The Examiner as Addressee

Date Published

Examiners are not expected to be fully familiar with the language of every art. Inevitably, objections will be taken as to the lack of clarity in some of the terminology used in the specification, to which the applicant will respond that such terminology is perfectly clear to the addressee. Where the terms in question are used in relation to inconsequential features, the objection should not be maintained.

However, where the terms are material to the understanding of the invention or for the definition of its extent, a mere assertion that the terms have a clear and unambiguous meaning to persons other than the examiner need not necessarily be accepted. Thus, corroboration may be required when an assertion is made by a person who has not established that they are skilled in the art, for example the applicant’s attorney. Similarly, assertions may be questioned when they are made by one person under instructions from another.

Where corroborating material is supplied or cited, for example, references in dictionaries, handbooks, or examples of usage in the trade, and there appears to be conflict between sources, the terminology used by the applicant should be reinforced by a reference to the relevant source which establishes the required meaning.