Ron Slusky: Five Prescriptions for Broader Claims

Ron Slusky is back with more insight from his 2007 book Invention Analysis and Claiming: A Patent Lawyer’s Guide (ABA). This fall, Slusky will be hosting a series of two-day claim drafting seminars. See www.sluskyseminars.com. The following are five of Slusky’s “Prescriptions for Drafting Broader Claims.”

1. Define, Don’t Explain

Patent attorneys love to explain things. This is a valuable trait when writing the specification. But it can get in the way when drafting claims. It is hard to resist the urge to liven up a claim’s dull litany of elements by explaining that the claimed subject matter is an automobile floor mat; or an optical system with improved output efficiency…That urge to explain must be resisted nonetheless.

A claim’s function is to define the boundaries of the parcel of intellectual property being sought—not to explain or to help readers to understand something. An explanatory-type limitation may seem harmless enough, but every extra word in a claim is a potential loophole for infringers to exploit.

Limitations should be suspected of explaining rather than defining if they recite:

  • The advantage of the invention or what it is “good for;”
  • How the recited combination can integrate with the external environment;
  • Motivations (e.g., for doing a particular step or including a particular element);
  • How to carry out a recited function where the recitation of the function itself imbues the claim with patentability;
  • How inputs get generated;
  • The source of something that the claimed method or apparatus works on.

A limitation that meets any of these criteria should be scrutinized as a candidate for deletion. If the claim distinguishes over the prior art without the limitation, the claim is probably well rid of it.

2. Scrutinize Every Modifier

Beware the insidious modifier, particularly adjectives. Most of them are unnecessary in a broad claim, serving to explain rather than to define. Each modifier in a claim should be scrutinized to see if the claim will support patentability without it.

Here are some examples: automobile floor mat; very-large-scale integration; high-resolution filter; decoding a transmitted video signal by…; rapidly removable label; block copolymer. (As to the latter, see Phillips Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d 866 (Fed. Cir. 1998) (affirmed summary judgment of non-infringement).)

Another potential problem with certain modifiers is their potential for being declared indefinite. The terms “very-large-scale,” “high-resolution” and “rapidly” in the above examples are problematic in this sense.

3. Assume That Input Signals and Data/Parameter Values Are Already In Hand—Don’t Generate Them in the Claim

A method or apparatus often operates on input signals and/or may use data values, parameters or counts of things. When claiming the broad invention, it is usually desirable to treat such things as already existing rather than explicitly generating them within the claim.

For example, suppose the invention is the idea of adjusting the output rate of a widget-manufacturing process once the number of widgets produced within the previous hour reaches a certain limit. The invention could be defined in two steps—a counting step and an adjusting step:

1. A method for use in a machine that manufactures widgets, the method comprising

counting the number of widgets manufactured in an hour’s time, and

adjusting the output rate of said machine when the count reaches a predefined limit.

However, it is irrelevant to the inventive concept how the number of widgets manufactured in an hour is determined. Indeed, the potential infringer might use the cumulative weight of an hour’s output to determine how many widgets were produced and, in so doing, avoid a literal infringement of this claim

By assuming that the widget count is already known—handed to us by a genie, perhaps—and available to the adjusting step, the entire counting step can be eliminated:

2. A method for use in a machine that manufactures widgets, the method comprising

adjusting the output rate of said machine when the number of widgets manufactured within an hour’s time reaches a predefined limit.

4. Write the Claim Out of Your Head, Not Off the Drawing

Looking at the drawings is useful when intermediate- or narrow-scope claims are being drafted since such claims intentionally incorporate certain embodiment details.

However, the drawings may interfere with the conceptual thinking that is so desirable when reaching for breadth. It is all too easy for the drawings to draw our attention away from the abstract, exposing us to the siren song of the embodiment and its tangible details—details that can unduly narrow a claim.

It is much harder to be attracted to embodiment details when they are not staring up at us from the drawing. Thus the broadest claims should be written directly out of the claim drafter’s head. The mind’s eye should be able to so clearly see those few functionalities and interrelationships that define the broad invention as to make it unnecessary to look at the drawings.

If we find ourselves unable to write the claim with the drawings put away, it may be time to stop and re-engage the invention conceptually, returning to the claim drafting only when a crystal-clear answer to the question What is the Invention? is fully in hand.

5. Strive for Simplicity

Simplicity is a key to clarity. Convoluted interrelationships or claim language that is difficult to read through can signal that the invention has not been captured at its essence. Often buried in such a claim are ambiguities or unduly limiting recitations that aren’t necessary to the invention.

The architectural philosophy of form follows function applies here. A claim whose form is clean and simple is more likely to serve the function of defining the invention cleanly and simply (read “broadly”). The hallmark of a well written claim is one that an inventor can understand without a lot of attorney explanation.

Once it becomes apparent that a claim-in-progress is evolving into an awkward mess, it is best to stop and rethink the approach. Often the culprit is that the limitations are introduced in a less-than-optimal order. Indeed, limitations that had seemed so necessary may fall away completely once the claim elements are rearranged. Or certain limitations in the preamble might be better put into the body of the claim or vice versa.

There is little point in fighting a recalcitrant claim. Better to look for some underlying assumption about the claim structure that is getting in the way and to start over. It can be hard to put on the brakes and abandon a claim in which a lot of time has already been invested. It’s good, then, to stay alert to the possibility that things are beginning to deteriorate and to regroup sooner rather than later.

Copyright © 2007-2008 American Bar Association. All rights reserved. Adapted with permission.

 

86 thoughts on “Ron Slusky: Five Prescriptions for Broader Claims

  1. 86

    BigGuy,

    My proposed claim might indeed be better if it were narrowed to avoid your hypothetical prior art. There is probably no good reason not to limit the claim to automatic or electronic control. Another likely improvement would be specifying the parameter that is being manipulated, or to at least clarifying that a dynamic setting is the control output as opposed to something so broad as to unintentionally encompass the time the machine will be left running.

    The rate cannot be directly manipulated. If it could be, you would just calibrate the machine and then set the rate to what you wanted. For the invention to make sense, you have to understand it in terms of adjusting something that affects the rate but does not give consistent results, e.g., a temperature setting. I have the advantage of having taken an undergraduate course in process control. The fact pattern is routine in process control and implicates ubiquitous process control issues. Routine control methods would avoid several limitations in the original claims while still using the inventive part.

    I simply do not buy the concept that you cannot identify one fact pattern to exemplify the utility of any given claim drafting principle without becoming hopelessly bogged down in technology. Technology is always an issue: you cannot draft good claims unless you develop an appreciation for the technology. That is one of the points that bear emphasis if you are going to presume to teach claim drafting. On the bright side, you can use one fact pattern to make many, many points.

    I object to the idea of teaching with examples that are not as proficient as your powers can make them. Legitimate examples are required to critically review a technique and see potential pitfalls as well as potential benefits. Otherwise, you can laud the benefits of whatever you propose and dispense with any objections by writing them off as nitpicking or getting bogged down in the technology.

    My previous post was meant to demonstrate that complete fact patterns and exemplary claims can be presented in a short space.

  2. 85

    The 5 pointers seem like decent rules of thumb. One thing to consider though is that the PTO – wrong though it is – frowns on “short” claims. I can’t tell you how many times I have had an Examiner state outright “the claim is too long … my SPE won’t allow it” or something to that effect. So while it is good to have broad claims (where desirable), keep in mind that the shorter they are, they more reluctant the PTO will be. Of course, there are tricks that can be used to make a claim seem longer (or actually be longer) without actually narrowing the claim…

  3. 84

    Go, Ron.

    This an/the/antecedent issue is one of the more frustrating ones I deal with. I just got one of these goof-ball 112 “the” rejections on final where the examiner passed over it on the first OA and phone interview.

    Examiners can be such boneheads on this that Deputy Commissioner John Love sent them all a Memo on Sept 2 telling them to get their collective an/the/antecedent act together. Ron’s comments reflect Love’s very nicely.

    You can get Love’s memo over at PatentHawk

    link to patenthawk.com

  4. 83

    Tyrone,

    It’s true that patent examiners often give a “lack of antecedent” rejection for claims like this but if you traverse and explain whey the claim is not indefinite, most examiners get the point and remove the rejection.

  5. 82

    I do agree with you entirely Mr Slusky, in actual fact, but go tell it to the examiners. If logic ruled the USPTO this board would be a much duller place.

  6. 81

    XXX was more of a placeholder for *any* decimation process. But you are correct that XXX would not necessarily read on YYY. The main point was to bring the feature inside the main clause as if it had already been done, or eliminate it all together if there is sufficient novelty/non-obviousness in the other features. The excellent point that Mr. Slusky raises is that specific data generation or auxiliary steps should be eliminated since they can easily be replaced by more modern methods once the claim is ready to be asserted.

    “One time I was with Slusky in the back of a pickup truck, along with a live deer. Slusky goes up to the deer and says, ‘I’m Ron Slusky! SAY IT!’ Then he manipulates the deer’s lips in such a way as to make it say, ‘Ronslusky’ … It wasn’t exactly like it, but it was pretty good for a deer!'”

  7. 79

    There are no antecedent problems with this claim. Those of you who are stuck on the idea that every instance of the word “the” necessarily requires some explicit antecedent are applying blind rules without engaging your brain.

    A machine that manufactures something inherently has an output rate and inherently some number of widgets are manufactured in an hour’s time. Those of you who are hung up about the the’s in this claim no doubt would also say that a claim that makes reference to “the gate of said field-effect transistor” would have had to previously recite “a field-effect transistor having a gate.” Wrong. A field-effect transistor inherently has a gate and so it is perfactly proper to refer to the gate of the FET without having to explicitly call for it first.

    What is the actual basis of the requirement for proper antecedent basis, anyway? It is the “definiteness” requirement of section 112. People have to be able to read a claim and determine with reasonable certainly what is, and what is not, encompassed by the claim.
    Thus it is certainly improper for a claim to make reference to “the connecting rod” when no connecting rod was previously recited. THAT makes the claim indefinite because it’s not clear in that case whether the claimed subject matter includes a connecting rod or not.

    But that ain’t the case here.

    I suppose you would tell me that if my claim said “an output rate of said machine” and “a number of widgets manufactured in an hour’s time”, then people would know what’s encompassed by the claim but that the way I wrote the claim they would not. That’s just silly.

    The height of silly in this regard is a claim I once saw for a funnel-like device for a woman to use when urinating standing up, e.g., in the woods. According to the claim, the device had a rim adapted to engage “a perineum of a woman.” Do you know any women who don’t have a perineum or any women who have more than one? To talk about “a perineum” of a woman is just plain silly.

    Ron Slusky

  8. 78

    Please – there is absolutely no point in debating the substantive merits of these claims. They are a just pedagogic device, see, to demonstrate that the “counting” integer in claim 1 might be an unnecessary limitation.

    Sheesh.

    (the obvious antecedency issues are unfortunate though…)

    You do Ron Ron Ron
    You do Ron Ron

  9. 77

    “1. A method of making widgets, comprising:
    operating a widget-making machine to produce widgets;
    determining an approximate average rate at which the machine produces widgets, the average being over a period from about half an hour to about three hours; and
    controlling the machine in a feedback control loop having a widget production objective, the feedback control loop using the average rate for feedback.”

    Wait a minute. I bought a “conventional” widget-making machine three years ago and started it up. I read the product specification to determine the “approximate average rate.” It just so happens that this rate is pretty steady, so it applies equally well to a half-hour interval and a three-hour interval. I know that I need 10,000 widgets, so I calculate the time the machine should run on my pocket caclulator. Then I tell the operator when to turn the machine off. If he tells me that the machine was down for 1.5 hours, I redo the calculation and give him a new quitting time.

    Didn’t I just anticipate your claim? Your claim not only fails to address the original invention (go back and read the original post), it’s also so general that it’s almost certainly not novel.

    I think I’m going to hire Mr. Slusky as my attorney, but thanks.

  10. 76

    Here’s how I might do it:

    1. A method of making widgets, comprising:
    operating a widget-making machine to produce widgets;
    determining an approximate average rate at which the machine produces widgets, the average being over a period from about half an hour to about three hours; and
    controlling the machine in a feedback control loop having a widget production objective, the feedback control loop using the average rate for feedback.

    2. A method of making widgets, comprising:
    operating a widget-making machine to produce widgets; and
    controlling the machine in a feedback control loop having a widget production objective, the feedback control loop using for feedback an approximate average rate at which the machine produces widgets, the average being over a period from about half an hour to about three hours.

    “Widget production objective” is defined in the specification.

    My premise is that the inventor has worked extensively with widget making machines, that he has found conventional control strategies unstatisfactory, with either poor rate control or overly frequent rate adjustments to which the machine reacts badly. Consulation with control experts failed to provide a solution. The inventor postulated, experimented, and found good results using control based on averaged production rates, with the optimum being at one hour.

  11. 75

    Ron

    Some of the comments here suggest that you don’t know what you’re talking about, but rest assured

    You do Ron Ron Ron
    Yes you do Ron Ron

    (with apologies to the thread and the Beach Boys…)

  12. 74

    “Despite the antecedent basis concerns expressed above, I agree that a better way to write such a claim feature is to incorporate the feature as if already performed such as ‘…processing decimated data, the data decimated according to a XXX decimation process’, or something like that.”

    Which raises a couple of questions, ASE, that come up all the time in my practice. First, in your example, is the phrase “the data decimated according to a XXX decimation process” limiting, so that the claim doesn’t read on an identical method practiced on data that was decimated according to YYY decimation process? Second, is that phrase sufficient to distinguish over a reference that discloses the identical method, but practiced on data that was decimated according to YYY process?

    I think the answers are (1) yes and (2) yes unless it is obvious to substitute the XXX data for the YYY data. However, I can anticipate an argument that the type of data doesn’t actually define the method steps. Your thoughts?

  13. 73

    “Ron’s nitpicker post made the point that his example would not be defeated unless the examiner found PA … This rationale is just plain nonsense after KSR.”

    Ron started with a first implied premise that an examiner would have to find prior art to invalidate the broadened example claim. He added a second premise that, if the examiner found such prior art, it would also invalidate the narrower original example claim. Thus leading to his point/conclusion that the claim could be broadened because the removed limitation is irrelevant to the patentability of his hypothetical “inventive concept.”

    Of course, his inventive concept was nonsense. But pointing out that fact is as silly as quibbling with an obvious pencil and eraser claim. It unnecessarily diluted your comment, which correctly noted that the examples can and should be clearer.

  14. 72

    If the data has been decimated already then what further processing could it need? Being sent to its grave?

  15. 71

    Dear SoAnonymousItHurts:

    If the Examiner’s Amendment results in commercially valuable patent protection for my client I would likely agree to it.

    But oftentimes I like to just churn cases to run up the bill on my clients and to drive examiners and Lemley nuts :-)

  16. 70

    > The examiner issues a Final Rejection and you file a Response After Final

    > Let’s assume the examiner is persuaded. What are the advantages for the examiner to issue a NOA at that point?

    The fact that it is the proper thing to do.

    Do you refuse to agree to an Examiner’s Amendment that would get an Allowance on first action so you can bill for writing a second response? No? Why not?

  17. 69

    Mr. Slusky writes “A claim I once litigated called for an analog-to-digital converter to convert analog signals received by a cellular telephone base station into digital form for further processing. The problem was that by the time the patent was in litigation—ten years after it had been filed—no one was connecting analog lines to base stations anymore; most (or all) telephone lines connected to base stations delivered signals to the base station already in digital form.

    It was irrelevant to the “real” invention whether the digital signals were received digitally or converted locally in the base station and so A/D conversion added nothing to the validity of the claim. It just pulled in an extra element that created real problems for us in making out the case for infringement”

    Actually, this is a very good point that I missed. I retract my earlier comment. Despite the antecedent basis concerns expressed above, I agree that a better way to write such a claim feature is to incorporate the feature as if already performed such as “…processing decimated data, the data decimated according to a XXX decimation process”, or something like that.

  18. 68

    Lowly (I mean e6k),

    The stories and information posted above are artistic works of fiction and falsehood. Only a fool would take anything posted above as fact.

    Except the parts about 112. Wait, what parts about 112? 112 what?

  19. 67

    Mysogynist (i mean E6K),

    You are so transparent. Get off your 112 kick as no court has ever read it like you do.

  20. 66

    “What are the advantages for the examiner to issue a NOA at that point?”

    Not much?

    “It seems really dangerous to me to assume that I know the invention so well that I can claim it without ever checking back with the inventors to make sure my understanding is correct.”

    Yes, but you’re a woman. Men have “balls”, and furthermore, real men attorneys have such big ones that they routinely claim subject matter that the inventor does not regard as their invention with no problem, no questions asked. In fact, it has been asserted on these boards that over 50% of applications contain material that wasn’t even invented by the “inventor” and was “invented” by the attorney. Talk about balls. It seems likely that this “greater than 50%” number correlates strongly with the percentage of male counsels.

    D, could you put together a graph of claim breadth by gender of counsel?

  21. 65

    SF: “The point of the example is infringement, not obviousness.”

    Ron: “Anyone who teaches in this field knows that you have to keep the examples simple so that the student/reader doesn’t get hung up in technology.”

    Yuz guys are both talking sideways. You sound like Palin explaining all her foreign policy experience.

    Ron’s nitpicker post made the point that his example would not be defeated unless the examiner found PA …

    “that would show that you can weigh instead of count. But such prior art would have to be combined with prior art that discloses (or renders obvious) the postulated inventive concept—that of adjusting the rate of manufacturing widgets (not any old thing, but widgets) once some number of widgets have been manufactured in an hour (not just any old time frame, but an hour).”

    This rationale is just plain nonsense after KSR. The examiner no longer needs to find art for such obvious steps. That, it seems to me, was the major take-home message the USSCt left us.

    To now turn the argument to “you need a simple example” is a bit disingenuous, since that point has not been challenged and the issue is now not the example, but Ron’s attempt to defend it.

    My point about the didactics was: even if it’s a simple example, it shouldn’t be a duumb one or facially flawed. 70% of your students will be OK and see the subtle point that the example is not supposed to be right, but the remaining 50% will presume the example is a paragon of proper technique because it comes from the teacher. OK, I wasn’t too gud at math. . .the remaining 40%.

    As to SF’s pencil/eraser question, I agree. The issue is not whether the example claim would be patentable in view of art. The issue is whether the example claim is artfully constructed. And, with all due respect, Ron’s wasn’t, which is why a number of us called him on it.

  22. 64

    Off topic

    The examiner issues a Final Rejection and you file a Response After Final

    Let’s assume the examiner is persuaded. What are the advantages for the examiner to issue a NOA at that point?

    It may be that you will give up and he gets his count and without any quality review problems.

    If you file an Appeal Brief, you have likely added additional FWE, and he can issue his NOA then.

    If you file an RCE, he gets another count and can issue the NOA then?

  23. 63

    “But I most likely *start* with the drawings.”

    It’s very easy and efficient to insert reference numbers into the drawings and dictate the detailed description from the drawings.

    Then you get into the feedback loop.

    I also find it easier to dictate the claims after dictating the detailed description.

  24. 62

    “As a side note to the lay-person as claim interpreter, I think it was in that trial PTO CLE program on KSR that the lady PTO suit said something to the effect that often the inventor will not understand the claims.”

    I disagree with that. I walk through the claims with the inventors and often make changes based on what they say. It seems really dangerous to me to assume that I know the invention so well that I can claim it without ever checking back with the inventors to make sure my understanding is correct.

  25. 61

    “Me too. I always write the spec before the claims.”

    I find it to be a feedback loop. Working on the spec changes the drawings, which changes the claims, which changes the spec, etc.

    But I most likely *start* with the drawings. Probably because I think visually more than in words.

  26. 60

    Thanks Ron. Helps to show how to draft for the USA and to show that drafting for USA is different from drafting for the rest of the world. You write “advantageous doesn’t make it non-obvious”. Can you reconcile that with the EPO’s problem and solution approach. Still a bit of a conundrum, how any patent attorney can write one spec that will be optimal for both the USA and the ROW.

  27. 59

    MaxDrei wrote:

    “You urge including dependent claims. Do you also advocate including in the specification what performance enhancement is won, with each successive dependent claim in the cascade?”

    A wordy answer follows:

    As my book points out, any given dependent claim should have some articulatable reason for being. An important such reason is to provide a fallback position on the patentability front while giving up as little of the likely commercial marketplace that would be covered by that dependent claim if its parent were to be found invalid based on prior art.

    If an examiner rejects the dependent claim by finding the feature claimed therein in a secondary reference and making a section 103 rejection, you want to be able to argue why the feature adds something non-obvious to the subject matter of its parent. Of course, if all the spec does is explain the benefit of that particular embodiment detail (which is what I take you mean by “performance enhancement”), that may not be enough. The fact that something is advantageous doesn’t make it non-obvious. So in addition you would want to try indicate in whatever way is factual not only how the dependent claim’s feature enhances the performance of the subject matter defined in the parent claim but also why nobody would have thunk to use that particular feature. You’d like to be able to argue why the dependent claim’s recited feature is not a mere matter of design choice (and therefore obvious). The presence of such a discussion in the specification ab initio gives credibility to the argument later as being something not “made up” after the fact. Hope this helps. Ron

  28. 58

    I agree with the nitpicker post above. I have read portions of Mr. Slusky’s book and think its a great work as far as attempting to quantify and educate on the topic of how one should conceive (think about as opposed to the first step of invention) of inventions for purposes of drafting claims. To me it is less concerned with definiteness and more with a way of thinking about claims and inventions. Landis and Deller’s Walker are better for addressing some of the nits raised here.

    I also agree with drafting claims first, because claim drafting is the exercize that gets one to think about what the invention is and isn’t, whereas the specification is almost solely concerned with what it is rather than what it could be. One can advocate drafting the prognosticator’s specification, but that has its own dire hazards, including encompassing prior art.

    Kudos to Mr. Slusky for this work.

  29. 57

    “The point of the example is infringement, not obviousness….”

    SF: Thank you. Anyone who teaches in this field knows that you have to keep the examples simple so that the student/reader doesn’t get hung up in technology.

    I have little doubt that both claims are completely invalid in real life, but as SF points out, that’s not the point.

    Irv Kayton once postulated the “invention” of the discovery that rubbing ketchup on a bald held can regrow hair. The context was the ability to patent, through a method claim, a new use for an old substance. The proof of the genius of using that example is that it has stuck with me for 20 years or more. And guess what? To SF’s point about the pencil and the eraser, nobody interrupted Irv’s lecture to argue about enablement.

    Patent attorneys use wacky examples all the time because they are memorable.

  30. 56

    Babble Boy, wrote “But you must be one ‘ell of a lawyer or border-line delusional if you seriously think you can get a claim on the basis of the limitation that a rate of manufacture is measured by the hour, specifically.”

    The point of the example is infringement, not obviousness. His example assumes that a particular feature is not necessary for patentability and then shows how a claim could be drafted by removing the feature. It doesn’t matter that the initial claim (or the revised claim) is patentable because the example assumes that the removal of the feature still results in a patentable claim. I recall patent bar review course that talked about claiming a pencil and an eraser. In that case, would you interrupt the lecture to point out that pencils with erasers aren’t patentable?

  31. 54

    “is the invention determined by the inventor or by the prior art?”

    THAT’S A GOOD QUESTION, GLAD YOU ASKED! What’s the answer big time lawyers?

    “Before the applicant files an application claiming what he regards as his invention, is he allowed to obtain legal advice about the scope of the invention?”

    We already discussed this.

    “But such prior art would have to be combined with prior art that discloses (or renders obvious) the postulated inventive concept—that of adjusting the rate of manufacturing widgets (not any old thing, but widgets) once some number of widgets have been manufactured in an hour (not just any old time frame, but an hour).”

    HAHAHHAHAHAHAHA RON, come on man, you’re killing me here. You know I’ll 103 you with a simple weighing of widgets manufactured to determine the number of widgets. That’s what my 103 will likely come from, I’m not going to worry about the hour, and if I really felt like being an a ss I probably wouldn’t even worry about it being widgets, just an article being manufactured being weighed to find out how many their are.

    Like I said, this claim should have started out as

    2. A method comprising: adjusting manufacturing.

    OR

    2. Method: manufacturing.

    OR

    2 M: m.

    if you want to really go for the kill:

    2

    And if you’re feeling on top of the world:

  32. 53

    Ron Sulsky said:

    “the postulated inventive concept—that of adjusting the rate of manufacturing widgets (not any old thing, but widgets) once some number of widgets have been manufactured in an hour (not just any old time frame, but an hour).”

    It’s really good of you to drop into the shark-tank for a swim, Ron. I for one am going to buy your book, if it’s not too expensive and I can write it off.

    But you must be one ‘ell of a lawyer or border-line delusional if you seriously think you can get a claim on the basis of the limitation that a rate of manufacture is measured by the hour, specifically. Are you going to argue that a PHOSITA could not independently conceive of extrapolating from units per sec., min. or week to units/hour, or are you going to argue that KSR really doesn’t matter? Your intended PHOSITA would have to be working in a field dominated by cretins. Politics, in other words.

    I also question your pedagogic technique of using an example that amply and clearly illustrates one point very well while at the same time contradicting 3 or 4 other points you are trying to make, which was the point I was making in re-writing the widget claim. I have found that students tend to internalize the examples and forget or ignore the surrounding explanation.

  33. 51

    “While you should have claims in mind when you draft the spec, the spec should always be broader than your claims.”

    When I get a disclosure, I read it in detail, brainstorm to come up with a bunch of questions to ask the inventor, interview the inventor, then write the claims. From the results of the interview with the inventor, I have many more features and details than I will put into the claims. Those features and details make their way into the spec.

  34. 50

    Max,

    Some of it is nitpicking, but some is legitimate.

    The stated problem is that “counting” is too narrow. That can be solved by replacing counting with “determining.” You need to take the straw man problem of “counting” away to have a legitimate discussion of whether eliminating the data acquisition step is a good idea. The discussion might touch on the following:

    1) By using the word “when”, does Claim 2 cover situations in which the rate adjustment is made inherently at the desired time without any reference to the inventor’s criteria? Is that a desired result or does it make the claim overly broad?

    2) Does the foregoing analysis give a different result after you broaden the claim to avoid specifying a one hour interval and to replace “reaches a predefined limit” with “meets or exceeds a predefined limit”?

    3) Is a potential distinction between “determining” and “estimating” a concern? Does the “assume it exists” approach provide a better way of addressing such a concern?

    4) If you change “when” to “based on” have you really eliminated the data acquisition step or simply embedded it within another step?

    5) Is it better to make the antecedent basis explicit?

    As for the rest, I think it would make for a better presentation if you could find examples that were not only clear but also plausible and consistent with all you precepts.

    -Zalk

  35. 49

    “And does anybody actually write the spec before the claims? That’s madness.

    Call me mad.”

    Me too. I always write the spec before the claims. Applications written the other way around usually have specs that support only the originally filed claim set, and do not provide support for any amended claims (such as those you might want to write to get around prior art). While you should have claims in mind when you draft the spec, the spec should always be broader than your claims.

  36. 48

    Dear Mr Slusky, I have your book and am reading it and this thread with interest. You urge including dependent claims. Do you also advocate including in the specification what performance enhancement is won, with each successive dependent claim in the cascade? I ask only because it might make a decisive difference, outside the USA. But maybe you would say that your book is exclusively for success in the USA and not for anywhere else in the world?

  37. 46

    “But such prior art would have to be combined with prior art that discloses (or renders obvious) the postulated inventive concept—that of adjusting the rate of manufacturing widgets (not any old thing, but widgets) once some number of widgets have been manufactured in an hour (not just any old time frame, but an hour).”

    Ron, do you really think that, after KSR, the examiner needs an explicit, or implicit, teaching of adjusting the rate of manufacturing widgets in particular, or that the examiner needs an explicit, or implicit, teaching of an hour in particular? (Not being snarky, genuinely interested in your answer.)

    “Each claim is not a separate invention.”

    Uhm, yes it is.

    “And does anybody actually write the spec before the claims? That’s madness.”

    Call me mad.

  38. 45

    You know what he says is patently obvious (pun intended). The most difficult problem that faces patent prosecutors are the inventors. If one works with a mom and pop inventor there is no problem. However, when these guys come with degrees from Stanford and a flush of wealth from a recent IPO the SOBs think they can do anything, including your job. This poses substantial risk of not obtaining the claim coverage and including potentiall prejudical information in the application. Many of the inventors believe its a doctoral thesis. Moreover, they simply cannot separate themselves from the document. Then they complain at how we and the courts screw everything up and the patent system is flawed and how there should be no patent system the world should recognize their intelligence and money will fall from the sky. I know I just had to fire a client that had this type of inventors.

  39. 44

    For those concerned about whether the claims set forth what the applicant regards as his invention:
    Before the applicant files an application claiming what he regards as his invention, is he allowed to obtain legal advice about the scope of the invention?

  40. 43

    “Three other points: each claim is an “invention” and write the claims first before the spec and never use “said” since the jury is composed of lay people.”

    Each claim is not a separate invention. And does anybody actually write the spec before the claims? That’s madness. Claims first, then drawings that show everything in your claims, then spec.

  41. 42

    Nitpickers of the world unite!!

    Whether or not this claim has antecedent problems or whether it is too narrow or is a single-step method (which is not improper, that ultimate legal source—the MPEP— notwithstanding) isn’t the point, as at least some of today’s bloggers have recognized.

    I can find significant flaws in some of the other claims that have been suggested, but I won’t because, again, that was not the point of my posting.

    The IMPORTANT point is that one always has to think ahead to the anticipated enforcement scenario—something that all too many attorneys seem not to do. What happens when the competitor weighs the widgets rather than counts them and the patent owner comes back to the attorney who wrote the application with only claim 1 and asks “can we sue?”

    The heart of the postulated inventive realization is the desirability of adjusting the rate of widget manufacture when some number of widgets was manufactured in an hour. If that notion is known in or obvious from the prior art, then so be it. And of course it is the rare independent claim that doesn’t need to be backstopped with meaningful dependent claims to anticipate the possibility of prior art coming to the fore that one wasn’t aware of, as one of the writers has suggested.

    But the important point remains uncontroverted. Of course there will be times, e.g., the wavelet example, where generating some input is the heart of the invention. But as my article points out, it is USUALLY desirable to treat input signals, parameters, etc. as already given. Otherwise you can win the battle (get a claim) and lose the war (the infringer exploits a loophole and becomes a non-infringer.) Drafting a broad claim in the hopes of a windfall, as one writer suggested, isn’t what I’m teaching.

    What I’m teaching is to avoid a problem that appears in issued claims with great regularity, to the clients’ detriment.

    Our USPTO brethern are correct, of course, in suggesting that art could no doubt be found that would show that you can weigh instead of count. But such prior art would have to be combined with prior art that discloses (or renders obvious) the postulated inventive concept—that of adjusting the rate of manufacturing widgets (not any old thing, but widgets) once some number of widgets have been manufactured in an hour (not just any old time frame, but an hour). If such prior art IS found, then BOTH claims are too broad. (The example is admittedly simplistic, but those of you who teach in this field well know the importance of keeping the examples simple so that the pedagogic point can be made without requiring the student to get wrapped up in the intricacies of the technical subject matter.)

    The stage on which the question of patentability will, and should, be played out will be whether it was known or obvious to adjust the rate of manufacturing widgets once some number of widgets have been manufactured in an hour’s time. How one determines that that limit has been reached is irrelevant, which is why including the counting step in the claim is superfluous.

    My book reports the following real-life example illustrating the importance of what my posting says. If you can take in this point and learn something from it, I will have achieved my purpose.

    “A claim I once litigated called for an analog-to-digital converter to convert analog signals received by a cellular telephone base station into digital form for further processing. The problem was that by the time the patent was in litigation—ten years after it had been filed—no one was connecting analog lines to base stations anymore; most (or all) telephone lines connected to base stations delivered signals to the base station already in digital form.

    It was irrelevant to the “real” invention whether the digital signals were received digitally or converted locally in the base station and so A/D conversion added nothing to the validity of the claim. It just pulled in an extra element that created real problems for us in making out the case for infringement”

    Ron Slusky

  42. 41

    Agreed, Eurodisnae. My writings about “invention” are coloured by the EPO “problem and solution approach” to the analysis of obviousness, which (as I am sure(?) you will agree) realistically starts from what the inventor writes in the patent application, and holds that inventor to that account, resisting any attempt by that inventor to win a 20 year monopoly on the basis of an “invention” conceived after the application date. Having said that, we can divide at the EPO, and put forward as claim 1 of the divisional a technical feature combination completely absent from the claims of the EPO parent. In that sense, the invention I have, for making a monopoly out of, is the invention in the parent spec, rather than the claims. BTW, I’m not convinced there is any more much of a substantive difference between EPO and London. Not since Lord Hoffmann started his “settled EPO caselaw” line of authority. Your thoughts?

  43. 40

    Max, I have to take you up on

    “the invention is the difference between the content of the patent application and the content of the prior art”.

    First, did you mean to say “the difference between the content of the CLAIM and the content of the prior art”?

    Secondly, at the moment, there is a divide between EP and GB as to what is meant by “invention”, which is pointed up by the on-going debate re excluded matter – things not regarded as patentable inventions (computer programs, business methods etc.).

    EP practice, to my mind, treats the whole subject matter of the claim as the “invention”.

    The difference between the content of the claim and the content of the prior art is (or is closely related to) the “contribution”, wherein lies the inventive step.

    EP practice has explicitly rejected the “contribution-based” approach in determining whether an “invention” is excluded from patentability. If the whole subject matter of the claim is not a computer program (or whatever, “as such”), the invention is not excluded, implying that claim = invention. (However, excluded (non-technical) elements of the claim cannot contribute to inventive step.)

    GB practice explicitly embraces the contribution approach; contribution = invention. If the contribution is excluded (non-technical), it is not a patentable invention and the claim is bad.

    It’s interesting to note that Art. 84 EPC, “Claims”, doesn’t mention “invention” at all: “The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.” Although Rule 43 EPC, which famously, is the entire basis for the whole “technical” shenanigans, does use the word:
    “(1) The claims shall define the matter for which protection is sought in terms of the technical features of the invention.”

    It’s easy to argue either way:

    “I’ve invented a better mousetrap” = the invention is a mousetrap. The patent claim defines the mousetrap/invention in terms of its essential features.

    “I’ve invented an improvement to a known type of mousetrap” = the invention is the improvement/contribution. The patent claim defines the improvement/invention in terms of its essential features.

    On another track, the inventor is the person that devised the invention. S/he knows that s/he has invented something, but I see no reason why s/he should know specifically what it is that s/he has invented in terms of patent law. Having said that, I don’t think that filing a patent application should be the basis a twenty year fishing expedition to see what arbitrary combinations of disclosed features will pass muster against the prior art, which seems to be entirely acceptable in the US. What the inventor thinks they have invented should be the starting point. If it turns out to be old or obvious, then no patent. Sure, allow some wiggle room to amend and distinguish over the prior art, but whatever is ultimately claimed must be fairly based in what you filed, and the protection granted should be in keeping with what you have contributed.

    A scintilla of invention might be enough to get a patent, but the patent should only provide a similar scintilla of protection.

  44. 39

    “Probably wouldn’t be many ‘flashes of genius’ in those answers.”

    You clearly aren’t a young man, Mr. Roethel. The judicially created “flash of genius” requirement was overruled by statute (Section 103) in 1952. If you want to harass an inventor, go for it. But “how he came up with each difference” is statutorily irrelevant.

  45. 38

    Dear BSN, a pleasure to converse with a rational mind. In my experience (EPO Examiners joining my firm) you are dead right about what skills Examiners have, and don’t yet have. But I must dispute your attribution of “arbitrary” to the EPO problem. It is in no way arbitrary. It emerges, inevitably, as the “delta” that is the “gap” between D1 and the claim under examination. D1 is the most “realistic” prior art starting point, or the “most promising springboard” for the PHOSITA who (under the EPO “Problem and Solution Approach”) is deemed to have a “specific technical purpose”. That “purpose” the inventor herself has “set” by how she disclosed her (subjective) contribution to the art, in the application as filed. In the CAFC, the watchword is “Be Careful What You Ask For”. Also in Europe, but in spades. You might just as well dismiss as “arbitrary” the selection of a single prior art document as a starting point for arguing obviousness. But, you don’t, do you? The whole point of all this is to keep the analysis of obviousness objective, for greater legal certainty, no? You take D1 as the most realistic starting point for the PHOSITA (who is a fantasy creation with a knowledge of the the patent and non-patent literature that no real human can approach). What art the real inventor knew about is not determinative of obviousness.

  46. 37

    I’ve got the book on back order too, but that lecture summary is off putting. I wonder that an expert on claim drafting would use an example with such gross flaws, even if the example does illustrate his concept. Also, the focus on broad claiming sounds a bit novice. When I started, the great worry was unintentionally narrow limitations, but over time I learned it was also important to keep claims from being overbroad and to avoid too much reliance on the ability amend claims after the specification has become fixed.

    The best of the advice seems to fall under the rubric of carefully reviewing claims element-by-element to determine the limitations are no more or less than you want them to be. If the scope of a limitation is unclear, you add clarifying language, define the limitation in the spec, or replace the limitation.

    Even with regard to defining terms in the specification, broader is not always better. It is rarely wise to claim beyond the commercial interests of your client in the vague hope of a windfall.
    Still, I am not canceling my book order. Some fresh ideas on claim drafting could not hurt and I know no better place to look for them.

  47. 36

    Max, I would argue that the European approach also has its problems. As I understand it, Europeans see the subject matter of a claim as a solution to an *arbitrary* objective technical problem. The ‘problem’ (and thus the invention) is different according to which piece of prior art the examiner chooses to believe is closest.
    I agree, though, that validity has to be determined by looking at the description , the claims, and the prior art (as read by a PHOSITA) and that the evidence of the inventot shouldn’t come into it.
    I suggest many posters are missing the point of Slusky’s examples. Start by thinking of the invention in broad, conceptual terms and claim accordingly in your first independent claims. Make sure you have appropriate, graduated, specific dependent claims to overcome most of the arguments detailed above.
    In my experience, by the way, most ex-examiners are very good at drafting claims which will be allowed. They are not so good at drafting claims which achieve the commercial objectives of the client at the same time. The objective of getting the broadest protection to which a client is entitled is not one an examiner is trained to think about.

  48. 35

    A comment on definitions:

    Agree overall, but would add that a definition should not be overly emphatic because you are rarely as prescient as you need to be.

    So rather than saying “my widget is defined as x,y,z.” I think it’s better to say, “in some embodiments my widget can be [whatever the broader category is], for example, x, y, z.”

  49. 34

    Query and Roethel, immediately above, raise questions fascinating for a European reader. I hope they will precipitate further postings. Europeans see the subject matter of a claim in a patent application as a definition of a solution to an objective technical problem. In other words, per Query, the invention is the difference between the content of the patent application and the content of the prior art. After the filing date, the named inventor can’t help the court with better definition or description of the invention, the subject of the as-filed application. Outside the USA, subjective evidence from the named inventor, after the filing date, as to what he or she invented, before the filing date, is not only utterly irrelevant to the objective validity of the claim but also positively harmful to legal certainty and procedural despatch. Why does the US law of patents makes such simple things so complicated? Is it all a consequence of a First to Invent Statute?

  50. 33

    Sorry about the delay in responding, but the Eagles-Boys was a good game.

    I have no case law to support my suggestion. If I were a young man (which I’m not) and I wanted to reek some havoc in patent litigation (which sounds like fun), I would depose the inventor on what he regards as his invention and then I would take him through each claim (since each claim is his invention) to see if he knows what he patented. I would also ask the inventor to state the differences between each claim (each invention) and the prior art to establish facts for a §103 attack.

    After the inventor identified the differences, I’d ask him how he came up with each difference during his inventing. Probably wouldn’t be many “flashes of genius” in those answers.

    I’m not sure that the inventor’s counsel can spend enough time preparing the inventor for that depo.

  51. 31

    I disagree with Mr. Slusky&s assertion that how data is generated should be eliminated. Sometimes it is the heart and soul of the invention. For example a wavelet compression module relies on how the data is decimated for proper performance.

  52. 30

    “The “best” rejection would have conidered not only what was claimed, but also other non-claimed aspects of the invention. If you realized that the claim language could also cover other ways of measuring output (i.e., by weighing) than what was described in the specification (i.e., counting), then your best rejection would have also contained a reference that also showed counting.”

    And what if that reference doesn’t have wherein the widget is a dil do and wherein that dildo contains batteries and wherein that dild o has a vibrating mechanism and wherein the relative pleasure experienced by a user is “lots” as specified by the dependents? What then? Be clear. Tell me that the best rejection is one that contains b s from your spec that you’ll fall back on instead of the limitations in the deps. Go ahead. Tell me all about it. Fact is overclaiming f’ s with the process.

    Your problem is that there are 1000000000000 more limitations to fall back on, how is the examiner supposed to pick out “counting” as being the one you’ll choose to fall back on?

    “I’d’a written this bugger something like:

    2. A method for manufacturing widgets, the method comprising
    adjusting the output rate of a widget-making machine when the rate of manufacturing the widgets reaches a predefined limit.”

    Why stop there? I’d’a written this bugger something like:

    2. A method for manufacturing widgets comprising: adjusting the output rate of a widget-making machine.

    Who cares if it’s anticipated already? Let the office sort all that mess out, that’s what we pay them to do! Besides I’ve never personally seen a reference about adjusting the output rate of a widget-making machine, so I don’t know 100% that it’s not patentable, isn’t it my duty to try to obtain the broadest coverage possible?

    “So, I’ve gone from 34 words to 23, eliminated all the structural limitations of the method claim,”

    Widget?

    “I was challenging Mr. Roethel to justify his comment regarding “what the APPLICANT (not the Applicant’s lawyer) regards as the invention.” Before one EMPHASIZES a legal point, I would hope they had a meaningful case to back it up.”

    We had that case posted on here awhile back. It turned out that the judges felt that applicant’s are too stup id to know what they regard as their invention so there is to be no invalidation of patents based on this. Only if it comes up during prosecution when the claims can be amended can anything be done about it. At least that’s what the decision said.

  53. 29

    curious: I have never seen such a case. I was challenging Mr. Roethel to justify his comment regarding “what the APPLICANT (not the Applicant’s lawyer) regards as the invention.” Before one EMPHASIZES a legal point, I would hope they had a meaningful case to back it up.

  54. 28

    “Perhaps the only benefit … it takes a lot of training to break the many bad habits formed while being an examiner.”

    Speaking from personal experience???

  55. 26

    “However, often even when we do cite other relevant art, the attorney amends the claims to read 102 on the cited (not previously applied) prior art. (It happened just this morning on a case I was looking at.) Now, who wasn’t doing their job??”

    You did your job. Unfortunately, you cannot always rely upon the other person to do his/her job. However, you shouldn’t rely upon the other person not doing his/her job as an excuse not to do yours.

    “You all KNOW what it is you want to claim & cover.”
    It isn’t as easy as you think. We want to cover everything that is both enabled by our specification but not shown in the prior art. Unless, beforehand, I have perfect knowledge as to both the prior art and how you, the examiner, will construe the language of my claims, writing perfect claims is not going to be possible. This is why claim amendments are permitted … nobody (rationale) expects the claims to be perfect the first time around.

    When the applicant does provide claims of varying scope AND the examiner searches not only the art the reads on the claims, as is, but also on readily-envisaged modifications of the claims, then prosecution can proceed quickly and efficiently. You and I can only do our part, as we don’t have control over other attorneys/examiners. However, you won’t see me defending bad practice by attorneys. Likewise, I would hope that you wouldn’t defend examiner bad practices.

    “Jujst like it says in the MPEP. (By the book!)”
    BTW … the MPEP is not the Bible. Also, the MPEP governs your part of the practice, not mine.

  56. 25

    Said, vel non? The trend certainly seems to be away from “said.”

    Write for the jury; I agree hugely w/ Mr. Roethel (with the addition of “judge,” who’s doing the Markman). But “said” can be an important flag in claims that helps the judge/jury. I find using “said” only with explicitly claimed structure makes it much easier to separate 1) structure that is claimed from the rest, and 2) elements from limitations.

    I normally wouldn’t use the word in a methods claim at all except maybe “said method comprises:” because there should be no explicitly claimed structure.

    As a side note to the lay-person as claim interpreter, I think it was in that trial PTO CLE program on KSR that the lady PTO suit said something to the effect that often the inventor will not understand the claims. At $250 – $400 an hour, most clients don’t want a lot of explanation. The jury and the judge have no options. You explain as much to them as you have to. “Said” is the least of your problems.

  57. 23

    “As noted, the suggested simple claim … most likely, fails to particularly point out and distinctly claim what the APPLICANT (not the Applicant’s lawyer) regards as the invention.”

    Have you ever seen a Federal Circuit case in which the court held a claim invalid under 112p2 specifically because the claim recited what the lawyer, not the applicant, regarded as the invention?

  58. 22

    John Roethel:

    How do you know that the claim “most likely, fails to particularly point out and distinctly claim what the APPLICANT (not the Applicant’s lawyer) regards as the invention.”?

    [While I quit using “said” many years ago, there is nothing wrong with using it from a patent standpoint.]

  59. 21

    PDS,

    I have to partially disagree with you.

    Yes, ideally the examiner should search both the claims AND the disclosed invention & apply or cite the additional art directed to disclosed material not claimed. However, often even when we do cite other relevant art, the attorney amends the claims to read 102 on the cited (not previously applied) prior art. (It happened just this morning on a case I was looking at.) Now, who wasn’t doing their job??

    Of course, the applicant/attorney is supposed (should/advised/etc.) to file “claims varying from the broadest to which he or she believes he or she is entitled to the most detailed that he or she is willing to accept.” (MPEP 608.01(m) or 904.03, for example).

    The failure of the applicant/attorney to follow the preceding is at least as much at fault as the examiner not searching for everything that is disclosed. Actually, it is MORE at fault. You all KNOW what it is you want to claim & cover. Examiner’s often have to guess what it is you might want to add. Maybe it is something common or maybe it’s something buried on page 97 of you spec. And maybe you’ll just amend to read on another reference we already cited anyhow.

    This, as much as anything, leads to that gravy-train some of you love to rail against.
    Go ahead & put as broad claims as you want (unlike some here, I am not ranting against you doing that. You can if you want. It’s your clients money.).
    Just make sure to put some claims that actually are directed to the details of the disclosed invention. Jujst like it says in the MPEP. (By the book!)
    Like in the article’s example, try to throw in some dep. claims that say things like “determining the rate” or “counting the number of widgets”. We’ll know what you are really claiming and it will (or should) speed the process. Otherwise, you are begging to go the final/non-entry after-final/RCE route.

    MVS

  60. 20

    Based on the excerpts in this article, I would pass on the two day seminar. As noted, the suggested simple claim has improper “antecedent basis” issues, is a single step method claim and, most likely, fails to particularly point out and distinctly claim what the APPLICANT (not the Applicant’s lawyer) regards as the invention.

    Three other points: each claim is an “invention” and write the claims first before the spec and never use “said” since the jury is composed of lay people.

  61. 19

    Tazistan Jen wrote, “I like this article. I would say, though, that if your drawings all have a lot of elements that aren’t in your top level claims, you need another drawing. Or at least I would add one.”

    I agree with you to the extent that you’re talking about easily abstracted features, such as software, methods, and the like, where adding another few boxes is easily done.

    If, however, you’re talking about a mechanical invention, you have to show some device, not some amorphous abstraction, and thus will have to abstract-out the features in the text, not the drawings. In such cases, looking to the drawings might lead to using the most specific term, which I think was Mr. Slusky’s point.

  62. 18

    “… it takes a lot of training to break the many bad habits formed while being an examiner.”

    Nothing like a little sink or swim training.

    My money’s on sink.

  63. 17

    I like this article. I would say, though, that if your drawings all have a lot of elements that aren’t in your top level claims, you need another drawing. Or at least I would add one.

    Also, you should be able to use “high-resolution filter” or whatever, so long as you defined it in the spec. Maybe it is too narrowing, but I don’t think it is necessarily indefinite.

  64. 16

    “Are you telling me that making the best rejection is the wrong thing to do?”

    You put your ‘best rejection’ in quotes, and I took that to mean you were saying “best” facetiously. The “best” rejection would have conidered not only what was claimed, but also other non-claimed aspects of the invention. If you realized that the claim language could also cover other ways of measuring output (i.e., by weighing) than what was described in the specification (i.e., counting), then your best rejection would have also contained a reference that also showed counting.

    If you are setting up your rejections for keeping the RCE gravy train rolling, then you aren’t putting out the best rejection.

    “I would have to say that would probably be a benefit of having an ex examiner as a drafter.”
    Perhaps the only benefit … it takes a lot of training to break the many bad habits formed while being an examiner.

  65. 15

    It’s amusing that posters raise issues (overclaiming, enablement) when the point of Mr. Slusky’s advice is to avoid unduly narrowing the claims. Obviously, if there are overclaiming and enablement issues that prevent broadening, then the claims aren’t unduly narrowed and broadening isn’t an option. Implicit in Mr. Slusky’s advice, is the ability to broaden and still comply with the patent statute. To that extent, his advice is worth considering.

  66. 14

    The advise giving in this passage may well be (& probably is) good & useful when drafting the initial set of INDEPENDENT claims. However, it would seem to me that if ALL of the claims were drafted this way you would leave yourself open to having (perhaps unintentionally) drafted the claims to read on art that isn’t even really what the disclosed invention is directed to, or even possible 112, 1, scope of enablement issues. Also, if you don’t have some dep. claim that recites the “counting” or other input, when you add some detail to the claim on amendment it is an easy Final. Have it there originally in some deps & it gives the examiner more to work with & maybe a chance to “draw a line” as to what might be allowable. Seems like the best for both sides. That way you can have your Kay & Edith too ;)

    MVS

  67. 13

    Nicely put, Max.

    I’m having problems with Slusky’s exemplary claim:

    2. A method for use in a machine that manufactures widgets, the method comprising adjusting the output rate of said machine when the number of widgets manufactured within an hour’s time reaches a predefined limit.

    “[F}or use IN a machine” bothers me. Is this some sort of pseudo-proper PTO language I’m not aware of? “Use BY a machine,” maybe I can see. Maybe not.

    In view of what advice was given prior to the example, I might have written the claim without a machine structural limitation in the preamble. “[H]our’s time” is also awkward, maybe indefinite. I don’t know what it means. I’d leave out the “hour” altogether — someone might measure output by the minute, second, or eon.

    I’d’a written this bugger something like:

    2. A method for manufacturing widgets, the method comprising
    adjusting the output rate of a widget-making machine when the rate of manufacturing the widgets reaches a predefined limit.

    If the output rate has been properly optionally connected to a machine in the spec, you could leave out machine limitation altogether. And for those examiners who are an/the/said anal retentive you might even say:

    2. A method for manufacturing widgets, said method comprising:
    adjusting an output rate of manufacturing the widgets when the rate reaches a predefined limit.

    I guess you could use “said rate reaches,” but I follow Landis and only use “said” for claimed matter, usually structure. I also follow Landis here in trying to eliminate structural limitations from method claims.

    So, I’ve gone from 34 words to 23, eliminated all the structural limitations of the method claim, eliminated a questionable “in a machine” phrase, eliminated the limitation of determining rate by the hour, and broadened to cover the ole’ hand-style widget mfg. method. Do I win the kewpie doll? (Mooney will jump all over this once he wakes up.)

  68. 12

    “A professional is supposed to care about doing their job right, not about the number of counts or how much money they make. ”

    Are you telling me that making the best rejection is the wrong thing to do? Come come pds, you know better! The MPEP shall be our guide! Come on man, I was kidding about the RCE’s, there’s plenty to go around already, if there were any more there would never be an allowance, which is where the real money is Mmmmm.

    “just because you, presumably, know how to examine claims doesn’t mean you know how to draft them.”

    I agree, an examiner wouldn’t know this, but he would know the HUGE pitfalls every other application stumbles into and would be ready to watch out for them in his nearly finished product. I would have to say that would probably be a benefit of having an ex examiner as a drafter. They could do a mini examination for a few minutes before it goes out the door saving response time and etc. at the time the action is recieved. I often wonder how the word “relative” or “relatively” even finds its way into claims. I mean seriously, it’s the definition of a rejection. That word should be added to the misspelled list in all attorney’s Word programs so it will show up with a little red line under it whenever it’s used.

  69. 11

    I never thought I would see Americans trotting out that old German “central claiming” mistake, that the claim must render the invention “sufficient”. The claims and the disclosure have complementary functions. The claim defines the scope of the area protected by the patent and the specn provides a disclosure that enables the invention, over the scope of the claim. Applicant goes down if 1) something old or obvious lies inside his/her metes 2) his/her metes and bounds are wider than what he/she has enabled. Not really rocket science, is it? Deadly simple, actually. But it runs best if infringement and validity are tried together, symmetrically, by a competent patents judge, so that there is no tension between 1) doing justice and 2) construing plain claims to mean exactly what they say to the notional PHOSITA.

  70. 10

    ” Most of the ‘advice’ here is bent on removing from the claims anything that would help an interested technical individual understand what is being claimed.”

    The disclosure of interest (other than for infringement worries) is in the detailed description. The problem with narrowly drafted claims is that the inventor has now disclosed his invention to the world but claimed it in such a fashion that his patent is a joke to draft around.

  71. 9

    We tried ordering the book through Amazon and were told it was backordered. We’ve tried to order a copy through either used or ABA and are awaiting that order (presuming it goes through).

  72. 8

    This gets right to the point of what the patent system in intended to do. If the system is meant to bolster our industrial productivity by exposing progress to the view of other inventive people then this advice runs counter to the public good. If on the other hand the patent system is meant to allow first movers to extract money from manufacturers who blunder into areas staked out by a visionary thinker this advice is just the ticket. Most of the ‘advice’ here is bent on removing from the claims anything that would help an interested technical individual understand what is being claimed. Of course this has been the way the game is played, and claim drafting of this sort is what the court decisions are pushing patent lawyers into, but it is in the long term counter- productive.

    To be more concrete, the example of the widget making machine patent requires for its implementation some non-standard input and some non-standard adjustment. If the source of the input is not part of the patent it is hard to see how the patent would be an effective ‘teaching’ for someone of ordinary skill. And if some inventive person figures out how to provide that input in another new and non-standard way, such as by integrating a weighing step, I do not see that the insight of the first inventor should be allowed to trump that of the second. The point is that a patent that allows a genie to present an input that is necessary for the practice of the invention is useless for teaching someone how to practice the invention. The two widget machines should be allowed to compete in the marketplace instead of the court room. If counting is more efficient, then the first inventor’s machine and insight will triumph. If weighing is more efficient then the second will triumph. If they are equivalent, which is probably the case here, the patents are non-economic and neither insight should have been patented.

    And yet today, this is how the game is played. But let this be a warning to those who try to make broader and broader claims based on ideas whose limitations have not truly been reduced to practice (in the real world, not the legal world). If patents become the impediment to innovation that some are now claiming they are then the whole system, both the good and the bad, will be swept away.

  73. 7

    “Until you get busted for your overclaiming ways by some prior art that doesn’t count the widgets but instead weighs the output widgets and gets all your deps (so it’s the “best” rejection). Then the RCE gravy train starts, yum yum in my tum! MMMmmm I can taste it now, delicious RCE’s. Feed me more mr. attorney who buys this book!”

    6K … I expected no more from you.

    A professional is supposed to care about doing their job right, not about the number of counts or how much money they make. Perhaps, if you ever make it into law, you’ll learn this lesson. BTW: this isn’t to say that all attorneys are professionals, but they should strive to be.

    BTW: the advice given in this article isn’t bad.
    FYI 6K — just because you, presumably, know how to examine claims doesn’t mean you know how to draft them.

  74. 5

    Following step 3 may lead to a 35 USC 112 2nd para lack of antecedent basis rejection (i.e. “the output rate” and “the number of widgets” lack antecedent basis in the claims and are not necessarily inherent since a machine may not have an output rate or produce more than one widget at a time).

  75. 4

    “However, it is irrelevant to the inventive concept how the number of widgets manufactured in an hour is determined”

    Until you get busted for your overclaiming ways by some prior art that doesn’t count the widgets but instead weighs the output widgets and gets all your deps (so it’s the “best” rejection). Then the RCE gravy train starts, yum yum in my tum! MMMmmm I can taste it now, delicious RCE’s. Feed me more mr. attorney who buys this book!

    “Better to look for some underlying assumption about the claim structure that is getting in the way and to start over. It can be hard to put on the brakes and abandon a claim in which a lot of time has already been invested. It’s good, then, to stay alert to the possibility that things are beginning to deteriorate and to regroup sooner rather than later.”

    This means you Mr. I got a 112 1st, 2nd, 101, 102, 103, prov DP, DP and a handful of objections to my ind, all with a reference that looks like an interference to boot.

  76. 3

    “Another potential problem with certain modifiers is their potential for being declared indefinite. The terms “very-large-scale,” “high-resolution” and “rapidly” in the above examples are problematic in this sense. ”

    Yep.

Comments are closed.