Elongate member. It’s a rod, the attorney who wrote it knows it’s a rod, and they know that you know. It went in that way to keep the claim broad and your search off the shelf where the rods live. Most of what is hard about your work is already in those two words. The office would describe the job as one thing. Search the prior art, meaning everything the world had published before this application was filed, apply the law to the claims, write an action, read the reply, allow it or don’t. Every word of that is true, and it is two different jobs, counted and paid as one.

The first job is retrieval, and I think it goes completely. Prior art is the best behaved body of documents anywhere. It is published, it is dated, it is classified by people who spent whole careers on the classification, and the families are linked across every office that has ever handled the same invention. Art in other languages stopped being a wall some time ago. Searching a corpus like that by meaning rather than by words is precisely what these systems are good at, and you already work with tools that are a long way past keyword lists. Some of you will be glad.

There is one honest complication in that, and it matters later. Searching well depends on reading the claim properly, which is where the elongate member comes back in. A good part of what looks like search skill is really claim construction, and I would put that in the second job rather than the first. That is somebody who has never examined an application telling you what your own craft is made of, and I know how that reads. Examiners would say that building a strategy, and knowing when you have searched enough to stop, is the skill, and that it doesn’t come apart into halves the way I’ve just cut it. Which of us is right isn’t something I can settle. I’m guessing, and I’d rather say so. What I’ll stand behind is narrower: the part that really is finding documents gets cheap fast.

Novelty gets cheap with it, and I don’t think that one is controversial. Does one document, on its own, already contain every element of this claim. That is a comparison. It is checkable, it has a right answer, and a machine that is good at retrieval is good at the comparison too.

Then there is the second job, which is a peculiar thing to explain to anybody outside your trade. You have to decide whether the claimed thing would have been obvious. Not obvious to you, sitting there with the application open in front of you and the whole idea explained on page four. Obvious to somebody the law invents for the purpose. That person knows everything published in the field up to a particular date and nothing after it. They are thoroughly competent and have no imagination at all. They have never seen this application, because at the moment the question is asked it has not been written. The entire value of that construction sits in what it is denied.

Which is why hindsight is the permanent hazard of your trade. Every examiner is warned about it early and still catches themselves at it years later, because once you have read the disclosure you know how the pieces go together. The application has just taught you. Two documents that sat in different classes and never met now look like an obvious pair, and they look that way because somebody showed you the join.

So look carefully at what is being offered to you as help. A model has read everything, including a great deal published after the date that matters. Its whole competence is putting together things that had not been put together. It has read the application, and an application is, among other things, a set of instructions for how to combine the references. Ask it whether a claim is obvious and it will answer, fluently, every time, with a reason that reads beautifully. What you have been handed is the most productive source of hindsight anybody has built, and hindsight is the one error this part of the law exists to prevent. A date filter keeps late documents out of a search. Nothing filters what a judgment is made of.

You have to say why a person in that invented position would have picked up those two documents, put them together, and had a reasonable expectation that the result would work. Your reason then gets read by an attorney whose client is paying to take it apart, and it may be read again by people above you both. A plausible reason produced after the fact is not a weaker version of that. It is the specific thing the requirement was written to keep out.

I don’t want to leave you with the comfortable reading, because I don’t think it holds. Your trade is not squeezed by machines first. It is squeezed by counts. Output is measured, everybody knows their own numbers, and every tool that has ever arrived in that building was absorbed as a raised expectation rather than as breathing room. If a system drafts the action and you review it, the real question is whether reviewing a fluent draft is the same activity as forming a judgment. I don’t believe it is. A convincing document pulls the reader toward agreeing with it, and it pulls hardest when the reader is behind.

The pressure from the other direction is worse. Applicants have the same tools you do. Drafting is cheap now, filings rise, and any rejection you write can be answered at length by the same afternoon, at a length nobody would have paid for before. The load grows at both ends while the part of your work that used to absorb it is the part being taken away. How that resolves is beyond me, and I am not going to pretend otherwise. It is the part of the problem that never turns up in anybody’s plan to speed things up.

There is a version of your office where the second job becomes the whole job, and the counts fall to match, because a decision that has to be defensible in writing is worth more than three that are not. There is another version where the drafts arrive faster and the counts rise, and the judgment quietly becomes a checkbox on somebody else’s document. Nothing technical decides which of those happens. It gets decided by whoever sets the numbers, and the numbers have never once been set to favor the slower half of the work.

Watch what your own hand does while you read the reason to combine in the last action you signed, out loud, to yourself. If it goes to the application, the thing you were judging has just taught you the answer. Then be honest about how much of your own pile gets decided that way. I have no idea what the answer is, and I notice that everybody outside your office is certain they do.