Claim Drafting: 35 USC 112 Flashcards
What is the question?
What should you get away with in the Patent Office?
What is the whole enchilada?
The Claims
What is the goal?
Define the invention so that it works
AND
Define it as being different as prior art.
Example of Broad(Generic), Species and Sub-Species Claims
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”
Process of Claiming
Start out broad.
Then define using species and sub-species.
Specification
Relates to the text of the patent document that is not a claim.
Together with drawings, MUST support the claims.
Things you have when filing
- Written Text (Specification)
- Drawings
- Claims
What makes up your original disclosure?
Specs
Drawings
Original Claims
What if you leave information out of either the specs, drawings or original claims?
You can shift them around without it being considered new matter.
You cannot add new matter
What if you try to add something that is not supported in the specs, drawings or original claims?
You can only get by this by receiving a new filing date.
Claim is directed
Claim covers a particular something
Claim relates to.
Within the Scope
Subject matter described in a generic or specific sense in the claim.
Indefinite Claim
112 (b)
**Look out for double negatives
WHAT MUST YOU NOT DO ON THE EXAM?
DO NOT RUSH THROUGH AND READ EVERY WORD.
DO NOT SKIM
Claim Arrangement and Numbering
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.
Three Simple Rules of Claim Drafting
Rule 1 Preamble
Rule 2 Transition
Rule 3 Antecedent Basis.
Objection v. Rejection
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.
Rule 1 Preamble
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.
Rule 2 Transition
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.
Rule 3 Antecedent Basis
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.
Patent Office Perspective
Examiner must have a reason to reject or object.
LOOK FOR THE ONE THAT CANNOT BE EITHER.
Comprising of
This is open.
“It has at least this but may have more”
Consisting of
This is closed
“My invention is only the following”
A way to say that the invention is exactly what it is.
Consisting Essentially of
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.
How do you point things out that is not there?
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”
Exam Help of Claim
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.
Dependent Claims
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
Alternative Expressions
“or”
Only two instances:
1. Markush Groups
OR
2. Multiple Dependent Claims
Markush Groupings
“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.
Multiple Dependent Claims
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)
Correct Multiple Dependent Claim
“as in Claims 3 OR 4”
How many claims do you get for free?
You get three Independant
Twenty (20) total claims
**Any more than you pay more.
Can dependent claims rely on multiple dependent claims?
Yes, they count as much as the claim they depend on.
Can a multiple dependent claim rely on a multiple dependent claim?
No you may not.
They count as once and is moved on.
Method Claims
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
Means plus Function 112(f)
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
Product-by-Process Claims
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.
How many claims does a Design Patent have and how does it look?
Only one
“the ornamental design for a ______ as shown and described in the drawing”
How to read claims?
Word for Word
When you see “said” or “the” look back for “a” or “an”
Drafting Claims with Ranges
Independent claim with the larger range.
Followed by a dependent range that narrows the claim.
**If not, the claim will be indefinite.
How to approach problems
- Get a sense of the invention and prior art.
- Look for:
- lack of antecedent basis
- grammer
- preamble doesn’t relate to claimed invention
- claim is broader than the spec
- Compare and contrast the remaining.
- Go with the one that mimics the question more closely.
Jepson Claims
Preamble: prior art described, admitted
“the improvement comprising” - point of novelty
Don’t do this!!!
