Query on Elements and Limitations

A Patently-O commenter recently made a distinction between claim elements, claim steps, and claim limitations.

“[B]asically, the distinction can be discerned grammatically. Elements are nouns. Steps are verbs or gerunds. Limitations are almost always adjectives, adverbs or modifying phrases, usually beginning with “wherein”.”

Is this distinction correct? Is there any legal basis for these distinctions?

28 thoughts on “Query on Elements and Limitations

  1. Babel, thanks for that. I agree that an “all elements” rule is not much use when we don’t know what an “element” is. As to your two claims, I think they mean the same thing. The shaft is present, in both cases. Now if you had written “a gear for fixing to a shaft” I would agree that, there, the shaft isn’t present.

    Reminds me of arguments about “means” claims. When is a claim “element” M+F and when not. Sterile arguments all. Unnecessary arguments all. Patent law should be stripped of complexity that is utterly unnecessary and an affront to the common sense of intelligent district court judges and the community of intelligent people who are trying to use the patent system as a tool to make money in the business world.

    Tyrone thanks but I am more sceptical of the ability of EPO Appeal Board members to divine accurately what is and what is not added matter. I rejoice though, that your experience is happier than mine. When in Munich, I must try harder, to get my point across persuasively.

  2. Max
    EPO examiners who insist on verbatim support for amendments are flying in the face of the case law of the boards of appeal, and should be resisted. Poor language skills are no excuse.
    I’m currently having to appeal an opposition division 123(2) revocation decision which gave the skilled person credit for no common sense at all, to the extent that it shocked even an old cynic like myself.

  3. There appears to be a fair diversity of opinion as to just what an element is. Pretty basic sort of issue, isn’t it?

    Some have asked, what’s the point? The initial point of the elements/steps v. limitations dichotomy was trying to provide some rationale for 103 obviousness rejections in view of KSR.

    Clearly, it is not a rule of law, which seems to be the main source of criticism and confusion. It’s a rule of logic. And it’s helpful. Remember all those sentences Mrs. Wilson made you dissect in 7th grade, with the angled lines dropping down from the subject and verb? That analysis actually has some relevance.

    It has been my experience that in rejecting or invalidating under 103, the examiner/court must show how all of the claimed elements (physical structure, i.e nouns) are met by the cited references — i.e., all elements rule. But the examiner/judge has a lot more leeway to take your claim limitations (i.e, descriptive words and phrases — adjectives, adverbs, adverbial phrases, etc.) and insert them into the prior art as “obvious.” That’s where all the subjectivity lies – in the limitations.

    I would argue that almost all obviousness rejections come down to limitations. If a claimed element (structure) cannot be found in the relevant art, then there is no rejection, period. But if your claimed limitation is missing from the art, the examiner can insert it into the prior art as being obvious. In most 103 cases the limitation in controversy is “combined” and the fight is over the obviousness of the “combining” limitation, which is an implicit limitation nowadays because the old “in combination” language is not used much.

    Single reference 103 rejections are really 102 rejections where a single reference meets all of your elements but not all of your limitations, so the examiner sticks your limitations into that prior art structure and perversely nominates it as a single-reference 103.

    The conceptual and analytical difficulty is that, as a number of you have noted, limitations, while descriptions, often incorporate structure (nouns). For instance:

    A machine, said machine comprising a gear, wherein said gear is affixed to a shaft.

    I would argue that the only claimed element here is gear. The shaft is not being claimed as an element, it is claimed inferentially as part of the limitation of the gear.

    That claim would be less vulnerable to a 103 rejection if it read:

    A machine, said machine comprising 1) a gear; and, 2) a shaft, wherein said gear is affixed to said shaft.

    Now the shaft is a claimed element and the examiner has to put his finger on it in the prior art instead of merely concocting the limitation of a gear affixed to a shaft and calling it obvious. It’s not the best example because it’s too simple, and I know Moonbeams is going to say the claim would be rejected because shafts are well known. But I think it illustrate my point.

    My main point is that it would be helpful to the field if this elements-limitations language was cleared up. How does one know whether the all elements rule has been violated if examiners and prosecutors don’t even agree on what an element is? If you look to the case law for clarity, you’re wasting your time. The judges are as confused as the rest of us.

  4. Oh dear, Mr Spevacek. The judges in Germany, as they go about their daily work of claim construction, might take a dim view of that comment. Me, I don’t know enough about maths to say whether von Neumann was onto something there, but I do know about claim construction and am suspicious of any salami-ising of claims into elements, features, limitations, call them what you will. Experience with the EPO problem and solution approach teaches that it is a process laden with risk – I mean, for the inventor lacking the support of an expert prosecutor.

  5. Thinking about what “me” said in the first post, I’m reminded of a quote by the mathematician von Neumann: “Dividing equations into linear and non-linear equations is like dividing the animal world in elephants and non-elephants.”

  6. Where’s the sarcasm? Point it out with more particularity and I will try to avoid upsetting you all in future. What do others think? Meanwhile, I’m deadly serious, about why EPO Examiners insist on verbatim support. They don’t in the UK or German national Patent Offices, despite operating under the identical legal provisions. Why is that? I say it is for the reason I am urging on you all. Come on Paul Cole, Eurodisnae, Tyrone, Dennis, Malcolm even. Do you think I am dragging you all into the sewer? Incidentally, you who call yourself “Former Max Fan”. Could it be that you are an EPO Examiner with first class English, who thinks that my assessment doesn’t apply to you personally, and so feels personally wounded by my explanation of the “verbatim” problem. How many cases have you prosecuted at the UK and German Patent Offices?

  7. Max, you should have paused before you sent your responses to Lionel Hutz and bsn.

    You are more pleasant, more convincing and more interesting when you keep the sarcasm to yourself.

    Too bad that you are joining Malcolm Mooney and 6 in dragging this blog into the sewer.

  8. Tyrone Slothrop (somewhere on this blog yesterday) did an excellent job of quoting from a leading EPO case, on what for the EPO constitutes “new matter” and what is the public policy objective behind the prohibition on adding it during prosecution. All downloadable as well, from the EPO website. Judge Moore is an assiduous reader, and not frightened to borrow from Europe.

    Japan does the same as Europe. China too, I shouldn’t wonder. Welcome to the world.

    bsn: close but not quite. Imagine you (yes, you) are examining at the JPO. Not your language, right? Applicant #1 amends, using character strings found in his app as filed. Next day, you get an amendment from Applicant #2, using strings of katakama characters nowhere to be found in the app as filed. You have to decide if he’s adding subject matter. Well, is he? Don’t you think you might be tempted to use “verbatim” as a criterion, whether sm has been added? Short cut, I know. Crude, I agree. But what else is a poor Examiner going to do, to gather his quota of disposal points? But wait. Why not appeal? Only problem is, in the EPO the Board of Appeal members have no better command of English than the examiners at first instance. Never fear though. Why do you want your EPO issued? Why, to sue infringers in mainland Europe, right? And what language do the courts use there? Not English, right? And what do they use to decide the scope of a claim? The Protocol on the Interpretation of Article 69, right. So, in the end, everything comes out OK, and your claims prevail, provided you immerse yourselves in EPC culture, and grasp all the checks and balances it provides. It’s when you pick out one element of a patent law matrix, and assess it in the context of your own contradictory matrix, that confusion starts. (Europeans are always making the same error, when looking across at USpatent law). Still, legal confusion is good for billing hours, right?

  9. Amending claims is relatively difficult in Europe, whether one is broadening or narrowing, because of the strict ‘new matter’ interpretation. In other parts of the world, we can argue that a POSITA would understand the description to teach X, and therefore we can amend a claim to include X. In Europe, in my experience (obviously less than Max’s), one needs to repeat the terms of the description verbatim in the claims. My understanding is that this is a result of the prosecution needing to be consistent across all EP languages, and so inferences which might not exist in all languages can’t be imported.

  10. An element is a group of related claim limitations. I think Judge Newman opined on this in one of the Festo lines of cases regarding the loss of DOE in amendments.

    Also, from 37 CFR §1.75(i)(claims)…where a claim sets forth a series of elements or steps, each element or step should be separated by a line indentation

  11. You think that Lionel, do you? European Patent Attorney are you Lionel? Advising the readers on what is and is not do-able at the EPO, are you Lionel? Or are you tutoring me? Familiar with Houdaille are we? But, never mind. Keep telling it like it is Lionel. If they take your advice Lionel, it might leave a bit more breathing space for European industry.

  12. Max,

    Broadening claims in the EPO is difficult to impossible unless you have identified the new broader breadth as being the invention somewhere in the written description in the first place.

  13. I agree with the poster identified as “Non Sequitur”.

    I see no legal difference between terminology such as “claim element,” “claim limitation,” “claim feature,” etc. They all refer to claim language and the claim language will be (or should be) construed in the same manner no matter whether you refer to it as a “CLAIM feature” or a “CLAIM element” or a “CLAIM limitation”.

    On the other hand, if a CAFC opinion (or any author) uses broad terminology, such as “element,” without specifying that they are referring to a “CLAIM element,” this could cause confusion. Are they referring to the element as claimed or the element as described in the specification?

  14. Lost me there Paul. No idea what Dr Peacock was burbling on about, before he passed away. Sorry. One thing he got right though. To this day, the EPO draws a distinction between the acts of i) searching and ii) examining. That’s all down to the pre-1978 NL-IIB situation, of course. Mind you, with BEST, these days you would never guess it.

  15. Max, re EPO claim broadening after filing, in the words of my U.S. manager of more than two thousand EPO filings over the years [not my words] which I have saved: “I know Dr. Pfau [the late expert EPO practitioner in Munich] has said that, but others have told us the exact opposite, and we have had actual experiences in EPO refused claim broadening. By ‘support in the application’ Dr. Pfau apparently means a statement of ‘features’ or ‘objects’ or a ‘summary of the invention’ in the specification corresponding in scope and content to the new broader claim. [NOT just species examples support for an unclaimed genus, or the like.] That is highly unlikely, as one would [in that case] probably have had claims of that breadth to begin with. The EPO explanation is that the EPO searching authority cannot do additional searches for the changed claims.”

  16. agree with me. Everything in the claim language is, in theory, a limitation.I think I would agree with the later posters. I view limitations as anything that, if missing, would lead to non-infringement during litigation, or novelty and non-obviousness during prosecution. So, I would typically say that steps and elements are generally limitations, but limitations may also be of other forms, such as “wherein” clauses, etc. I think they may also be single words and phrases, in the right situation.

    I think that you need to look at them that way, since not all claims are written the same way – elements/steps with maybe “wherein” clauses to further limit the claims. Periodically, you see claims that don’t fall into such a nice format. And, yet, they still have to be interpreted, and the best way I know of to do so, is to look to how they limit the prior art.

  17. Is there any legal significance to this distinction? A claim is defined by its words without regard to whether the words are classified as elements, steps, or limitations. I can’t imagine that someone could or would credibly claim that the “all elements rule” doesn’t apply to steps or limitations.

    In short, I agree with the poster identified as “me.”

  18. Good quote Kevin R. Myself, I find it as artificial to dissect the accused embodiment into separate “elements” as to divide the claim into separate “limitiations”. When there’s synergy, the components lose their separate identity. A worthy claim defines a combination for goodness’ sake, not a mere collocation. Listing is the sort of thing the Germans do, with their ubiquitous “feature analyses” for their parallel track litigation system. I’m surprised that the CAFC hasn’t got away from it yet.

  19. Thank you Bob, again, its refreshing to hear from someone who actually knows what they are talking about.

  20. I found this to be interesting on the element-limitation dichotomy:

    While a claim limitation cannot be totally missing from an accused device, whether or not a limitation is deemed to be vitiated must take into account that when two elements of the accused device perform a single function of the patented invention, or when separate claim limitations are combined into a single element of the accused device, a claim limitation is not necessarily vitiated, and the doctrine of equivalents may still apply if the differences are insubstantial. DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1332, 57 U.S.P.Q.2d (BNA) 1889, 1900 (Fed. Cir. 2001)

  21. Given this case law, I’ll change my stance from above. I’d now say that we probably shouldn’t ever use the term “claim element” at all, to avoid confusion.

    Maybe a more appropriate term for this discussion would be “structural limitation” ?

  22. The distinction between “elements” and “limitations” is a creation of the Federal Circuit. While the suggested grammatical analysis is clever, the Federal Circuit did not base its distinction on grammar. Rather, it simply held that the “limitation” refered to the claim and the “element” refers to what is in the accused product. The Federal Circuit stated the distinction was necessary since an “element” in an accused product could consist of several claim “limitations.” Thus, in Corning Glass Works v. Sumitomo Electric U.S.A., 868 F.2d 1251, 9 USPQ2d 1962 (Fed. Cir. 1989), the court stated:
    Sumitomo’s [the accused infringer] analysis illustrates the confusion sometimes encountered because of misunderstanding or misleading uses of the term “element” in discussing claims. “Element” may be used to mean a single limitation, but it has also been used to mean a series of limitations which, taken together, make up a component of the claimed invention. In the All Elements rule, “element” is used in the sense of a limitation of a claim.

    Id. 868 F.2d at 1259, 9 USPQ2d at 1968.

    Accord Lockheed Martin Corp. v. Space Systems/Loral, Inc., 324 F.3d 1308, 1315 n.1, 66 USPQ2d 1282, 1287 n.1 (Fed. Cir. 2003) (“The district court and the parties use the term ‘element’ to refer to subcategories of claim language. However, ‘[i]t is preferable to use the term ‘limitation’ when referring to claim language and the term ‘element’ when referring to the accused device.’ Festo, 234 F.3d at 564 n.1, 56 USPQ2d at 1868 n.1.); Dawn Equip. Co. v. Kentucky Farms Inc., 140 F.3d 1009, 1014 n.1, 46 USPQ2d 1109 (Fed. Cir. 1998) (“The statute refers to a claim ‘element,’ but this court has moved towards the custom of referring to claim ‘limitations,’ reserving the word ‘elements’ for describing the parts of the accused device, though the court on occasion continues to use the words interchangeably.”)

    The flaw with the suggested analysis is that a single claim clause, e.g., something begining with “wherein…” as used in the example in the post, could be one clause with multiple limitations. E.g. Ericsson, Inc. v. Harris Corp., 352 F.3d 1369, 1375 (Fed. Cir. 2003) (in a PHE analysis under Festo, finding single claim clause had several limitations within the clause and while one limitation was amended, the limitation for which equivalents was sought had not been amended so no PHE); Aclara Biosciences v. Caliper Technologies Corporation, 125 F. Supp. 2d 391, 402-03 (N.D. Cal. 2000)(same)

  23. I agree with me. Everything in the claim language is, in theory, a limitation.

    About the other two:

    “Element” is too broad a word for this discussion, I’d say. A claim element, to me, is an abstract concept indicating a clearly distinct portion of a claim. I don’t think the term should be used to refer to a particular type of limitation, as the commenter appears to intend.

    And I would say that steps are not verbs. A step often begins with a verb, but I can’t immediately think of a situation where a one word step is valid. Also, verbs are also often used in functional claiming, reciting structural limitations and not steps.

  24. No difference between an element and a limitation. You must meet the element/limitation to infringe irrespective of what you call it.

  25. A relevant quote from a Fed. Cir. footnote:
    “[T]his court has moved towards the custom of referring to claim ‘limitations,’ reserving the word ‘elements’ for describing the parts of the accused device, though the court on occasion continues to use the words interchangeably.” Dawn Equip. Co. v. Ky. Farms Inc., 140 F.3d 1009, 1015 n.1 (Fed. Cir. 1998).

  26. Well, a limitation can be found in anything in a claim – a limitation to an “engine” is a limitation to an machine of a particular type even if it is a noun.

    As for the first two, I have to think on that…but no matter what you call any of them – they can all limit the metes and bounds of the claim and can be, and often are, limitations.

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