What date the examiner will use when interpreting an embodiment for novelty?


It seems like USPTO allows different embodiments for novelty/anticipation rejections.

So I wanna know how the embodiment will be interpreted.

A provisional patent is filed by "inventor A" in 2010. A non-provisional patent is filed by the same "inventor A" in 2011.

Both Patent has the same embodiment and it offers "meaning A".

An internet standard (RFC) defined in 2015 offers more solutions to the same problem. Because of the words found in the RFC, the embodiment can also be interpreted as "meaning B".

When the examiner use "provisional patent" as a reference for novelty, which date he will use for establishing the novelty interpretation?

2010 or 2015?


Posted 2019-10-29T14:56:38.363

Reputation: 343

1I do not understand your question. How is it that some disclosure offers one meaning or another? In respect of what exactly? Without properly understanding your question, my answer would be: for novelty purposes it does not matter what meaning is being offered. Your device/system/method is either novel or it isn't, i.e. the device/system/method with the claimed features is known from the prior art or it is not known. Interpretation is not really part of novelty analysis, it is an objective analysis: are the features disclosed or are they not? – the Europeist – 2019-10-29T19:00:26.267



First, there are no "provisional patents", only provisional patent applications. Any application of any kind filed in 2010 or in 2011 that specifically referenced an RFC by number could not be interpreted as disclosing something that was only in a 2015 version of that RFC.

If instead of referencing an RFC explicitly, a concept like "domain policy list" was used in a specification it would be interpreted, initially, as its plain meaning to one skilled in the art on the day that application was filed unless the context of the specification indicated a different definition.

George White

Posted 2019-10-29T14:56:38.363

Reputation: 21 648

Thanks. much appreciated. Yes, I keep forgetting to use the term "provisional patent application". Thanks for the reminder. – PrivateUser – 2019-10-29T21:04:35.570

Hello Mr. White, I have a follow-up question. If provisional application and non-provisional application has the same content, can the examiner use the latter date? e.g. First application was filed in 2010 and the second application was filed in 2020 which has the exact embodiment as the first application. Since the RFC was published in 2015, can the examiner reject my application for lacking novelty by using the second application as reference? Or I can use the first application filing date to defend myself? Thanks – PrivateUser – 2019-10-30T16:28:48.690

1it is better to ask a new question as a new question. Normally the examiner will look for prior art that is dated before the non-provisional filing and it is up to you to then respond by pointing out the support in the earlier-filed provisional application to counter the cited reference that occurred in between the filings. – George White – 2019-10-30T19:29:38.343

Got it. Thanks. – PrivateUser – 2019-10-30T19:36:59.807


Interpretation is not related to Novelty analysis. An invention is considered novel if the claimed features in the invention are not known from the prior art i.e the invention must be new. With respect to the date, the date at which you are filing the provisional patent application is considered as the ‘priority date

DexPatent-Caroline Charumathy

Posted 2019-10-29T14:56:38.363

Reputation: 27