Identifying the “Point of Novelty”

We were asked whether we ever identify the “point of novelty” in the claims during prosecution of a utility patent application.

At the outset, the phrase “point of novelty” is a little unclear.  In the usages we’ve seen, the phrase typically does not refer strictly to novelty under 35 USC 102.  Instead, the phrase refers to the inventive element (or “hook”) in the claims.

To begin answering the question, we do not suggest identifying the “point of novelty” in a written response to an Examiner.  Such identification would provide little benefit but might raise concerns about estoppel.

What about during an Examiner interview?  Then, it might be acceptable to identify the “point of novelty” informally.  However, the Examiner will not necessarily allow the application following the Office Action response filed after the interview.  In this situation, there is a risk the subsequent Office Action will include prior art that discloses the “point of novelty” in the claims.  This risk is increased, because the Applicant has specifically identified this important feature to the Examiner.

If the Examiner successfully finds such art, the Applicant is unlikely to simply abandon the application.  Instead, the Applicant will likely further amend the claim.  This further amendment might make the Applicant appear disingenuous.

So, we sometimes tell the Examiner, “We are currently asserting the point of novelty to be 〇〇.”  This phrase still communicates the important part of the claim to the Examiner.  However, the phrase also leaves open the possibility that a further amendment might be necessary in the future.  So, we are alerting the Examiner to the fact that Applicant’s position regarding the “point of novelty” might reasonably shift over time.

If Modal PLLC can assist you with sophisticated US prosecution strategies, please contact us.

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