United States Patent and Trademark Office

United States Patent and Trademark Office
IPC Working Group
Topic: Updating IPC Training Examples for Date: August 2, 2005
Reformed IPC
Comments on Project TE229
US has reviewed the newest Rapporteur Report (Annex 8) and proposal (Annex 9) for
this example.
In our opinion, the proposed application of either Guide paragraph 90(a) or 99(b) to the
inventive thing of this example is improper. The intended scope and interrelationship of
both subclass E05F and subclass F16F must be considered. The sole basis for the
existence of subclass E05F is the specific use (i.e., all of its subject matter is somehow
associated and used with “wings”) for which its covered devices are intended. There is
no requirement for subclass E05F devices to be either combined with doors, have
disclosure specific to where they are used on doors, or disclose what kind of doors they
are used with. The limiting reference in F16F 9/00 to E05F clarifies the relationship of
these subclasses.
Many of the devices of class E05 (e.g., door locks, hinges) are commonly sold per se in
stores as hardware for their intended use and how, or to what, they are finally applied (if
ever) is solely up to their purchaser. The first sentence of Guide paragraph 89 applies in
this situation and states, “Often, the invention information relates only to a particular
field of use, and the application-oriented places are intended to cover completely the
classification of such matter.”
For primary obligatory classifications, it is required to utilize applicant’s claim and claim
disclosure, not a conjured up potential use, to determine to what particular field an
inventive thing as a whole within a patent document relates. The only exceptions to this
standard are situations where published applications are determined not to contain any
patentable subject matter (i.e., invention). In these situations, classifiers must envision,
based on their experience, where these documents’ disclosures are usefully classified.
Furthermore, the CE has already established at the beginning of Reform that it is a
requirement of both the “Paris Convention for the Protection of Industrial Property” and
“Strasbourg Agreement” that the “invention” (i.e., the summation of all the inventive
things claimed within the patent document) is defined solely by the claims of the patent
document and the portion of its disclosure needed to interpret them. Therefore, the
Guide, or any placement rule in the Guide or scheme, can never be interpreted to require
primary classification based on unclaimed subject matter since neither the WIPO nor the
CE has the authority to modify a requirement of these treaties.
What Rapporteur has effectively attempted to do in this example is to require
classification based on an unclaimed and undisclosed perceived ‘genus’ for the claimed
invention. This cannot form the basis for the primary obligatory classification or even an
additional obligatory classification.
We believe that the classification bases Rapporteur advocates in Annexes 8 and 9 of this
example are damaging to search quality and prohibited (see above). If these
classifications and their bases were approved, classification of simple family members
within the advanced level would be inconsistent. The proposed classifications would
both cause classifiers to ignore for primary obligatory classification purposes the group
the claimed and disclosed inventive thing is actually fully covered by and compel
classification in a much more broadly stated group based on an undisclosed genus for the
inventive thing. This means that the actual inventive thing is not as specifically covered
as possible.
In this situation, what the Guide requires us to do in paragraphs 89 and 90 is to ensure
that the primary obligatory classification is to the specific place for the inventive thing
and assign an additional obligatory classification for its more universal structure if novel
or specifically claimed. If there exist a specific place fully covering an inventive thing
when used for its sole disclosed purpose, it must be assigned to that place as the primary
US believes that there are several other important Guide paragraphs applicable to this
example that the IPC/WG and CE must consider prior to finalizing the classification of
this example. Since this example is a patent, paragraph 121 is appropriate and states:
“All subject matter covered by the claims of a patent document must be classified
as invention information along with any novel and unobvious constituents or
components (subcombinations) of the claimed subject matter. Classification
should be based on the subject matter of each claim as a whole and on each
inventive embodiment within a claim.”
The specified application in this example is an integral part of the “inventive thing as a
whole” since it is the only specific application for using, or potential use of, the “closer
device”. As claimed and disclosed in this patent, the inventive thing is fully covered by
subclass E05F. No general applicability is either claimed or disclosed.
Additional obligatory classifications to subclass F16F are justifiable based on
constructional features that are not specified in the scheme of subclass E05F. We support
these additional obligatory classifications as useful and valid since the novel subject
matter of the claims clearly has a more general potential applicability fitting the
requirements of paragraph 99(c). The secondary obligatory classifications would have
also fit within the requirements of paragraph 90(b) if a more general usage were actually
disclosed or were universally assumable based on well-known real-world applications.
With regard to the specific obligatory classifications recommended by Rapporteur,
although we believe the one to F16F 1/04 is questionable, we can support them all if they
are assigned for the reasons specified above and they are reordered. We suggest the
following order:
Core Level
Advanced Level
Int. Cl. (2006)
E05F 1/00
F16F 7/12
F16F 13/00
F16F 1/04
E05F 1/08 (2006.01)
F16F 7/12 (2006.01)
F16F 13/00 (2006.01)
F16F 1/12 (2006.01)