Stu, anything in the International Search Report for the WO suggesting
why the specific supported catalyst claim was eliminated during regional
prosecution at the EPO?
I'd also be interested in a comment from Derwent on " reabstract[ing]
if the
information in an equivalent is significantly different." What
criteria do Derwent indexers/abstracters use in evaluating "significant
differences" between patent family members? Does Derwent do comparisons
of independent claims, numbers of examples, numbers of claims, etc?
Roy Zimmermann
Patent Information Specialist
612-514-3304
roy.zimmermann@medtronic.com
rzimmerma@aol.com
>>> Stuart M Kaback <smkabac@erenj.com> 05/31/00 08:44AM >>>
Here's a little example of how careful you have to be about assuming
that
members of a patent family are really equivalents--and how significant
information can be buried, through no fault of the database producers.
I became aware of a recent EP-B patent of some interest to me a few
days
ago. It was picked up via full text search of one of the European
patent
databases. It dealt with the preparation of polymer beads with special
characteristics, which could be used among other things as a catalyst
support. One example showed the use of these beads to make a supported
catalyst of a type of interest to me. There were no specific claims
relating to such catalysts, although a very generic claim might be
interpreted to encompass the catalysts.
This EP-B had WO and DE predecessors, and I checked the WO and found
that
it DID include a specific claim that was of interest to me. And a
check of
the Derwent Doc abstract showed not a trace of information regarding
that
subject.
As I composed a grumbling note to Derwent, I realized that Derwent's
abstract had been made NOT from the WO but from the DE, a C1 document.
I
checked the DE and found that it had neither the example of interest,
nor
the related claim. In short, Derwent had done an impeccable job of
abstracting the document at hand.
Teachings of this incident: equivalents are not always identical, and
if
the situation is important we'd better dig deeper than the surface.
Database producers say from time to time that they'll reabstract if
the
information in an equivalent is significantly different, but I don't
think
there's any realistic way that they can check all of the hundreds of
thousands of equivalents each year on the off chance that the
information
will be substantially changed. In an instance such as this, where the
abstracted document is narrower than subsequent family members, it's
almost
inevitable that we will miss out on some information.
Perhaps the ironic thing about this incident is that the most relevant
reference in this particular family, the WO, was not the document that
led
me to the family. Rather it was the EP-B, nearly as narrow as the
DE-C1
but with an EXAMPLE of real interest. One more piece of evidence in my
ongoing campaign to convince database producers of the importance of
conveying more than claims--at least a representative example, and,
when
the examples are wide-ranging, an indication of their scope.
Stu Kaback
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