Claim Drafting: 35 USC 112

Question 1

What is the whole enchilada?

Answer 1

The Claims

Question 2

What is the goal?

Answer 2

Define the invention so that it works

AND

Define it as being different from prior art.

Question 3

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

Answer 3

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”

Question 4

Process of Claiming

Answer 4

Start out broad.

Then define using species and sub-species.

Question 5

Specification

Answer 5

Relates to the text of the patent document that is not a claim.

Together with drawings, MUST support the claims.

Question 6

Things you have when filing

Answer 6

1. Written Text (Specification)
2. Drawings
3. Claims

Question 7

What makes up your original disclosure?

Answer 7

Specs

Drawings

Original Claims

Question 8

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

Answer 8

You can shift them around without it being considered new matter.

You cannot add new matter

Question 9

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

Answer 9

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

Question 10

Claim is directed

Answer 10

Claim covers a particular something

Claim relates to.

Question 11

Within the Scope

Answer 11

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

Question 12

Indefinite Claim

Answer 12

112 (b)

**Look out for double negatives

Question 13

WHAT MUST YOU NOT DO ON THE EXAM?

Answer 13

DO NOT RUSH THROUGH AND READ EVERY WORD.

DO NOT SKIM

Question 14

Claim Arrangement and Numbering

Answer 14

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.

Question 15

Three Simple Rules of Claim Drafting

Answer 15

Rule 1 Preamble

Rule 2 Transition

Rule 3 Antecedent Basis.

Question 16

Objection v. Rejection

Answer 16

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 17

Rule 1 Preamble

Answer 17

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 18

Rule 2 Transition

Answer 18

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 19

Rule 3 Antecedent Basis

Answer 19

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 20

Patent Office Perspective

Answer 20

Examiner must have a reason to reject or object.

LOOK FOR THE ONE THAT CANNOT BE EITHER.

Question 21

Comprising of

Answer 21

This is open.

“It has at least this but may have more”

Question 22

Consisting of

Answer 22

This is closed

“My invention is only the following”

A way to say that the invention is exactly what it is.

Question 23

Consisting Essentially of

Answer 23

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 24

How do you point things out that is not there?

Answer 24

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 25

Exam Help of Claim

Answer 25

If they use the terms to define the invention, the terms will find themselves in the right answer choice.

MUST be exact terminology used to define the invention that will find it’s way into the answer.

Question 26

Dependent Claims

Answer 26

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 27

Alternative Expressions

Answer 27

“or”

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

Question 28

Markush Groupings

Answer 28

“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 29

Multiple Dependent Claims

Answer 29

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 30

Correct Multiple Dependent Claim

Answer 30

“as in Claims 3 OR 4”

Question 31

How many claims do you get for free?

Answer 31

You get three Independant

Twenty (20) total claims

**Any more than you pay more.

Question 32

Can dependent claims rely on multiple dependent claims?

Answer 32

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

Question 33

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

Answer 33

No you may not.

They count as once and is moved on.

Question 34

Method Claims

Answer 34

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 35

Means plus Function 112(f)

Answer 35

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 36

Product-by-Process Claims

Answer 36

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 37

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

Answer 37

Only one

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

Question 38

How to read claims?

Answer 38

Word for Word

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

Question 39

Drafting Claims with Ranges

Answer 39

Independent claim with the larger range.

Followed by a dependent range that narrows the claim.

**If not, the claim will be indefinite.

Question 40

How to approach problems

Answer 40

1. Get a sense of the invention and prior art.
2. Look for:
   
   • lack of antecedent basis
     -grammer
   • 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 41

Jepson Claims

Answer 41

Preamble: prior art described, admitted

“the improvement comprising” - point of novelty

Don’t do this!!!