During patent prosecution, patent claims are to be given their broadest reasonable interpretation consistent with the specification and as interpreted by a person having ordinary skill in the art.  (see MPEP 2111 – Claim Interpretation; Broadest Reasonable Interpretation)(emphasis added)

This article examines a recent BPAI decision which found an Examiner’s claim construction as unreasonably broad in view of specific definitions provided in the specification for various claim features.

Ordinary and Customary Meaning unless Applicant Acts as Their Own Lexicographer

Unless the Applicant provides a “special definition” for a claim term within the specification, the common meaning of the claim term will control:

“[T]he words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations omitted). ‘[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.’ Id. at 1313. ‘[O]ur cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs.’ Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (internal citations omitted).” (see Ex parte Boehme et al., Appeal No. 2009-008700 (BPAI))

Broadest Reasonable Claim Construction Consistent with the Specification during Patent Prosecution

The BPAI in Ex parte Boehme indicated that the Federal Circuit has cautioned against unreasonably broad claim constructions:

“Although the PTO emphasizes that it was required to give all ‘claims their broadest reasonable construction’ particularly with respect to [the] use of the open-ended term ‘comprising,’ see Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (‘the open-ended term comprising … means that the named elements are essential, but other elements may be added’), this court has instructed that any such construction be ‘consistent with the specification, … and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’  In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990).

The PTO’s construction here, though certainly broad, is unreasonably broad. The broadest construction rubric coupled with the term ‘comprising’ does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940).”  (In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010))(emphasis added)

Applicant Acting as Their Own Lexicographer

The BPAI in the instant appeal found that the Appellants acted as their own lexicographers as they provided specific definitions for various claim features:

“In the present Specification, the Appellants present just such a definition of specific portlets and generic portlets, and such a definition must be honored in the claims. (See FF #2, above.) … the Examiner has not presented a teaching in Khan that anticipates the use of specific and generic portlets, as defined in the specification … the term portlets, as used in the Dumbill reference, does not conform to the definition of portlets in the Specification of Appellants’ application.”

In view of the foregoing, to avoid having a claim term construed further to its common meaning, one will likely want to provide a specific definition within the specification.  Finally, it must be remembered that the Federal Circuit (sitting en banc) in Phillips v. AWH Corp stated:

“As we stated in Vitronics, the specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” (emphasis added)

Design Choice is a type of rationale utilized within the context of an obviousness rejection (35 USC 103).  This article discusses a recent BPAI decision which articulates a rigorous factual standard for establishing a design choice rejection.

Ex parte Gunasekar – Recent BPAI Decision

The BPAI in Ex parte Gunasekar, a somewhat recent decision dated 08.31.11, overturned an Examiner’s obviousness rejection which employed “design choice” as a rationale (in part) for the rejection.  (see  Ex parte Gunasekar, Appeal No. 2009-008345 (BPAI 2011))

The analysis articulated within this decision provides a comprehensive review of the evidence which must be provided by an Examiner if design choice is employed within the context of an obviousness rejection.  For the reader’s convenience, select portions from the BPAI’s analysis are reproduced hereafter.

Initial Burden | Design Choice

The BPAI begins their analysis in Ex parte Gunasekar by focusing upon the Examiner’s initial burden in establishing a prima facie case:

 ”In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the obviousness rejection – the so-called “prima facie” case.  See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the USPTO has the initial burden of proof “to produce the factual basis for its rejection of an application under 102 and 103.” (quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967))).  ”[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of present a prima facie case of unpatentability.”  In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).”

Acceptable Rationale if Merely Arranges Functionally Equivalent Known Elements | Design Choice

The BPAI stated that an Examiner’s design choice conclusion may be acceptable in the following instance:

  “Design choice may be an acceptable rationale for an obviousness rejection when a claimed product merely arranges known elements in a configuration recognized as functionally equivalent to a known configuration.  See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (‘The manner in which electrical contact is made for Smith’s battery would be an obvious matter of design choice within the skill of the art … As the board pointed out, use of a spring-loaded contact in the manner claimed is well known with the common flashlight.’).  In the instant case, the Examiner has not provided any persuasive evidence that the marking the textual information as recited in Appellants’ claim was a known alternative to the designs shown by the cited prior art (Montet and Levin).”

Convincing Line of Reasoning | Design Choice

A “convincing line of reasoning” must be provided by an Examiner if they employ a rejection based upon design choice:

“To support a conclusion that a claim is directed to obvious subject matter, i.e., that a feature is an obvious matter of design choice, an Examiner must present a ‘convincing line of reasoning’ as to why one of ordinary skill in the art would have found the claimed feature to have been obvious.  Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985).

When determining whether a rejection based on design choice is appropriate, the Examiner must review the Specification and ascertain if the limitation in question is disclosed as serving any advantage or particular purpose, or whether it solves a stated problem.  The Examiner also should explain the reasoning used to determine that the prior art would have performed equally as well as the claimed invention.  These two steps help present the aforementioned ‘convincing line of reasoning.’  Ex parte Clapp, 227 USPQ at 973.  Here, the Examiner has not provided any convincing line of reasoning why it would have been an obvious matter of ‘design choice’ to ‘mark[ ] the textual information to notify the one participant that the supplemental information is available for selective display … and forward[ ] the textual information having the marking to the one participant for displaying during the conference session without replacement of the textual information’ as claimed.” (Ex parte Gunasekar at 10) (Emphasis added)

The BPAI next indicated that the Appellants provided a number of reasons regarding why a person of ordinary skill in the art “would not reasonably infer or deduce anything about marking from either Montet or Levin.”

Minor Differences | Design Choice

The final item discussed by the BPAI in Ex parte Gunasekar related to “minor differences” between the prior art and the claimed invention:

“The instant situation is not a case where the combination of Montet and Levin differs only slightly from the claimed invention such that the Examiner may conclude minor differences between the prior art and claimed invention are a matter of obvious ‘design choice.’  See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) ( finding of ‘obvious design choice’ precluded where the claimed structure and the function it performs are different from the prior art); c.f. In re. Rice, 341 F.2d 309, 314 (CCPA 1965) (Minor differences between the prior art and a claimed device may be a matter of design choice absent evidence to the contrary).”

 Concluding Thoughts

As the author of this article strongly agrees with the BPAI’s decision here, it is hoped that this decision is made precedential (see the letter Brian Schar of American IPA sent to the BPAI re. the foregoing).

[ Please Disregard - Technorati Verification  Code: BQS2FQQ2TRHN ]

“Teaching away” is one of the most persuasive arguments an Applicant may further during patent prosecution to traverse an obviousness rejection (35 USC 103).  To successfully implement a teaching away argument, a number of items should be considered to determine whether a prior art reference would indeed teach away from the claimed invention.

Background

The importance of this argument is reflected in the MPEP which indicates that a reference which teaches away is “a significant factor to be considered in determining obviousness.”  (MPEP 2145)  Furthermore, the Supreme Court in KSR v. Teleflex stated that prior art which teaches away is indicative of non-obviousness:

“The Court relied upon the corollary principle that when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious. Id., at 51-52, 86 S.Ct. 708. When Adams designed his battery, the prior art warned that risks were involved in using the types of electrodes he employed. The fact that the elements worked together in an unexpected and fruitful manner supported the conclusion that Adams’s design was not obvious to those skilled in the art.” (emphasis added)

Additionally, the 2010 USPTO KSR Guidelines indicate that three “familiar lines of argument still apply” for traversing an obviousness rejection, including: 1) teaching away; 2) lack of a reasonable expectation of success; and 3) unexpected results.

Primary Factors

“A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)”(MPEP 2141.03)

It is submitted that a prior art reference will teach away if it actively criticizes, discredits, or discourages a claimed solution. (MPEP 2143.01)  However, it must be stressed that “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives.” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).

The Federal Circuit stated in In re Gurley that:

“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

Recent BPAI Decision

The BPAI in Ex Parte Tushoo (Appeal No. 2009-012801) overturned the Examiner’s obviousness rejection due to a prior art reference’s teaching away from the claimed invention.

The BPAI in this appeal stated that “the issue turns on whether Reference [A]’s RETURNING clause teaches away from the claimed invention.”   Regarding the “RETURNING clause,” the reference states that “[y]ou can use this clause [the RETURNING clause] only when operating on exactly one row. (Id.) (Emphasis added.)”

In view of Reference [A]‘s explicit teaching, the BPAI held that:

“At best, Reference [A]’s disclosure of a RETURNING clause that can only be used when operating on exactly one row (FF 1) teaches or suggests that the RETURNING clause can only return a single row when a value in that row has been inserted, updated, or deleted. Moreover, since this explicit disclosure in Reference [A] uses restrictive words such as “only” and “exactly,” we find that an ordinarily skilled artisan would have been discouraged from modifying the RETURNING clause to include the ability to operate on separate rows … Appellant has pointed to an explicit disclosure within Reference [A] that acts to criticize, discredit, or otherwise discourage the claimed …” See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Therefore, we agree with Appellant that Reference [A] teaches away from the claimed invention. (See App. Br. 11-12; Reply Br. 6-7.)”

In view of the above, restrictive language such as “only” and “exactly” which is explicitly included in a reference to describe a specific feature may be indicative of “teaching away.”

1)   Patent Term Extension:    For applications filed on or after June 8, 1995, the term of a patent (other than a design patent) is 20 years from the date that patent application was filed.   (MPEP 2701 – Patent Term).    More specifically, as the 20 year patent term is measured from the non-provisional patent application filing date (rather than the provisional patent application filing), it is possible to extend the patent term termination date up to 12 months by filing a provisional application prior to the non-provisional patent application.

2)  “Patent Pending” Designation:   Once an Applicant has filed a provisional patent application, they may utilize the designation “Patent Pending” with their invention (e.g., conversations with others, product literature, etc.).   However, it should be noted that exclusionary (legal) rights are only obtained once a patent grant has been procured.

3)  Reduced Initial Costs / Obtain Market Feedback:   The government fees for filing a provisional patent application are actually quite minimal  ($220/$110- Small Entity : Current USPTO Fee Schedule).   In addition to the minimal government fee, a filed provisional application allows an inventor to “test the waters” and determine whether there is market demand for the invention.

4) Public Disclosure Safeguard – Foreign Filing:   Although the United States allows an Applicant to file a patent application within 12 months from a public disclosure (35 USC 102(b) – “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States,” many foreign countries do not provide such an exception.

Many foreign jurisdictions instead employ an absolute novelty bar in which a public disclosure or commercial activity negates an Applicants ability to file a patent application.   So what are an Applicants options if they need to present their invention publicly but are unsure whether foreign filing will be pursued?

Although one could choose to delay the public disclosure, an alternative option to possibly safeguard foreign rights is to file a provisional patent application prior to the public disclosure (the foreign application/non-provisional would need to be filed within 12 months of the provisional filing).

5)  Patent Prosecution – Secondary Considerations:    Further to item #3 above (“obtain market feedback”), if the invention receives a positive reception in the marketplace and enjoys eventual “commercial success,” these results may be beneficial in overcoming an obviousness rejection during the patent prosecution phase of the non-provisional patent application.   More specifically, the  Supreme Court in Graham v. John Deere outlined a number of primary factors that must be examined for conducting a non-obviousness analysis:  ( 1) scope and content of the prior art; 2) differences between the prior art and claims at issue must be ascertained; and 3) the level of ordinary skill in the art must be resolved ).

In addition to the aforementioned factors, the Supreme Court further annunciated that some “secondary considerations” may also be considered.   The court specifically stated, “such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”    In addition to the foregoing items, caselaw since Graham has identified the following items as “secondary considerations” :   praise by others, licensing activities, copying of the invention, etc.

In summation, although an Applicant will want to focus upon the primary Graham factors in furthering the non-obviousness argument,  the aforementioned secondary considerations could be additionally utilized.

6)   Non-Disclosure Agreements:     A quick review of many corporations invention intake policies reveals that they will not sign a Non-Disclosure Agreement (NDA) to review an invention.   However, once an Applicant has filed a a provisional / non-provisional application (or obtained a patent grant), there are no further concerns regarding NDAs due to the provisional application filing.

Design Patents and Utility Patents | Overlap

Design patent protection and utility patent protection may be available simultaneously.  For example, utility patent protection may obtained to protect various functions related to a laptops operation (e.g., components/processes), while design patent protection may be obtained for some aspect(s) of the laptops appearance (e.g. shape of case, etc.).  Design patents are obtained for a wide variety of manufactured articles (e.g. sneakers, jewelry, vehicle components, etc.).

The primary statute related to design patents ( 35 USC 171 – Patents for Designs) states that, “whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.  The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.”  Accordingly, the patent laws that are applicable to design patent applications and utility patent application include: 35 USC 102, 35 USC 103, 35 USC 112, 35 USC 132, and 35 USC 172 (see MPEP 1504 – Examination | “in design patent applications, ornamentality, novelty, nonobviousness, enablement and definiteness are necessary prerequisites to the grant of a patent.”)

A design patent application may (when appropriate) be a continuation application of an earlier filed non-provisional patent application or claim benefit to an earlier filed PCT application.   MPEP 1504.30 states:

“Where the conditions of 35 U.S.C. 120 are met, a design application may be considered a continuing application of an earlier utility application. Conversely, this also applies to a utility application relying on the benefit of the filing date of an earlier filed design application. See In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). In addition, a design application may claim benefit from an earlier filed PCT application under 35 U.S.C. 120 if the U.S. was designated in the PCT application.”

A strategy that is embraced by many organizations to obtain maximum legal protection involves procuring design patent and utility patent protection (as each type of patent provides separate legal protection), in addition to trademark and copyright (when appropriate).

Design Patents and Utility Patents | Comparison

Design Patents and Copyright | Design Patents and Trademark

An overlap may exist between design patents and copyright; and similarly, between design patents and trademark.  Regarding the overlap between design patents and copyright, “an ornamental design may be copyrighted as a work of art and may also be subject matter of a design patent.”  (see MPEP 1512 – Relationship between Design Patent, Copyright, and Trademark)  Additionally, a trademark and design patent may be obtained on the same subject matter.

As stated previously, “a design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone.”  Accordingly, surface ornamentation by itself (without the article to which it is applied) would not be eligible for design patent protection; however, the surface ornamentation by itself may be eligible for copyright protection.  Copyright is defined by the U.S. Copyright Office as “a form of protection grounded in the U.S. Constitution and granted by law for original works of authorship fixed in a tangible medium of expression. Copyright covers both published and unpublished works.”

Regarding trademark, the USPTO defines the term trademark as “protecting words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.”   Accordingly, a logo (source identifier) which would distinguish an article (source of goods) from others could possibly qualify for trademark protection.

What do trademarks and patents protect?  This article broadly answers the aforementioned question by discussing the types of items which are protected by trademarks and patents.  Additionally, various items (e.g., creation, requirements, procurement time, duration of rights, etc.) related to both trademarks and patents are discussed herein.

Definition | Trademark

The United States Patent and Trademark Office (USPTO) provides a succinct definition for trademarks or servicemarks:

“In short, a trademark is a brand name. A trademark includes any word, name, symbol, device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.”

In view of the foregoing, a trademark (used broadly hereafter to indicate both goods and services) is used to identify the source of a good or service and thereby allow consumers to distinguish a particular good/service from other similar goods/services in the marketplace.  In addition to acting as a source identifier, a trademark also represent the goodwill (or reputation) that the consuming public associates with a specific good/service.  As brand names are in many instances a businesses most valuable asset, the primary means for safeguarding this asset is through trademark.

Definition | Patent

In contrast to trademarks, patents are sub-divided into two primary forms: Utility Patent and Design Patent.

Utility patents cover “utilitarian” inventions which provide legal protection for any “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”  (35 USC 101)  Accordingly, a utility patent cover items such as an invention’s physical structure (machine), use (process), etc.  Further, a utility application may be filed as a provisional application or non-provisional application depending upon a number of factors which are discussed within the following article regarding Provisional Patent Applications.

Conversely, design patents provide legal protection for “visual ornamental characteristics embodied in, or applied to, an article of manufacture … the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.” (see USPTO Design Patent Application Guide)

Legal Protection | Trademark vs. Patent

The following table broadly describes the primary differences between trademarks and patents for a number of items.  Please note that trademarks may receive protection at common law or state statutes.  However, federal protection (if applicable) is usually preferred as a USPTO trademark registration covers the entirety of the United States (including its holdings, etc.).  Accordingly, the table below focuses upon federal trademark and patent.  As a final note, patent protection is only available through the federal government.

What is “Prior Art”?

Prior art may be broadly described as information made publicly available prior to a specified date which may be used to analyze the patentability of an invention further to 35 USC 102 and 35 USC 103 (novelty and obviousness, respectively).  The exact definition of what constitutes a “prior art” reference may be found in 35 USC 102.

Prior art may include items such as: issued patents, patent application publications, printed publications (e.g., articles, meeting handouts/materials, published websites, etc.), advertisements, public uses, and offers to sell or actual sales.  To determine whether a reference qualifies as prior art, an analysis must be conducted which includes the following specific items: 1) action; 2) actor; 3) timing; and 4) location.

Although the United States provides inventors with a one-year grace period to “test the waters” and determine whether there is commercial potential for an invention, it must be stressed that this grace period is not unlimited.  More specifically, a statutory bar (35 USC 102(b)) will arise through the following scenarios if they occur more than one year prior to the patent application filing in the United States:  1) printed publication or patenting of an invention anywhere in the world; or 2) public use or sale (including offers for sale) within the United States.  If one of the aforementioned scenarios arises,  the Inventor will be foreclosed from obtaining a patent grant for the disclosed technology within the United States.  Accordingly, an Inventor may create prior art through their own actions.

If an Applicant is interested in obtaining foreign patent protection, they should understand that nearly all countries outside of the United States do not provide a grace period similar to that described above.  Accordingly, in such countries, any type of public disclosure would foreclose an Applicant from obtaining a patent grant within said countries.

Relative Terminology

When used appropriately, it is generally preferred that claims employ relative terminology in view of the broadening advantages that such terms provide.  However, if relative terms are employed in a claim, an Applicant must be aware of potential definiteness issues (35 USC 112, Second Paragraph).  More specifically, MPEP 2173.05(b) states: “the fact that claim language, including terms of degree, may not be precise, does not automatically render the claim indefinite under 35 U.S.C. 112, second paragraph. Seattle Box Co., v. Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed. Cir. 1984).  Acceptability of the claim language depends on whether one of ordinary skill in the art would understand what is claimed, in light of the specification.”

The same section of the MPEP further states: “When a term of degree is presented in a claim, first a determination is to be made as to whether the specification provides some standard for measuring that degree.  If it does not, a determination is made as to whether one of ordinary skill in the art, in view of the prior art and the status of the art, would be nevertheless reasonably apprised of the scope of the invention….”  Accordingly, the proper usage of relative terms will depend upon the context in which they are used.  It should be noted that MPEP 2173.05(b) lists a number of exemplary relative terms (e.g., about, essentially, substantially) with accompanying commentary.

Proper Antecedent Basis for All Claim Recitations

Use an indefinite article (“a” or “an”) when first introducing a feature, and thereafter use a definite article (“the” or “said”) when referring to the feature in a later portion of the claim or in a dependent claim.  (see MPEP 2173.05(e) – Lack of Antecedent Basis)

Dependent Claims

As a dependent claim incorporates all of the recitations of the claim(s) from which it depends, nothing within the dependent claim may contradict any of the recitations included within the claim(s) from which it depends.  Accordingly, a dependent claim builds upon the claim(s) from which it depends by adding an additional recitation(s) or further describes an existing recitation.  Further, a dependent claim cannot remove or broaden any recitation(s) from a parent claim.

An Applicant should additionally ensure that each of the dependent claims properly depend from another claim.  This foregoing point should be stressed as claim dependencies sometimes change during patent prosecution as claims are amended or new claims are added.

Multiple Dependent Claims | USPTO

Although multiple-dependent claims are allowed in the United States, this claim drafting form should be avoided for patent applications which are filed at the USPTO.   In addition to the additional cost that is incurred per multiple-dependent claim, many feel that these types of claims are confusing/not easy to read.  MPEP 608.01(n) states that:

“Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purposes under § 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have paid therein the fee set forth in § 1.16(j). Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered.”

However, it should be noted that nearly all countries outside of the U.S. do not charge an additional fee for multiple-dependent claims.  Accordingly, if a U.S. Applicant anticipates international filings, multiple-dependent claims should be considered when applicable (e.g. excess claims) to reduce claim fees abroad.

Varied Mix of Claims | Breadth and Claim Categories

The practitioner should constantly strive to draft a varied mix of claims in view of the prior art.  What is meant by “varied mix” is that claims should be included in the patent application directed (where applicable) toward multiple categories (processes, machines, manufactures and compositions of matter - 35 U.S.C. 101) and of varying scope (broad and narrow claims).

Categories

It is important to include claims directed toward multiple categories because within the patent litigation context, certain claim categories will be applicable to specific types of infringers.  For example, if a mechanical invention includes apparatus and method claims; the apparatus claims could be asserted against a manufacturer of the infringing device, while the method claims could be asserted against users of the infringing device.

Varied Scope

As an additional point, it should be remembered that by including a varied mix of claims “up front” (with the originally filed patent application) the Applicant may be able to minimize (or avoid) amending the claims of the patent application during the patent prosecution phase and thereby limit the creation of prosecution history.

Special Meaning of a Claim Term | Applicant as Their Own Lexicographer

An Applicant can act as their own lexicographer and “rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s). See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994) (inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision” and, if done, must “‘set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning)….” (MPEP 2111.01 – Plain Meaning)

Regarding claim construction, the BPAI has stated:

“Any special meaning assigned to a term ‘must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.’  Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).  Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art.  Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted).” (Ex parte Dettinger et al., Appeal No. 2009-5742 (BPAI))

In view of the above, if an Applicant intends to rely upon a claim definition which is “special” or has an “uncommon meaning” they should provide such an explicit definition within the specification.  Additionally, it should be remembered that during patent prosecution, Examiners give claims their “broadest reasonable interpretation consistent with the specification.” (see MPEP 2111 Claim Interpretation – Broadest Reasonable Interpretation)

Claim Term Meaning

If an Applicant does not act as their own lexicographer and provides an explicit definition for a claim term, than a presumption exists in which “claim terms are to be given their ordinary and customary meaning….” (MPEP 2111.01 – Plain Meaning)  In the patent prosecution content, it must be stressed that although Examiner’s are to give claims their “broadest reasonable interpretation consistent with the specification,” it is improper for an Examiner to employ an unreasonable construction or a strained interpretation which is not consistent with the claimed subject matter in view of the specification.  If it is believed that an Examiner has employed an unreasonable claim construction, many patent practitioners will utilize a quick telephonic Examiner Interview as a cost-effective means to resolve the aforementioned scenario.

Mixing Statutory Classes

It is improper to mix multiple statutory classes in a single claim (e.g., “product and process in the same claim”).  MPEP 2173.05(p) – Claim Directed to Product-By- Process or Product and Process states, “a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph. *>IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005);<Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) *>(< claim directed to an automatic transmission workstand and the method * of using it * held ** ambiguous and properly rejected under 35 U.S.C. 112, second paragraph>)   Such claims *>may< also be rejected under 35 U.S.C. 101 based on the theory that the claim is directed to neither a ‘process’ nor a ‘machine,’ but rather embraces or overlaps two different statutory classes of invention set forth in 35 U.S.C. 101 which is drafted so as to set forth the statutory classes of invention in the alternative only. Id. at 1551.”

Claim Cancellation / Claim Addition

After a claim is canceled during patent prosecution, its number is not reused.  Further, new claims added during patent prosecution are afforded with the next available claim number(s) beyond the highest previous claim number.

Parts of a Claim / Transitional Phrase

Unless there is a compelling reason otherwise, the transitional term “comprising” should always be used in a patent claim as it is “inclusive or open-ended and does not exclude additional, unrecited elements or method steps.” (see MPEP 2111.03 – Transitional Phrases)  Further, MPEP 2111.03 states that the transitional term “comprising” is “synonymous with ‘including,’ ‘containing,’ or ‘characterized by’…..”   Contrastingly, “the transitional phrase ‘consisting of’ excludes any element, step, or ingredient not specified in the claim….”  (MPEP 2111.03)

Accordingly, a product will infringe a claim which utilizes the transitional term “comprising” if the alleged infringing product includes all of the features of the claim in addition to other features.  Contrastingly, if a “closed” transitional term (e.g., “consisting of”) is employed, infringement will not be possible if an alleged infringing product includes additional features.

Independent Claims: Non-Essential Recitations

As the breadth of a claim is determined by the relevant prior art, a number of inquiries should be furthered while drafting the broadest claim(s) of a patent application.  Generally, independent claims should include the fewest recitations possible in view of the prior art (while still satisfying various statutory requirements) to provide the broadest claim coverage.

Some of the inquiries that a patent practitioner may ask to generate broad independent claims include:

• Are each of the claim recitations which are included in the broadest independent claim absolutely required in view of the prior art?
• Can the invention’s intended solution still be achieved with fewer elements/components?
• Can a feature be removed from a claim and still recite an operative invention while avoiding a prior art rejection?
• Can an alternate material be utilized for any of the elements of the claim?

If a feature is not essential, it may make more sense for said feature to be included in a dependent claim.  If there are multiple features which each individually distinguishing the invention over the prior art, than it may make more sense to draft a number of independent or dependent claims each directed to one of the individual distinguishing features.

Support for Claim Recitations in the Drawings

All recitations included in a claim must find support in the drawings (assuming a drawing is required to “understand  the subject matter sought to be patented” (see 37 CFR 1.81)).   More specifically, 37 CFR 1.83 requires that: “the drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box).”

Same Terminology in the Claims and Specification

Although there is no legal requirement that the same claim language which is recited in a patent claim be present in the specification, it is generally preferred that the same terminology be utilized throughout the claims and the specification.  More specifically, “the meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import….” (see MPEP 608.01(o) – Basis for Claim Terminology in Description)

To satisfy the written description requirement, MPEP 2163 states that “a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116.”  Further, the same section states that with regard to original claims, “there is a strong presumption that an adequate written description of the claimed invention is present when the application is filed,” and that with new or amended claims, “while there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure.”

It must be stressed that “the fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563-64, 19 USPQ2d at 1117.” (MPEP 2163)

One strategy which many Applicants implement to ensure that the same terminology is utilized throughout the claims and the specification is to draft the claim set first.  Once the claims are drafted, said claims may be copied into the specification and rewritten as appropriate with the description drafted around the claim set.  Further, it is believed that in addition to ensuring that the written description requirement is satisfied, this technique (drafting the claim set prior to the description) allows an Applicant to focus their attention upon the primary aspects of their invention which are related to patentability.  Finally, by using consistent terminology throughout the claims and specification, the Applicant reduces the likelihood of receiving a 35 USC 112, First Paragraph written description rejection during patent prosecution which translates to reduced costs.

Hanging Limitations

Patent claims should never include “hanging limitations.”  Hanging limitations are features included in the body of a claim which are not cooperatively connected either structurally or functionally with at least one other feature of the claim.  By including a hanging limitation in a claim, the Applicant risks having the claim being held as indefinite (see 35 USC 112, Second Paragraph).

Elements Positively Recited

Elements are the primary structural components of an apparatus claim while workpieces are items upon which an apparatus works.  Elements are always positively recited (cannot introduce an element for the first time after describing another element in the same statement) while workpieces are not positively recited as they are not part of the structure of the apparatus.

What is a Utility Patent?

Of the several different types (e.g., utility patent, design patent, and plant patent) of patent documents issued by the United States Patent and Trademark Office (USPTO), utility patents are the most popular.  More specifically, as the greatest number of patents which are granted by the USPTO are utility patents, this patent type is usually referenced when the term “patent” is employed generally.  Further, it should be understood that an invention may qualify for multiple types of patents in addition to other forms of intellectual property.
The USPTO defines a Utility Patent as:

“Utility Patent –  Issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof, it generally permits its owner to exclude others from making, using, or selling the invention for a period of up to twenty years from the date of patent application filing ++, subject to the payment of maintenance fees.   Approximately 90% of the patent documents issued by the PTO in recent years have been utility patents, also referred to as “patents for invention.” (see USPTO – Types of Patents)

It should be noted that it is improper to refer to a “patent application” as a “patent” unless a grant has been provided by the USPTO.

Further, unlike a provisional patent application which is in essence a “place-holder” and not examined by the USPTO, a non-provisional utility patent application is examined by the USPTO and may eventually result in a patent grant (assuming it satisfies various statutory requirements as determined by the USPTO during patent prosecution).