Claim Drafting: 35 USC 112

Question 1

What is the goal in writing claims?

Answer 1

Define the invention so that it works AND Define it as being different as prior art.

Question 2

Example of Broad(Generic), Species and Sub-Species Claims

Answer 2

Generic Claim: “A roller skate having at least three wheels”

Species Claim: “A roller skate having four wheels”

Sub-Species Claim: “A roller skate having four wheels and a braking member”

a generic claim may be recite an incandescent lightbulb with a filament, while the species may include incandescent lightbulbs with a bamboo filament, a carbon filament, and a tungsten filament.

Question 3

Process of Claiming

Answer 3

Start out broad. Then define using species and sub-species.

Question 4

What makes up your original disclosure?

Answer 4

Specs

Drawings

Original Claims

Question 5

What if you leave information out of either the specs, drawings or original claims?

Answer 5

You can shift them around without it being considered new matter. You cannot add new matter

Question 6

What if you try to add something that is not supported in the specs, drawings or original claims?

Answer 6

You can only get by this by receiving a new filing date.

Question 7

What is within the Scope of a claim?

Answer 7

Subject matter described in a generic or specific sense in the claim.

Question 8

An Indefinite Claim violates what law?

Answer 8

112 (b) **Look out for double negatives

112(b) says that the spec will conclude with one or more claims distinctly claiming the subject matter, so an indefinite claim would violate this part of the statute.

Question 9

Claim Arrangement and Numbering

Answer 9

Number 1 is an independent claim. Do not skip or reserve any numbers. You cannot change the numbers. Group claims that have the claims that depend on the independent claim.

After a notice of allowance, an examiner’s amendment can renumber claims

Question 10

Objection v. Rejection

Answer 10

Rejection is based on the Law, 35 USC. Objection is based on the Rules 37 CFR. **A claim is OK if nothing can be rejected or objected.

Question 11

Rule 1 Preamble

Answer 11

Introductory phrase that is not limited. Can be limiting when it breathes meaning into the body of the claim. Functional language is not wrong but could end up hurting the client.

Question 12

Rule 2 Transition

Answer 12

Three ways of doing this 1. Comprising of 2. Consisting of (if you see this, be suspicious) 3. Consisting Essentially of **You can cover things that don’t work but don’t overdue it. Some cases say around 20% is OK but some say 50% don’t work makes it not good.

Question 13

Rule 3 Antecedent Basis

Answer 13

The first time you introduce a limitation/internal reference you MUST introduce it with either: 1. “a” or 2. “an” Subsequently you refer to the limitation by: 1. “said” or 2. “the” **If failing to do so, then you fail by antecedent basis.

Question 14

Patent Office Perspective

Answer 14

Examiner must have a reason to reject or object. LOOK FOR THE ONE THAT CANNOT BE EITHER.

Question 15

Comprising of

Answer 15

This is open. “It has at least this but may have more”

Question 16

Consisting of

Answer 16

This is closed “My invention is only the following” A way to say that the invention is exactly what it is.

Question 17

Consisting Essentially of

Answer 17

If the novel characteristics of the invention would change by adding an element the transition is CLOSED.

If the novel characteristics of the invention would not change by adding an element the transition is OPEN.

Question 18

How do you point things out that is not there?

Answer 18

Negative limitations - define what is around or surrounds the openings which are not there. **Define it as “this piece and this piece come together to create a cavity”

Question 19

Dependent Claims

Answer 19

They MUST have a preamble, transition, and a body. Narrowing a Previous Claim: - the “invention “ of claim __ “where in” Can only depend on a previous claim

Question 20

Alternative Expressions

Answer 20

“or” Only two instances: 1. Markush Groups OR 2. Multiple Dependent Claims

Question 21

Markush Groupings

Answer 21

“wherein R is a material selected from the group CONSISTING of A, B, C and D” “wherein R is A, B, C or D”

**must be “consisting of” Examiner can reject for one combination but you can reach in and remove a member.

Question 22

Multiple Dependent Claims

Answer 22

A dependent that refers back in the alternative to more than one preceding independent or dependent claim. “or” is required in use. 608.01 (n)

Question 23

Correct Multiple Dependent Claim

Answer 23

“as in Claims 3 OR 4”

Question 24

How many claims do you get for free?

Answer 24

You get three Independant Twenty (20) total claims **Any more than you pay more.

Question 25

Can dependent claims rely on multiple dependent claims?

Answer 25

Yes, they count as much as the claim they depend on.

Question 26

Can a multiple dependent claim rely on a multiple dependent claim?

Answer 26

No you may not. They count as once and is moved on.

Question 27

Method Claims

Answer 27

What is actually required to deliver the invention. Does not have to lay out the entire process. Make sure you “obtain the article or whatever” Preamble is where you are going, steps take you there “A method _____, comprising (comprising the steps of)” You have to use “-ing” words. Order is not important unless you make it an issue by labeling as such creating an order. **ESSENTIAL LOOP: “Repeating Steps X-Y until ____” in Dependent Claims

Question 28

Means plus Function 112(f)

Answer 28

Describing in functional terms as compared to structural terms. “means for cooling the workpiece during treatment” MUST describe the means in the specification. **Only risk is that the net is cast wide

Question 29

Product-by-Process Claims

Answer 29

The style of writing a claim wherein the subject matter is characterized by the process, which leads to creation of the article. **MOST OFTEN USED AS A RED HERRING WRONG ANSWER.

Question 30

How many claims does a Design Patent have and how does it look?

Answer 30

Only one “the ornamental design for a ______ as shown and described in the drawing”

Question 31

How to read claims?

Answer 31

Word for Word When you see “said” or “the” look back for “a” or “an”

Question 32

Drafting Claims with Ranges

Answer 32

Independent claim with the larger range. Followed by a dependent range that narrows the claim. **If not, the claim will be indefinite.

Question 33

How to approach problems

Answer 33

1. Get a sense of the invention and prior art. 2. Look for: - lack of antecedent basis -grammar - preamble doesn’t relate to claimed invention - claim is broader than the spec 3. Compare and contrast the remaining. 4. Go with the one that mimics the question more closely.

Question 34

Jepson Claims

Answer 34

Preamble: prior art described, admitted “the improvement comprising” - point of novelty Don’t do this!!!