Claim Drafting

8/4/2019 Claim Drafting

1/30

CLAIM DRAFTINGby Lynn J. Alstadt

Claim drafting is really much simpler than it appears. There are, of course,

certain basic rules which must be observed in order to satisfy the requirements of the Patent

Office. A knowledge of these rules and an ability to draft claims is essential both to successfully

practice patent law and of more immediate concern -- to pass the Patent Office Exam. For the

exam, it will contain several claims with missing elements and ask you to select the best choice

for the missing element from five (5) possible choices or ask you to spot errors in claims.

First you should understand the desired claim form, which can be broken down

into the following principles:

Section I - Single Sentence

Each claim must be constituted by a single complete sentence, however long.Conventionally, albeit not necessarily, the first claim is preceded by an introductory phrase such

as "I claim:" or "What is claimed is:." In filing an application with a complete set of claims, theintroductory phrase appears only once, before the first claim in the set. In writing claims bythemselves, and as they are written in the Exam, the introductory phrase is understood andomitted.

Section II - Numbering and Order

In a set of claims to be filed as part of an application in the Office, each claimmust be consecutively numbered, i.e. "1," "2," etc., and good practice dictates that the claims begrouped and numbered in some logical order for consideration. The most common practice is tostart with the broadest claim and end with the narrowest. If an application has both apparatusclaims and method claims, the apparatus claims are in one group and the method claims are in aseparate group. For your assignments you will be called upon to write three claims of varyingscope to an apparatus and a method process. The claims on each disclosure should be numberedin order of decreasing breadth. For the exam you may be asked to identify the broadest or narrowest claim.

Lynn J. Alstadt 2000


2/30

Section III - Preamble

All claims have "preambles" or introductory statements, the purpose of which isto name or define a thing which is to be claimed. Preambles may be quite long or very short,depending on the type of claim one is using.

The best type of preamble for most claims is simply a general definition of theinvention to be claimed, with whatever detail or length is necessary to match the body of theclaim. One important point to remember is that the preamble and body should be consistent onewith the other, two parts making up a whole. Often, the preamble cannot be written properlyuntil the scope of the claim-to-be is established, and the preamble should be checked for consistency after the body of the claim is finished.

Recommended preambles for different types of claims will be set out in thesubsequent parts of this paper for use with claims of various types.

Section IV - Transition from Preamble to Body

Most claims require a transitional phrase between the preamble (naming the thingto be claimed) and the body (defining what the elements or parts of the thing are). Therecommended form of transition to use for most claims is the phrase:

", which comprises" or ", comprising"

The word "comprises" means, in patent law, including the stated elements but notexcluding others. Therefore, that or an equivalent expression is preferably used wherever theOffice or prior art permits because the claimed combination of elements is protected no matter how many additional elements may be added to the basic combination claimed. Some form of the word "comprises" is practically always used for mechanical or method combination claims.

Some patent practitioners use the term "including" rather than comprisingintending it to be construed as having the same meaning as comprising. However, there is atleast one court decision giving including a more limited meaning. Therefore, I encourage you touse comprising rather than including.

Comprising - Consisting

The following transitions have more limited meanings, and are used primarily in

chemical cases where the art requires limitations of the claims in order to patentably distinguishthe claimed invention from the art:

", consisting of:" (excluding more than traces of elements not specifically claimed)

", consisting essentially of:" (excluding non-claimed elements in any amounts sufficientto adversely affect the intended operation or function of the invention)

- 2 -


3/30

Section V - Body of the Claim

The body of a combination claim, that which follows the preamble and thetransitional phrase, comprises:

a. a recitation of the elements of the invention, and

b. a description of how the elements are combined or associatedwith each other to make the operative combination recited in the preamble.

In terms of English grammar, the body of a combination claim is a series: A, Band C, where A, B and C stand for the "elements" of the invention, by which is meant therequired structures, steps, parts or ingredients which together form the machine, method, articleof manufacture or composition of a matter recited in the preamble. In the rare case of a single-element claim (as distinguished from a combination claim), the single element, be it amechanism, step, article or composition is simply described. Since the vast majority of inventions are directed to combinations of one sort or another, this paper will deal exclusivelywith combination claims except where otherwise noted.

Section VI - Format & Punctuation

Since the claim is a grammatical sentence, the elements of the claim (asdistinguished from the elements of the invention recited in the body of the claim) must be set off at least by commas. As in any writing, semicolons should be used to set off the clauseswhenever one or more of the clauses contain internal punctuation. Other punctuation such as

parenthesis, dashes, etc. are not ordinarily needed or used in claims. Brackets, dashes andquotation marks are used in amending claims to show what was added or deleted. Consequently,

this punctuation should not be used in an original claim.In this connection, one general remark relating to practically every section of this

paper is appropriate: don't try any novel, inventive or controversial approaches on the Exam;stick to a sound, conservative and conventional approach to everything.

The single paragraph form of claim, with commas between the elements and withno indentation, letters or numerals to identify the elements, is the form used almost exclusively

by practitioners in the past. It is still acceptable to the Patent Office and works best for simpleshort claims with only two or three elements.

Because claims are often complex and difficult to follow, various other formatsare being widely used today to make claims easier to follow and understand. The Patent Officefavors all such attempts at clarity.

Subparagraph Form

One such format, the subparagraph or tabular form, is strongly favored by thePatent Office and is recommended to the student for both regular practice and for this class. Thisform actually helps the student since it is easier to use and the drafter is less likely to make

- 3 -


4/30

mistakes in recognizing and setting out the elements of the claims. In the subparagraph form, thefirst word of each element of the claim is indented so as to distinguish clearly between each of the claimed elements.

Identifying letters or numerals, as in an outline, may also be used prior to the

recitation of an element, whether or not the subparagraph form is used. The colon-semicolonform in which a colon is used before the first element and semicolons are used between theelements is also recommended, particularly with subparagraph claims.

The general rules and procedures discussed in foregoing Sections 1 to 6 will now be illustrated as they pertain to apparatus claims. The word "apparatus" is used generally todenote various machines and devices, including electrical circuits, having cooperating partswhich accomplish some useful result, usually some act or operation on an object, article or workpiece.

Example I - Shaker

Referring specifically to the form of shaker illustrated in Fig. 3 of Example I, asample claim to that structure, as distinguished from the structure in Fig. 2, might read as follows

(the elements of the claim being underlined): This claim is written in (subparagraph form)

- 4 -


5/30

(Preamble) 1. Apparatus for shaking small articles,(Transition) which comprises:

(Body - Each a. a container for the articles;element is

identified with b. a base;a letter.)c. a plurality of parallel legs, each of which is connected

pivotally at its opposite ends to both the container and the baseso as to permit reciprocating movement of the container withrespect to the base; and

d. means for reciprocating the container on the legs to shakethe articles in the container.

Section VII - Preambles for Apparatus Claims

Claim 1 illustrates one simple type of preamble which is quite common, and caneasily be used for most ordinary mechanical combination claims. Generically, this type of

preamble follows the following pattern:

"Apparatus for performing a specified act or operation on a particular object, article or workpiece, which comprises:"

The article to be worked on need not be defined exactly unless such description isimportant to the operability and made necessary by the claim-to-be. For example, if "small"objects are considered essential or important, then that recitation should be in the preamble, as in

claim 1.

The word "apparatus" is frequently used by patent practitioners as a sort of generic expression covering machines, devices and other assemblages which perform operationson workpieces; however, wordings such as "machine," "device" or circuit" may be used whereappropriate.

It should be apparent that the drafting of the body of the claim is usually simpler,and the claim is easier to follow, when the specified operation to be performed and the specificworkpiece or workpieces on which such operation is to be performed are clearly set out in the

preamble.

Further examples of this type of preamble follow (with respect to unspecifiedstructures):

"Apparatus for coating the inside of a tubular workpiece with a liquidthermoplastic resin, . . ."

"Apparatus for transferring articles from a first conveyor belt to a secondconveyor belt running parallel to the first but in the opposite direction, . . ."

- 5 -


6/30

"A device for simultaneously attaching axial leads to opposite ends of anelectrical component, . . ."

"A circuit for detecting discontinuities in the insulation of an insulated wire, . . ."

In many cases where the apparatus has a generic name, that may be used, for example:

"A binary counter, . . ."

"A self-propelled lawn sprinkler, . . ."

"A carburetor, . . ."

Section VIII - Body of Apparatus Claims

The body of an apparatus claim comprises a recitation of the main elements whichtogether makeup the combination being claimed. As illustrated in claim 1, the completedescription of each element forms the subject matter of each clause, or subparagraph, of theclaim.

The elements and all parts of elements must be set out positively, and negativelimitations are ordinarily improper. *

One of the most important rules in drafting claims is that it is never proper tointroduce a new element of the claim in the middle of the description of another element,sometimes called "inferential claiming." Each element must be positively set out in a separateclause. Thus, it may be quite natural, and good practice in the specifications to state:

"a container which is connected pivotally to a plurality of parallel legs;"

However, the legs are separate elements of the invention and must be positively and separatelyset out and defined from the container, as in claim 1.

Another example:

Wrong: "a lever having a forked end with a pivot pin mounted between the furcations of the forked end;"

Correct: "a. a lever having a forked end;b. a pivot pin mounted between the furcations of the forked end;"

*Section 706.03(d) of the Manual of Patent Examining Procedure, states that "The inclusion of a negative limitationshall not, in itself, be considered a sufficient basis for objection to or rejection of a claim. However, if such alimitation renders the claims unduly broad or indefinitive or otherwise results in a failure to point out the inventionin the manner contemplated by 35 U.S.C. 112, an appropriate rejection should be made."

- 6 -


7/30

Four essential elements (underlined in the claim Example I above) were selectedfor the combination of claim 1 - (a) the container, (b) the base, (c) the legs, and (d) thereciprocating means. Note that all of these parts are essential, within the framework of the scopeof claim desired, to accomplish the shaking of the articles, and that nothing more is needed. If anarrower claims were desired, the motor, cam and cam follower linkage (together making up the

reciprocating means) could be made further elements of the claim.There are three important things to tell about each element:

(1) What is its generic name?

(2) What are its constituent parts or distinctive features; that is, what featuresare necessary for the purposes of this claim to distinguish this element from any other element of the class?

(3) How are it and its parts associated with or connected to the other elementsor parts to accomplish the desired result?

Section IX - Naming the Elements

It is good practice to analyze the structure of the invention and select the essentialelements to be claimed, with whatever scope is desired, before starting to write a claim. Theelements must be assigned names, such as base, container, legs and reciprocating means inclaim 1.

The exact term selected for each element is not usually critical, so long as theclaim drafter chooses technically reasonable terms. Frequently, there are various expressionswhich could have been used. For example, in claim 1, the base could have been called "asupport," "a mounting plate," or the like. A "base" is common claim terminology. The legs usedin the element of Figure 2 could have been named "posts," "rods," or perhaps "struts." Thecontainer might have been designated "a box" or "a holder". If the student is uncertain as to thecorrect name for a part, and there is no time to find out what it is, he can resort to some suchexpression as "a holding member," a "rotary member," etc. The specification should contain asmuch description of the part and its function as is possible.

Number of Elements

The number of times each element occurs, if more than once, should also bestated, where the number is material:

"A pair of arms . . ."

"Three springs . . ."

"A plurality of rods . . ." (used for an indefinite number two or more).

- 7 -


8/30

"At least five fingers . . ." (used where there must be at least five but more woulddo).

Section X - Means Clauses

The student will note that the following "means" clause has been used in claim 1:

"means for reciprocating the container on the legs to shake the articles in thecontainer."

As a first observation, it must be realized that there is no possible objection tomeans expressions per se; in fact, they are expressly authorized by the statute (35 U.S.C. 112):

"An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure . . . in support thereof."(Underlining added to emphasize the form.)

Note the statutory language "claim for a combination." Thus, a single elementclaim such as the following cannot employ means plus function language:

"Apparatus for shaking articles in a container, which comprises:

means for reciprocating the container to shake the articles."

In referring again to a means element (see Section 11 - Antecedents), one merelygives it a convenient distinctive name such as "the reciprocating means" or "the container-reciprocating means." The exact choice is not critical so long as there is no possible confusionwith other means elements.

Most mechanical claims are, or can be made to be, directed to a combination of elements. A possible problem in this area with an improvement or Jepson-type of claim (seeSection 24), where a single element is claimed in the body of the claim which cooperates withseveral old elements stated in the preamble to make up a complete machine or apparatus. Whileit is thought that such a claim is truly a claim to a combination, so that the body of the claimcould properly consist of a single means expression, there is undoubtedly some difference of opinion on this score.

No form of means clause should be used at what might possibly be construed to be the "precise point of novelty" of the claim. The rules in this area are less than crystal clear.

For example, if all but one of the elements of the claim are old and if a similar combination is oldin the art, the point of novelty in the claim probably resides in the construction of one element.In this situation, any means expression will give trouble and should be avoided.

On the Exam, the point of novelty (if it can be determined at all) will generallyreside in the combination of elements to perform a function, not the presence or specific structureof any one element. Therefore, one or two means clauses may properly be used, if desired, inaccordance with the rules of this Section. It is probably best if no means clauses are used in the

- 8 -


9/30

narrowest claim, although there is nothing wrong with that practice. Also, it would be best not tosubmit any claim made up of nothing but means clauses, even though this also is perfectly

proper. In other words, be selective.

A means clause had best not be used unless it is quite clear that the details of

construction of an element are not critical; rather that it is the function of the element which isimportant and that various other specific constructions may be used. Thus, in Example I, thereciprocating means illustrated is a motor-cam and cam follower linkage, but it is obvious thatvarious other common arrangements would be equally suitable, such as a piston and cylinder. Itshould be obvious that the essential thing to the combination is that the container be reciprocated,not how. Since many common structures could be employed to do this job, it is the ideal timefor the means clause.

In this example, it is difficult to draw a generic expression covering both themotor-cam arrangement and a piston-cylinder arrangement, as well as any other conventionalarrangement for reciprocating a member. As was mentioned in Section 11, an alternativeexpression, "cam or cylinder" cannot be used, even if that were considered broad enough, so ageneric expression must be found. Other attempted generic expressions such as "mechanism for reciprocating . . ." or "a mechanical device for reciprocating . . ." are just as subject to anobjection, if any, for undue breadth as is a means clause. However, the means clause has theexpress sanction of the statute, whereas the other expressions do not. Therefore, in this type of situation, it is recommended that a means clause be used if a claim of such breadth is desired.

By statutory construction (35 U.S.C. 112) the means clause "shall be construed tocover the corresponding structure . . . described in the specification and equivalents thereof."

For many years the popular wisdom was that a means plus function claim was the broadest possible claim that could be written. In 1994 the Court of Appeals for the Federal

Circuit issued an opinion in which they said that any term in a claim written in means plusfunction language was limited to that structure disclosed in the specification and equivalents tothat structure. In re Donaldson Company, 16 F.3d 1189, 1193, 29 USPO2d 1845, 1848 (Fed.Cir. 1994). For example, suppose the specification disclosed two elements A and B fastenedtogether with a screw and the claim required "fastening means connecting A to B." An accused

product in which A and B were attached together by a screw or a rivet would be within the claimsince a screw is the structure disclosed and a rivet is an equivalent mechanical fastener. But, if Aand B were welded together that structure would be outside the claim because a weld joint is notequivalent to a screw.

Another potential problem with means plus function claims is that the

specification must disclose a structure that performs the function. This problem most oftenarises in applications for computer related inventions. Therefore, if you write a means plusfunction element you must be able to point to a specific structure in the specification and thedrawings that corresponds to that element.

As many qualifying words or expressions should be employed in the means clauseas are necessary to limit the claim to the scope desired. Thus, one might reciprocate to limit the

- 9 -


10/30

claim to the scope desired. Thus, one might recite (with respect to unspecified structures) suchexpressions as:

"resilient means, connected between the carriage and the base, for urging thecarriage against the stop;"

or

"means, actuated by the carriage at the end of its forward movement, for movingthe bending figures into contact with the carriage."

In these fragmentary expressions, it should be noted that such elements as "thecarriage" and "the bending fingers" must have been recited in previous elements of such claims,as mentioned in Section 11 on Antecedents.

Where no such qualifying expressions are important, none should be used.

The student should avoid means expressions where there is a definite genericword of the same scope available. Thus, in Example I, "a base" is fully generic, and there is noneed to say "base means", "means for supporting" or the like. Also, "a container" is sufficientlygeneric, so that there is no need for "container means" or "means for containing." Note that inthese situations, the word doesn't add a thing; "container means" is not one white broader than "acontainer." Don't wave a red flag (or even a pink one) at the Examiner unless there is somethingto be gained. Furthermore, the Federal Circuit has construed expressions at a structure followed

by the word means as not being a means plus function clause.

As for the recitation of the "legs" in claim 1, a problem in scope of claims is presented. The legs could have been more broadly expressed by "means for mounting the

container on the base for reciprocating movement with respect thereto." This expression is of course much broader than the pivoted legs for doing the same thing and it is interesting to notethat the claim now reads on the spring mounting of Fig. 3. However, a line must be drawnsomewhere and, in this case, it was for purposes of illustration drawn to include the pivoted legsas elements of the claim. Fig. 3 shows a simple mechanism by which the wording of claim 1may be circumvented. The example of the Exam will probably include more structure than thissimple shaker, so that the problems in claim scope will be less acute.

As to what specific elements are included in the means clause, the clause includeswhatever elements are disclosed in the specification to perform the recited function. A meansclause may read on a single element or train of fifty cooperating elements. In the "means for reciprocating" clause given, it covers the motor, the cam, and the cam follower attached to thecontainer.

Further, there is no objection to having one or more specific elements of structureincluded as a part of two different means clauses, so long as the entire train of parts to performeach function are not identical.

- 10 -


11/30

Example II - Take-Up Barrel

In this example, the object is to collect an advancing strand (11) in a barrel (12).The strand is advanced toward the barrel by a conventional capstan (13). Assume that this muchis well known. The barrel is rotated on a turntable (14) by a motor (15), pulley (16), belt (17)and pulley (18). This operates to vary the point of strand collection circularly of the barrel, asshown in Fig. 1. An eyelet (20) is used to guide the strand into the barrel. The eyelet isreciprocated by the same drive motor (15), a pulley (21), a belt (22), a pulley (23), a cam (24)and a cam follower (25) on a shaft (26) of the eyelet (20). This varies the collection pointlinearly.

- 11 -


12/30

A fairly broad claim to the complete combination follows:

2. Apparatus for collecting an advancing strand in a barrel, whichcomprises:

a. a turntable on which the barrel is mounted for rotation on acommon axis therewith;

b. a strand guide positioned above the barrel for guiding theadvancing strand into the barrel;

c. means for rotating the turntable so that the point of collectionand the stand varies circularly of the barrel; and

d. means for reciprocatin g the guide so that the point of collectionvaries linearly of the barrel.

This claim illustrates the use of two means clauses having some commonelements. That is, both the rotating means (c) and the reciprocating means (d) include themotor 15 and its shaft. However, they also include the different elements, starting with the two

pulleys 16 and 21 on the motor shaft. For this reason, two means clauses are proper.

From a functional standpoint, the elements (c) and (d) could equally well have been driven from separate motors. Therefore, the claim would be unnecessarily limited if asingle drive motor for both were recited. The invention obviously is not in using a single drivemotor to drive two moving parts synchronously; that is a common industrial expedient. Theinvention, if any, must relate to the fact of simultaneous rotation and reciprocation, not how thesame is accomplished.

Claim 2 further illustrates such general principles of mechanical combinationclaims as preparing the preamble, selecting the essential elements including means expressions,and listing them in a logical order and tying them together structurally and functionally toaccomplish the result stated in the preamble. These are the most important elements of claimdrafting.

Section XI - Antecedents

The first time an element or part, is mentioned, the indefinite article "a" or "an"should be used, as in claim 1. The "means for" clause requires no article. When each element or

part is referred to again, the definite article should be used as "the container", "the base", or "thereciprocating means" in claim 1. The word "said" is used by many practitioners rather than "the"to refer back to previously recited elements; sometimes to a previously recited anything. This

practice is unobjectionable, although perhaps overly legalistic. If "saids" are used, the studentshould be consistent in the usage. One common style is to use "said" only for the elementsthemselves, and "the" for everything else. The expression "the said" that one sometimes sees is a

patent redundancy and should be avoided.

- 12 -


13/30

Section XII - Alternative Expressions

It is ordinarily improper to use alternative expressions for an element or part in aclaim. Thus, it is improper to state:

"a spring or a weight for urging the carriage against the stop."

Where a number of alternative or equivalent structures will serve the operational or functionaltask of the element, means plus function language should be used, as:

"means for urging the carriage against the stop."

In effect, this would be two claims. The way to avoid alternative expressions is to find or inventsome expression which is generic to both embodiments or species.

One exception to this rule is that "or" can be used when the terms on either side of the phrase are equivalent, such as "a base or bottom." While such an expression is acceptable,

you should not use these expressions because they are always open to challenge. Another proper use of alternative expressions is in chemical composition claims which recite base chemicals andcompounds thereof. We often see the phrase "or salts thereof."

Section XIII - Parts or Features of Elements

It is necessary to describe everything about each element that is pertinent to aclaim of the scope to be drafted. That is, where material to the claim, one must describe suchfeatures as (1) the constituent parts of the element and how they are related; (2) details of construction like apertures, rounded ends, etc.; (3) the size, shape and geometry of the element or any of its parts; and (4) the materials of construction used. The foregoing list is illustrative, notexclusive. The rule is to describe everything about the element that is necessary to theoperability of the invention and no more. Of course, the claim drafter must draw dividing lines

between the elements of the claim and the parts of elements; sometimes an item of structure may be made either a separate element or a part of an element, depending on how the elements aredivided.

If many features are essential, they are described in some logical order, usually amatter of choice, using subordinate clauses as necessary. One example of a description of amoderately complicated element:

"a carriage on which the bending fingers and the article holder are mounted, the

carriage being mounted in the guideway of the base for sliding movement between the first andsecond stops, the carriage having a guideway in its upper surface in which the article holder ismounted for relative sliding movement toward and away from the bending fingers,"

Only as much detail is stated as is necessary to the operability of the invention, and in the easiestway possible.

- 13 -


14/30

It is ordinarily best to describe all of the salient features of each element in theclause pertaining to that element, even though the purpose for a feature does not appear untillater in the claim. The student will note that claim 1 does not include any features of theelements, as this was not necessary to describe the simple shaker intended to be claimed.However, assume that the shaker is to be claimed as a popcorn popper. In this case, the holes in

the floor of the container (Fig. 1) are important and must be defined.Clause (a) of claim 1 might read:

"a container for kernels of corn to be popped, having an apertured bottomthe apertures of which are smaller in size than the kernels;"

Other examples of expressions defining features of elements.

"a disc of resilient material having a peripheral groove . . ."

"a relay having two windings . . ."

"a lever having a forked end and a rounded end . . ."

If only the forked end is important to the operability of the combination being claimed, don'tmention the rounded end.

If an element by definition inherently includes a certain feature, such feature neednot be recited, and it is proper to refer to it later. Thus, it is proper to refer, without previousmention, to:

"the end of the lever . . ."

"the periphery of the disc . . ."

"the tine of the fork . . ."

In devices which have holes, the hole may not be an affirmative element of theclaim. Rather, it must be recited in connection with the element in which the hole is located or

by which the hole is created. That is, instead of stating "a hole, groove, aperture, recess, slot, etc.in the lever, one must state ", the lever having a hole, groove, etc." Another example may be "a

pair of C-shaped guide members placed end to end to form a passageway."

Section XIV - Order of ElementsThe elements of the claim should be presented in some logical order. Often, there

are several orders which make sense, and any one may be selected. The order used in claim 1 isa more-or-less "functional" order, starting with the element (the container) which first contactsthe workpiece and proceedings along functional lines to describe the remaining elements.

- 14 -


15/30

Another order which is often used is a "structural" order, starting first with the base, or the source of power, and proceeding along structural lines to describe the remainingelements. In structural form, elements (a), (b) and (c) of claim 1 would read:

a. "a base;

b. a plurality of parallel legs, each of which is connected pivotallyat one end to the base;

c. a container for the articles connected pivotally to the other endsof the legs so as to permit reciprocating movement of the container with respect to the

base."

The students should note that exactly the same structure and movements have been described, only more words are required. The structural order is a common, and fairly easy,order to follow. It may be used always or preferably whenever no more logical order occurs tothe claim drafter.

The student should note that the claim would be illogical and difficult to follow if one attempted to start with the legs or with the means for reciprocating.

Section XV - Tying the Elements Together

It is very important that the essential cooperation between each element of theclaim and one or more other elements be specified. If no such cooperation is stated, the claimwill usually be rejected for this reason alone; for example, as being for "a mere catalog of elements" or, more graphically, as "reading on so many parts lying in a box." This is sometimescalled an "aggregation," but what is really meant in such a rejection is that the combination isaggregative as claimed. The claim must be to an assembled, operable, mechanical combination,not to a mere parts list such as one might find in the corner of a production drawing.

While it is difficult to set out ground rules of this en vacuo, a good general rulemight be that each element or part must be connected or related functionally to at least one other element or part. Don't leave even one element hanging in the air with no apparent connection toanything else or function in the combination. For example, don't recite "a lever having a forkedend," and then fail to recite the purpose of the forked end. It is better to err on the side of statingtoo much connection and cooperation between the elements, rather than running the risk of defining an unintegrated structure. Remember - toe bone connected to the foot bone, foot boneconnected to the ankle bone, etc.

A good way to test a claim is to attempt to sketch the device being claimed,drawing each element where the claim tells you to put it. If one finds that an element could bedrawn anywhere, it has not been tied to the other elements and the claim is defective.

- 15 -


16/30

Structurally

A structural connection between the elements (a), (b) and (c) of claim 1 is foundin the expression "each of which is connected pivotally at its opposite ends to both the container and the base." This ties the first three elements together mechanically. The "means" clause,

when used, usually carries its own inherent structural and operational connection to whatever element is the object of the means clause.

Functionally

In addition to the structural cooperation, it is good practice to specify thefunctional or operational cooperation between the elements. When this is done, the claim notonly tells what the parts are and how they are mechanically interconnected or associated, it tellshow they function together and operate on the workpiece to accomplish the result stated in the

preamble.

Functional, or operational, connectives in claim 1 are such expressions as "for thearticles," "so as to permit reciprocating movement of the container with respect to the base," and"to shake the articles in the container."

Section XVI - Functional Expressions

The student may have heard (probably inexplicit) statements derogatory of functional expressions, and may wonder if they should be avoided altogether. The answer isdefinitely no. When properly used, statements of function or operation are usually welcomed bythe Patent Office. When not used to excess or to introduce unnecessary limitations into theclaim, they make the claim more definite and easy to understand without referring to the

specification and also help sell the claim to the Examiner.It is important to avoid any attempt to predicate patentability solely on a purely

functional statement. In mechanical claims, the recited structure itself must contain at least somenovelty over the prior art, but unquestionably functional recitations help to sell the claim in manycases once novel structure has been described.

There is never any objection to functional statements that merely set forth themovements, actions or results which necessarily follow from the structure previously recited.Thus, in claim 1, the capability of the container for reciprocating movement follows once the

pivoted mounting of the container on the base has been stated. No particular words arenecessary for functional statements. Such expressions as "so that" or "whereby" somethinghappens, or "in order to" permit some movement are typical.

Whereby Clauses

In particular "whereby" clauses have come in for quite a bit of judicialconstruction. They are entirely unobjectionable when properly used, and are really quite helpful.A whereby clause is proper when it merely describes a function or operation which necessarilyfollows from the previously recited structure. Such a clause is improper if the function does not

- 16 -


17/30

follow, as in such case the drafter is obviously trying to imply structural relationships. The casesare practically unanimous in holding that the object of a whereby clause cannot be considered todetermine patentability of the claim. Therefore, equate "whereby" with "it follows from theforegoing that . . . "

One example of a whereby clause, used in connection with the popcorn popper discussed in Section 12:

"a container for the articles having apertured walls, the apertures of whichare smaller in size than the articles to be shaken whereby the articles are retainedin the container as they are shaken;"

The retaining function necessarily follows from the recited structure, thus, thewhereby clause is proper. Contrast the foregoing clause with the following:

"an apertured container for the articles whereby the articles are retained inthe container as they are shaken;"

Even though the same whereby clause is used, it is here improper because itattempts to define a structural relationship (the relative sizes of the apertures and the articles) in

purely functional terms.

Whereby and similar clauses (such as "so that . . .") may be used either:

(1) at the end of the description of any given element where everythingnecessary to the clause has then been set out; or

(2) at the end of the claim where all that is necessary to the statement has not been set out until the last element has been described.

Section XVII - Electrical and Method Claims

Substantially all of the precepts discussed in this Part II on Apparatus Claimsapply to electrical circuits. The major difference is that the elements are electrical devicesinstead of mechanical parts, and the association or cooperation is electrical not mechanical. Onesimple example follows (no drawing needed):

1. A circuit for counting the number of faults in the insulation on aninsulated wire, which comprises:

a. means for applying a test potential between portions of theinsulation and the bare wire;

b. means for advancing the insulated wire past the potential-applying means; and

- 17 -


18/30

c. a pulse counter associated with the potential-applying meansand responsive to each pulse of current between the insulation and the wire for countingthe number of faults in the insulation.

Method, or process, claims are generally easier to write than mechanical claims.

Most of the rules previously apply to method claims. Method claims may be broad or narrow,chemical or mechanical (sometimes even electrical), and have all of the other variations as inmechanical claims.

The most important rule to remember is that the "elements" of a method claimmust be manipulative steps or acts usually, but not always performed in sequence upon an articleor workpiece. A claim which recites nothing more than the obvious method of producing anarticle or product is not patentable. The method steps are always participial phrases, such as:

"reciprocating the guide,"

"punching" a series of holes . . ."

"impressing a signal . ."

"coating the sheet with adhesive . . ."

"heating the mixture to a temperature of 180F . . ."

"separating the alcohol from the aqueous solution . . ."

"distilling the aqueous solution to separate the alcohol therefrom."

The last steps show generic and species method steps (if the manner of separationwere important).

The preamble of a method claim may be almost the same as for a mechanicalclaim. Generically, the following type of preamble is usually appropriate.

"A method of (or process for) performing a specified act or operation on a particular object, article or workpiece." Except for "a method" this is identical to the form proposed in Section 7.

Referring again to the take-up barrel of Example II, a method claim might read asfollows:

2. A method of collecting an advancing strand in a barrel, whichcomprises:

a. guiding the advancing stand into the barrel or at a guide pointlocated above the barrel;

b. rotating the barrel so that the point of collection of the strandvaries circularly of the barrel; and

- 18 -


19/30

c. reciprocating the strand back and forth above the barrel so thatthe point of collection varies linearly of the barrel.

The elements of a method claim must, of course, also be set forth in some logicalorder. The order of the elements in method claims is usually clearer than in mechanical claims.

In the method of claim 4, all three steps (guiding, rotating and reciprocating) occur simultaneously to accomplish the result. Quite often, the steps or operations must be performedin a given sequence, in which case the steps must be set out in their order of occurrence and thesequential order expressly stated as:

"A method for _____________________________ which comprises thefollowing steps, in sequence (or seriatum):

a. _______________________;

b. _______________________; and

c. _______________________.

Section XVIII - Claims to Both Method and Apparatus

The student will note that the barrel take-up has been claimed both as a methodand as an apparatus. There is nothing wrong with this if there is "an invention" in both of thestatutory classes.

Method Functional of Apparatus

The method must be more than the inherent function of the apparatus. As stated

in the first Guidelines of Patentability memorandum dated June 17, 1963 (792 O.G. 3):

"A rejection on this ground is proper where the disclosed machine will inherentlycarry out the steps of the process set forth in the process claims regardless of whether anapparatus claim is allowed, unless it appears that the process claimed can be carried out by somemachine which is not the functional equivalent . . . or by hand . . . The performance of a process

by hand is not necessarily limited to the use of hands alone, but includes the use of prior artapparatus actuated by hand."

Since the barrel could obviously be turned by hand, and the guide could besimilarly reciprocated, claim 4 meets this test quite easily.

While there is no objection to reciting apparatus limitations in method claims, theuse should be avoided insofar as possible. Of course, patentability cannot be predicated on thestructure of a mechanism used in practicing the method.

- 19 -


20/30

Thus, claim 4 might have included:

"rotating a turntable on which the barrel is mounted . . ."

reciprocating a strand guide positioned above the barrel . . ."

Section XIX - Chemical Processes

An example of a chemical process follows (no drawing needed):

1. A process for treating the surface of a polyethylene article to increaseits receptivity to printing ink, which comprises:

exposing the surface to a saturated solution of sodium dichromate in concentratedsulfuric acid.

There is no objection, as to form, to a single-step method. This illustrates the rarecase of a claim that is not to a combination.

When the steps must be performed in a prescribed sequence, expressionsindicative of the order may be used as:

"first, second, then, next, subsequently, after the embossing step, etc."

Claims to articles of manufacture differ little in principle from apparatus claims,and most of the general rules previously given apply here. Preparation of this type of claim isusually not requested on the Exam. Basically, the article will ordinarily be a combination of elements, which must be named and tied together as with the elements of a mechanism.

The preamble of an article claim merely names the article to be claimed, such as:

"a resistor"

"a soap dish"

"a girdle"

The elements of the claim are the constituent parts which go to make up thearticle being claimed. One simple article claim follows (no drawing needed):

2. A resistor which comprises:

a. a cylindrical ceramic core;

b. a coating of carbon deposited on the core by decomposition of a hydrocarbon gas; and

- 20 -


21/30

c. a stripe of a conductive metal at each end of the core inelectrical contact with the carbon coating.

Section XX - Markush Expressions

This type of expression may be used in "chemical type" cases only. It is a sort of a home-made generic expression covering a group of two or more different materials (elements,compounds, etc.) which have a common property which allows them to work in the combinationclaimed. There is no generic name for the group. All students should have some familiarity withthis type of expression, as questions on this subject have been asked on the Exam. Markushterminology may be used in claims in any of the statutory classes of utility patents, wherever several alternative types of materials are involved.

In the resistor of claim 6, if the only metals which would work properly for theterminal stripe were cooper, silver and tantalum (which metals do not belong to a commonchemical group), or if for any other reason a claim limited to these three materials were desired,clause (c) of claim 6 would read as follows:

"a stripe of a conductive metal selected from the group consisting of cooper, silver and tantalum at each end of the core in electrical contact with thecarbon coating."

The underlining denotes the Markush phraseology. It should be followed exactly.

"A selected from the group consisting of and * _____________________."

In particular, the student should note that the word "consisting" limits the claim tothe previously named materials, as mentioned in Section 4.

Similarly, if the hydrocarbon gases were to be limited to methane, ethane,ethylene and propylene, clause (b) of claim 6 would read, in part:

". . . by decomposition of a hydrocarbon gas selected from thegroup consisting of methane, ethane, ethylene and propylene."

*Section 2173.05(h) of the M.P.E.P. permits the use of the word "or" in place ofandin a proper Markush group.If "wherein R is a material selected from the group consisting of A, B, C and D" is a proper limitation then "whereinR is A, B, C or D" shall also be considered proper.

- 21 -


22/30

Section XXI - Product-by-Process Claims

This type of claim is permissible only where the product cannot be definedsatisfactorily in any way other than in the manner in which it was made. Otherwise, the productmust be defined in terms of what it is, not how it was made.

Claim 6 illustrates the product-by-process form in the recitation:

"a coating of carbon deposited on the core by decomposition of ahydrocarbon gas."

This type of description would be necessary to define the novelty of the article if carbon coated resistors were old with the carbon put on in some other way; for example, bylacquering. It would be permissible as to form if the carbon coating produced by decompositionof the hydrocarbon gas were superior mechanically and/or electrically to the prior art coating,and if the mechanical or chemical differences were not known or could not be stated.

Another example where this form could be used is in the treated polyethylenearticle of claim 5. One might claim:

1. A polyethylene article having a surface treated in accordance with the process of claim 5.

This claim also illustrates claims in two statutory classes for the same invention,and a usage for the dependent claim.

Composition claims are also usually combination claims, except where a newmolecule per se is claimed. This paper will not attempt to go into detail on the various problemsinvolved in drafting composition claims; however, the general principles given previously applyalso to these claims. Composition claims are ordinarily easy to prepare as to formulating aclaim; the main problems are as to the allowable scope of the claims.

One sample example follows:

2. A zinc electroplating solution consisting essentially of:

a. an aqueous solution of zinc acetate, from 30 to 90 grams per liter;

b. citric acid, from 1.5 to 3 times the zinc acetate concentration;and

c. an alkaline pH modifying substance in an amount sufficient toadjust the pH to a value of from 4 to 5.5.

- 22 -


23/30

In a composition claim, it is not essential to state the intended use for thecomposition in the preamble. The label "a zinc electroplating solution" will not save this claim if the claimed composition per se is old, for another use.

Section XXII - New Use Claims

If the composition of claim 6 were old and for some other (and hopefullyunrelated) purpose, one would need to employ a "new use", now expressly sanctioned by35 U.S.C. 100(b). Such a claim is nothing more than an ordinary method claim, the maindifference being that the novel feature is not (or need not be) in the manipulative steps of themethod; rather, the novelty resides in the use of the old composition for a new purpose. Such aclaim would read:

1. A method for electroplating zinc, which comprises the step of electrolyzing a solution consisting essentially of:

a. an aqueous solution of zinc acetate, from 30 to 90 grams per liter;

b. citric acid, from 1.5 to 3 times the zinc acetate concentration;and

c. an alkaline pH modifying substance in an amount sufficient toadjust the pH to a value of from 4 to 5.5.

The student should note also that the method of treating polyethylene of claim 5 isreally a new use claim, the treating solution being apparently known for other uses, such ascleaning test tubes.

The compositions may be a new molecule, a compound, a mixture, a solution, etc.Anything where the ingredients making up the composition are the critical thing rather than theconstruction, shape, etc. of a part. A claim to a new molecule:

"A new composition of matter, comprisingR-CH=N-S-X,

wherein R is selected from the groupconsisting of methyl, ethyl andisopropyl; andX is selected from the group consistingof chromium and bromine."

This claim further illustrates Markush terminology.

Thus far, we have been concerned with straightforward independent claims for each of the statutory classes. The following sections will consider some specialized forms of claims, which may be used in any statutory class.

- 23 -


24/30

Section XXIII - Dependent Claims

Dependent claims are claims which refer back to and further restrict a single preceding claim. See Section 608.01(a) M.P.E.P. The dependent claim incorporates byreference everything in the preceding (or parent) claim, and adds some further statements. The

statements added may be either (1) one or more additional elements and/or (2) a further description of or limitation on more or more of the elements of the parent claim.

There is no objection to a dependent claim where the "single preceding claim" isalso a dependent claim, but the student should be careful that a string of dependent claims doesnot become harder to follow than an independent claim would have been.

In preparing claims of varying scope for the Exam, the intermediate and narrowclaims may be either dependent or independent, at the election of the student. Dependent claimsmight offer an advantage in that they are faster and easier to write, and easier to review. Also, itis known that the Patent Office favors the use of dependent claims.

As a matter of regular practice, the dependent form should never be used unlessthe claim drafter is sure that he really wishes to present a claim which includes every limitationof another claim, but adds some significant element or feature. He must satisfy himself thatevery limitation in the first claim is also necessary in the second. There appears to be a tendencyamong some who use dependent claims extensively to over use them, by failing to present asecond independent claim where appropriate that does not include all the limitations of the firstclaim.

One simple format for dependent claims follows (refer to Example I):

1. A shaking apparatus as recited in claim 1, in which the reciprocating

means comprises:

a. a motor;

b. a rotary cam driven by the motor;

a. a cam follower engaging the cam; and

b. a link pivoted at one end to the cam follower and at its other end to the container to permit oscillation of the container on the legs of the container isreciprocated.

In claim 10, one of the elements is defined in greater detail; specifically the means element is broken down into four constituent parts.

In order to illustrate a dependent claim that adds an element to a preceding claim,refer again to Example II, the take-up barrel. Assume that a photocell circuit (not shown) is

provided to detect when the barrel 12 is full, and that this photocell operates (1) a pair of shears positioned between the barrel and the eyelet 20 to cut the strand 11, and also (2) an accumulator positioned between the eyelet and the capstan 13 to collect the strand for a short time while a

- 24 -


25/30

new barrel is placed on the turntable. A dependent claim to this combination might read asfollows:

2. A collecting apparatus as recited in claim 2, including the followingadditional elements:

a. means for detecting a predetermined amount of strand has beencollected in the barrel;

b. a cutter, operated by the detecting means, for severing thestrand between the guide and the barrel; and

c. an accumulator, operated by the detecting means, for accumulating the strand for a time sufficient to permit the substitution of an empty barrelfor the full barrel.

Note that "a cutter" is as broad as "cutting means", so that the means expression,

while possible, was avoided. However, a photocell is not as broad as "detecting means" so thatthe means expression was used. A weight-responsive switch could equally well have beenemployed to sense the time when the barrel is full.

Another format for adding an element to a claim follows:

A collecting apparatus as recited in claim 2, wherein means are provided for detecting when . . . etc.

One caution with dependent claims, particularly where elements are added, is tomake certain that the large combination is still consistent with the preamble, as discussed inSection 3. Sometimes the extra elements add so many additional functions that the old preambleis no longer suitable. When this occurs, it is best simply to use an independent claim. For example, if the foregoing example also included automatic means responsive to the photocell to

push the full barrel off the turntable and substitute an empty barrel, plus means for sensing the presence of the empty barrel on the turntable to reverse the accumulator and start collecting thestrand in the new barrel, there is now significantly more than a mere "apparatus for collecting anadvancing strand in barrel." Instead, there is a much more impressive combination.

"Automatic apparatus for continuously collecting an advancing strand in asuccession of barrels."

The continuous/automatic feature would undoubtedly be very important in suchan invention and should be written into the preamble. This is a main, overall feature of thecombination claimed. Such an advantage as that the strand is collected in neat little piles, if so,need not go into the preamble; one still has basically an "apparatus for collecting an advancingstrand," only a good one. A recitation of the neat little piles could be worked into the body of theclaim at the point where all the supporting structure and operation has been recited, perhaps by awhereby clause.

- 25 -


26/30

Section XXIV - Multiple Dependent Claims

37 C.F.R. 1.75(c) reads as follows for applications filed on or after January 24,1978.

(c) one or more claims may be presented in dependentform, referring back to and further limiting another claim or claimsin the same application. Any dependent claim which refers tomore than one other claim ("multiple dependent claim") shall refer to such other claims in the alternative only. A multiple dependentclaim shall not serve as a basis for any other multiple dependentclaim. For fee calculation purposes under 1.16, a multipledependent claim will be considered to be that number of claims towhich direct reference is made therein. For fee calculation

purposes, also, any claim depending from a multiple dependentclaim will be considered to be that number of claims to whichdirect reference is made in that multiple dependent claim. Inaddition to the other filing fees, any original application which isfiled with, or is amended to include, multiple dependent claimsmust have paid therein the fee set forth in l.16(d). Claims independent form shall be construed to include the limitations of theclaim incorporated by reference into the dependent claim. Amultiple dependent claim shall be construed to incorporate byreference all of the limitations of each of the particular claims inrelation to which is being considered.

Generally, a multiple dependent claim is a dependent claim which refers back inthe alternative to more than one preceding independent or dependent claim.

The second paragraph of 35 U.S.C. Section 112 was revised in view of themultiple dependent claim practice introduced by the Patent Cooperation Treaty. Thus,Section 112 authorizes multiple dependent claims in applications filed on or after January 24,1978, as long as they are in the alternative form (e.g., "A machine according to claims 3 or 4,further form (e g., comprising . . ."). Cumulative claiming (e.g., A machine according to claims3 and 4, further comprising . . ."). Cumulative claiming (e.g., "A machine according to claims 3and 4, further comprising . . .") is not permitted. A multiple dependent claim may refer in thealternative to only one set of claims. A claim such as "A device as in claims 1, 2, 3, or 4, made

by a process of claims 5, 6, 7, or 8" is improper. Section 112 allows reference to only a particular claim. Furthermore, a multiple dependent claim may not serve as a basis for any other

multiple dependent claim, either directly or indirectly. These limitations help to avoid undueconfusion in determining how many prior claims are actually referred to in a multiple dependentclaims.

- 26 -


27/30

Section XXV - Improvement or Jepson-Type Claims

This type of claim recites the old elements of a combination in the preamble to theclaim. The body of the claim recites only the new or modified elements. Such claims are usedwhere there is an improvement in one or more elements of an otherwise old and unchanged

combination, or if one or more new elements are added to an old combination. This type of claim may help avoid an "old combination" rejection. (See Section 27).

The original Ex parte Jepson form was:

"The combination with (old elements A, B, and C) of (new element D -defined both as to structure and how it cooperates with old elements A, B and Cto achieve a new result)."

In long claims the Jepson format is sometimes hard to follow as the body of theclaim begins with the key word "of", and there may be several other "of's" in the claim. Variousother formats are permissible, no magic words being necessary. One suitable andstraightforward form follows:

"In combination with a machine of the type wherein (conventionalelements A, B, C and D are provided for doing something to a workpiece), theimprovement which comprises . . ." or " . . . wherein the improvement comprises".

The new or modified elements then follow as in any other claim related structurally andfunctionally both to each other and to the elements in the preamble. It is advantageous to work the word "combination" into the preamble somewhere.

For a specific example, let us again consider the barrel take-up example and

assume this time that all of the elements shown in the drawing are quite old and well known.Assume that your client's only invention here is in the addition of the detector, cutter andaccumulator of claim 11.

A Jepson-type claim to the improved combination might read as follows:

1. In combination with a strand-collecting apparatus of the type whereinan advancing strand is collected in a barrel mounted on a rotating turntable, andwherein a reciprocating strand guide is positioned above the barrel to guide theadvancing strand into the barrel, the improvement which comprises:

a. means for detecting when a predetermined amount of strand has beencollected in the barrel;

b. a cutter, operated by the detecting means, for severing the strand between the guide and the barrel; and

c. an accumulator, operated by the detecting means, for accumulating the strandfor a time sufficient to permit the substitution of an empty barrel for the full barrel.

- 27 -


28/30

The student should note that the body of this claim is identical with that of claim 11, the only difference being in the preambles. It is a significant difference. In claim 11,your client invented both the basic system of claim 2 and the photocell system of independentclaim 11, whereas in claim 12 your client invented only the photocell system as an improvementon the basic system.

The student should also know that all of the elements recited in the preamble of aJepson claim are considered to have been admitted as prior art by virtue of their inclusion in the

preamble.

Section XXVI - Genus and Species

This situation arises where there are two or more alternative embodiments of aninvention; that is, where two or more different structures, steps, parts or compounds may be usedinterchangeably to accomplish the desired result. Examples of this are the legs and springs inExample I; the copper, silver and tantalum stripe of the resistor in Section 20; the separation of alcohol from a water solution by fractional distillation or by solvent extraction. A generic claimis one which defines the element with sufficient breadth to cover all of the species, while thespecies claims cover the elements one at a time. If no allowable generic claim is presented, arequirement for restriction is likely. Therefore, it is good practice to formulate a generic claim if at all possible.

If no concrete generic word is apparent, a means plus function clause may beappropriate to make a generic claim, under the rules outlined in Section 16. In chemical cases, aMarkush group will often be the answer, as discussed in Section 20. Of course, alternativeexpressions cannot be used to make a generic claim, as set forth in Section 11.

If a generic claim is found allowable, a reasonable number of species of thegeneric invention may be claimed in the same case under the provisions of Rule 141 (37 C.F.R. 1.141) provided all the claims to species except one are written in dependent form or otherwiseincludes all the limitations of the generic claim.

There is no special problem in drafting generic and species claims. The speciesclaims may be either dependent or independent, although the dependent form is especially usefulin this situation.

Section XXVII - Combination and Subcombination

Combination claims are all those that have been discussed in the examples so far.A subcombination is some element or group of elements that forms a part of the maincombinator. If the subcombination has utility by itself, it may be separately claimed, althoughrestriction will sometimes be required. Subcombinations usually relate to machines, but mayalso be present in methods, compositions or articles of manufacture.

As an example, the details of construction of the accumulator used with the barreltake-up arrangement of claims 11 and 12 of Section 23 and 24 would comprise such a

- 28 -


29/30

subcombination. If new, it could be separately claimed. Such a subcombination claim mightstart out:

"Apparatus for accumulating a stand, which comprises: . . ."

Restriction would probably be required since the subcombination may be used inother combinations and is separately classified.

Section XXVIII - Aggregation

A claim to an aggregation is fairly easy to draft, but is not proper subject matter for a patent. The statutory classes, particularly the class "machine", are limited by courtdecisions to "combinations"; that is, structures where the parts cooperable to achieve a result. Anaggregation is like a track team, while a true combination is like a football team. In a famouscase, a pencil with an eraser on the end was held to be unpatentable because it was anaggregation of parts and the statute did not authorize such claims.

A true aggregation relates to a defect in the structure, and a well-written claimwill not help. In Section 14, it was noted that a valid combination may be rejected as"aggregative as claimed" when the cooperation between the element is not properly described.

In drafting claims of varying scope, whether dependent or independent claims areused, the student should make certain that there is a significant difference between each claim.This is true both for the Exam and for regular practice. Of course, the differences between theclaims need not amount to patentable differences, but they should be as substantial as thesituation permits.

If you are asked to draft "broad, intermediate and narrow" claims the narrowclaim should properly recite by name all of the significant structure disclosed, omitting only thenuts and bolts. This claim should be fairly easy to construct if the structure, and operation areunderstood. The broad claim is the most difficult to prepare in that the student must analyze thestructure and pick out its essential elements, and decide how broadly to state them. Theintermediate claims should be fairly easy to prepare in that some significant elements and/or details of construction are either added to the broad claim or omitted from the narrow claim.

Any one of the three claims may be written first, whichever the student prefers or whichever seems easiest. Different practitioners advocate each of the three methods of

beginning. At least when under time pressure, perhaps a flexible approach is best: If the studenthas a clear idea for a broad claim, he should start with that; if not, he should simply write a claimand work it over. Having a claim done helps one think of variations. Then elements may be (1)added to make a narrow claim, or (2) omitted, combined or broadened to make a broader claim.

Note that if the student desires to use the dependent form of claim as his exampleof a narrow claim, this can only be done particularly if the broad or intermediate claims arewritten first.

- 29 -


30/30

In drafting "broad, intermediate and narrow" claims, if these or equivalent wordsare used, the student should make certain that the second claim includes everything in the firstclaim, and that the third claim includes everything in the second. It is impossible to state whichclaim is broad, which is intermediate and which is narrow if each claim is broader is somerespects than the other. It might turn out that the longest claim is, for all practical purposes, the

broadest claim if its limitations turn out to be necessary while the "broad" claim turns out to havea superfluous limitation. If two dependent claims are used, it would be best to make the thirdclaim depend from the second.

If you are asked merely to draft three claims "of varying scope," claim 3 need notinclude everything in claim 2.

While it is important to provide significant differences between the three claimsof varying scope that you are asked to prepare, the terminology and form should be as consistentas possible except where the differences occur. Don't give the same part different names in twosuccessive claims except where that is done to change the scope of the claim. Practitioners differ on the advisability of non-essential variations in language for regular practice. But most would

probably agree that this practice is inadvisable for beginners. The best practice is to use the sameterms that appear in the written description of the invention to assure that the claims are clear.

Conclusion

The role of the claim as set forth in 35 U.S.C. 112 is to particularly point outand distinctly claim the subject matter which applicant regards as his invention. It must not be so

broad as to encompass the prior art nor so narrow as to not provide effective protection. It mustalso be clear so that the public may know what it may do without infringing applicant's patentrights.

To achieve that objective you must learn and master the rules discussed in this paper. Then check every claim that you write for compliance with the rules. Claim drafting is askill that is acquired through practice. The more claims that you write the better you will

become at claim drafting.

Claim Drafting

Documents

Transcript of Claim Drafting