(34), which prevents the
insulated cable (C) from reaching the hinge (14).,
and wherein
configured so that, when the cover (12) is
in the closed position and the
insulated
cable (C) is located in the straight tube
(32) and abuts against the stop (34), the
electrical conductor of the insulated cable
(C) is in electrical contact with the
blades (24).
out of the front wall (4) of the body (2), and wherein when the cover (12) is
in an
tube (32) is funnel-shaped.
© Copyright DeltaPatents, 2015
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I don't have exactly the same solution, even if on the merits I think it's almost the same.
ReplyDeleteIn fact, what bothered me was the fact that the original set of claims does not disclose the combination of claims 1+2+3, since claim 3 only depends on claim 1.
So I went to the description to find a support for this combination, and the only thing I found was the passage on par.7, l.1-8. However, this passage only discloses the open position, and how to move from this open position to the closed position. Therefore it comprised an additional feature (when the cover is moved to the closed position, the blades cut through the sheath of the cable), which I found essential. So instead of combining claims 1+2+3, I combined claims 1+3 with the passage of the description on par.7, l. 5-8.
While doing this, I thought (and still think) that it was probably not the expected claim, but I don't understand why...
When making the paper this was exactly the other option I considered. Either start out from claims 1-3 and try to remove the position of the pin. Or start out from claim 1 and amend with support of the description.
DeleteThe latter option has the disadvantage of introducing an additional feature (moving to closed position and function of the blade). However, these feature are not very limiting.
In the end I opted for starting from the claims, since it seems at bit cleaner, but I can see the advantages for the other option.
I feel somewhat better not to be the only one to have envisaged this...I always wonder if I'm not asking myself too many questions...
DeleteThat is certainly a risk, not only with A/B by the way but with all the EQE exams.
DeleteHi all,
ReplyDeleteI personnaly kept the characteristic g) introduced by the client (which can fairly be based on the description and drawings as filed I believe),
this seems to me to be equivalent in scope to the second part of claim 3 that you introduce in claim 1, but appears to me to stick better to a "device" claim and less to a "method" claim.
I also deleted amendment f) proposed by the client (as non compliant A.123(2) and if made compliant with A.123(2) then non-compliant with his wishes) and replaced it by claim 2, as you propose.
I have done the same as Benjamin.
ReplyDeleteThis, in my point of view has the advantage of not being forced to establish the 3 points essentiality test.
Therefore claim 2 is in the preamble, and feature g) defines the characterizing part of the claim.
Hence, D1 is the cpa.
I'm not sure whether you can skip the essentiality test. It seems to me that when you extract a feature from the drawings you need to justify that you don't take the other features disclosed on this drawing.
ReplyDeleteYou could argue whether the essentiality test is really needed.
DeleteThere is T582/91 which gives special rules when combining with dependent claims. It requires only that you argue there is no close functional or structural relationship. I think that is easier than arguing the in-essentiality.
If there is time, I would nevertheless try to do an essentially test; it is not inappropriate and you may pick up points.
In any case you'll have to argue the removal of a feature, regardless whether you took the route via claim 2 or via the description. The argument will involve explaining that pin location is independent from the cover. It may all make little difference in the end.
As Thrymrr points out, if you go for the claims, as I did, you'll also need to comment on the fact that claim 3 does not refer to claim 2. I think the combination is nevertheless allowed, as claims 1-3 all relate to the same embodiment.
In my view the expression "wherein the connector is configured so that when the cover (12) is in an
ReplyDeleteopen position" and the 2nd claim are not needed in the 1st claim to get novelty and inventive step.