[Continued from the prior post “Private pair login subcombination.” This post explains why I thought it was funny to receive a suggestion to use the word “subcombination” to increase web traffic, on the basis that is was one of the top 4 most searched terms for websites with similar content to mine.]
…. 2. “Subcombination“ is language that no one would be familiar with, outside of the context of receiving a patent office communication known as a “restriction requirement.“
A restriction requirement is a document sent to a patent application when the examiner has decided that there are groups of claims within a single patent application that are “drawn to“ distinct inventions. The examiner is asking the applicant to pick from between these two or more inventions, and with drawl the others, so that the application in question is only attempting to patent one invention.
The word “subcombination“ is used in a restriction requirement, as part of one of the bases for an examiner requiring recognition of distinct inventions.
Specifically, the examiner will use the word “combination“ when differentiating an invention from claims describing which the examiner will call a “combination.“ Invention.
The examiner will say the two inventions are distinct as combination and sub combination, where the “claims drawn to the “combination“ invention are describing something to find by having elements A, B, C, and the quotes a combination“ is describing it invention having A, B, C, and D.
The logic will be that these are distinct inventions because the combination does not include an element which the sub combination does include, and therefore the subcombination’s additional element defines a thing having a narrower scope. This is not, in itself, totally reasonable, every single time the examiner asserts it. It will be a subjective question that requires consideration of whether the element that is missing from the “combination“ invention is providing such an additional detail as to render the “subcombination“ a thing having a distinct utility or purpose or composition.
Here’s an example of where a combination and subcombination may not necessarily be distinct.
Claim 1: I claim a knife having a blade and a handle.
Claim 2-6 (claims with additional elements that depend from claim 1).
Claim 7: I claim a knife having a blade and a handle and A fastener, where in the fastener is adapted to connect the blade and the handle.
Claims 8-12 (claims with additional elements that depend from claim 7).
The examiner writes: the application discloses and claims two distinct inventions:
I. Claims 1-6 drawn to a knife,
II. claims 8-12 drawn to a connected knife.
with the explanation “inventions I and II are related as combination and subcombination. Applicant is required to elect either invention I or invention II, and withdraw the claims drawn to the other invention because they are patentably distinct…. A combination and sub combination are patentably distinct where the subcombination requires an element which the combination does not, and the element renders the subcombination to have a utility that a person having ordinary skill would not know (or would require a burdensome search).” (Or something to that effect, I dictated this off the top of my head)
In this case, such a requirement is total horsehockey.
Even without the great history of knives being known which do not require a fastener between the handle and the blade (such as one which is unitary, the handle simply being a grippable part of the same piece of metal), there is nothing about having a fastener between a handle and any sort of implement that requires a handle which would render it’s an entirely different invention from language referring to an implement that has a handle.
Here is an example of an appropriate restriction:
13: I claim a knife, comprising a blade, a handle, and an alternately-lockable fastener adapted to connect the blade and the knife, and adapted to connect the knife with the driveshaft of an aquatic vehicl
NOW we have a distinct pair of inventions.
Calling this (claim 13) invention III, the fastener might have made it only an indistinct variation of II, because being alternately lockable doesn’t change the fastener from being a fastener that connects the handle and the blade.
However, connecting with the driveshaft of an aquatic vehicle throws a very confusing wrench into the mix. Where I and II might be describing any number of things that are interchangeably expected by a PHOSITA in cutting implements to be useful for cutting similar things, providing that a handle allows for a “blade” to be mounted to a boat creates the possibility of this being a completely unrelated invention (think of how a propeller has at least one “blade,” and a variety of things which might allow it to connect to a boat driveshaft could be considered a “handle”).
Even if the purpose of invention III was still to provide something like a butter knife to be strapped to a boat driveshaft, it is highly likely that such a thing is for a completely distinct purpose from what a PHOSITA would expect to do with a butter knife.
More legitimately, though, searching for prior art on invention I would require looking through the history of knives, and likely JUST knives. If invention III is not withdrawn, then the examiner must search through the history of knives (to whatever degree that might find a reference against I), but also must search through the history of boat driveshaft attachments and probably also the history of “handles” that facilitate connecting anything with a “blade” to anything with a driveshaft. With respect to claim I, complaining about having to find a fastener for II, which I doesn’t need, it is plainly an excessive burden to search for references teaching III’s wacky limitation, in an application that is also seeking protection for I.
Now that you know what “subcombination“ is, and why anyone would think to Google it, let’s return to how we got to all of this. Ask yourself, “who is searching for this term?” Does writing content on the basis of it being a popular term have any likely value to improving my web traffic?
Is [the typical person who is searching for “subcombination” ] really a patent attorney? Maybe.
There are probably many cases discussing when and how the phrase is appropriately used, and it is probably valuable to copy the exact language in the law, in order to argue with the examiner. But we are still talking about someone who is IN prosecution. As I’ve said before, snaring other attorneys is probably not that valuable to bringing convertible eyeballs to my website.
What fraction of applicants that are not Patent attorneys have already gotten themselves as far into the patent process as to have received a restriction requirement, but are ones which are now looking for a patent attorney to sort it out for them? Apart from the ones who decide, because of the substance of the restriction requirement, that they need a patent attorney, I think that we are probably considering a lot of people who believe that they could do the whole thing from the ground up, without an attorney.
So, miss SEO expert, if I were to use any of these for phrases (see also “1. Why I think ‘Private Pair login” is amusing.”) in great density in producing content for my website, I would presume that a good 2/3, if not more, of the people that would arrive at my site will be patent attorneys that aren’t looking to pay another attorney for anything. The remaining 0-1/3, I’m not sure how many of them are going to decide that they need a patent attorney, simply by coming across the point in their prosecution where they don’t know how to proceed.
I think it’s a total free-for-all out there, the world of getting people to find you through search engines. But I can test it by writing an article using these terms, I suppose. And now I have! 3, actually.
Contact me if you have invented something. Maybe we can protect it.