Claim Drafting: 35 USC 112

Question 1

What is the question?

Answer 1

What should you get away with in the Patent Office?

Question 2

What is the whole enchilada?

Answer 2

The Claims

Question 3

What is the goal?

Answer 3

Define the invention so that it works

AND

Define it as being different as prior art.

Question 4

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

Answer 4

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 5

Process of Claiming

Answer 5

Start out broad.

Then define using species and sub-species.

Question 6

Specification

Answer 6

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

Together with drawings, MUST support the claims.

Question 7

Things you have when filing

Answer 7

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

Question 8

What makes up your original disclosure?

Answer 8

Specs

Drawings

Original Claims

Question 9

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

Answer 9

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

You cannot add new matter

Question 10

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

Answer 10

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

Question 11

Claim is directed

Answer 11

Claim covers a particular something

Claim relates to.

Question 12

Within the Scope

Answer 12

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

Question 13

Indefinite Claim

Answer 13

112 (b)

**Look out for double negatives

Question 14

WHAT MUST YOU NOT DO ON THE EXAM?

Answer 14

DO NOT RUSH THROUGH AND READ EVERY WORD.

DO NOT SKIM

Question 15

Claim Arrangement and Numbering

Answer 15

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 16

Three Simple Rules of Claim Drafting

Answer 16

Rule 1 Preamble

Rule 2 Transition

Rule 3 Antecedent Basis.

Question 17

Objection v. Rejection

Answer 17

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 18

Rule 1 Preamble

Answer 18

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 19

Rule 2 Transition

Answer 19

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 20

Rule 3 Antecedent Basis

Answer 20

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 21

Patent Office Perspective

Answer 21

Examiner must have a reason to reject or object.

LOOK FOR THE ONE THAT CANNOT BE EITHER.

Question 22

Comprising of

Answer 22

This is open.

“It has at least this but may have more”

Question 23

Consisting of

Answer 23

This is closed

“My invention is only the following”

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

Question 24

Consisting Essentially of

Answer 24

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 25

How do you point things out that is not there?

Answer 25

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 26

Exam Help of Claim

Answer 26

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 27

Dependent Claims

Answer 27

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 28

Alternative Expressions

Answer 28

“or”

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

Question 29

Markush Groupings

Answer 29

“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 30

Multiple Dependent Claims

Answer 30

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 31

Correct Multiple Dependent Claim

Answer 31

“as in Claims 3 OR 4”

Question 32

How many claims do you get for free?

Answer 32

You get three Independant

Twenty (20) total claims

**Any more than you pay more.

Question 33

Can dependent claims rely on multiple dependent claims?

Answer 33

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

Question 34

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

Answer 34

No you may not.

They count as once and is moved on.

Question 35

Method Claims

Answer 35

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 36

Means plus Function 112(f)

Answer 36

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 37

Product-by-Process Claims

Answer 37

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 38

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

Answer 38

Only one

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

Question 39

How to read claims?

Answer 39

Word for Word

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

Question 40

Drafting Claims with Ranges

Answer 40

Independent claim with the larger range.

Followed by a dependent range that narrows the claim.

**If not, the claim will be indefinite.

Question 41

How to approach problems

Answer 41

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 42

Jepson Claims

Answer 42

Preamble: prior art described, admitted

“the improvement comprising” - point of novelty

Don’t do this!!!