Claim Drafting

1. Claim Drafting G & B Seminar2006 Ken Moore

2. Formalities of Claim Drafting • 35 U.S.C. 112, 3rd & 4th paragraphs. • ¶3: A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form. • ¶4: Subject to the [5th] paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

3. 37 CFR§ 1.75 (Jepson) • (e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order: • (1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known, • (2) A phrase such as “wherein the improvement comprises,” and • (3) Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.

4. 37 CFR§ 1.75 • (f) If there are several claims, they shall be numbered consecutively in Arabic numerals. • (g) The least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable. • (h) The claim or claims must commence on a separate physical sheet or electronic page. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material. • (i) Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.

5. 37 CFR 1.126 Numbering of claims. • The original numbering of the claims must be preserved throughout the prosecution. When claims are canceled the remaining claims must not be renumbered. When claims are added, they must be numbered by the applicant consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not). When the application is ready for allowance, the examiner, if necessary, will renumber the claims consecutively in the order in which they appear or in such order as may have been requested by applicant.

6. Parts of Claim • Preamble - only limiting if “breathes life and meaning into claim.” • Transitional Phrase • open-ended: comprising, including, characterized by • closed: consisting of • Body - list of elements/steps and their relationships

7. Formalities of Claim Drafting • MPEP 608.01(m) Form of Claims • The claim or claims must commence on a separate physical sheet or electronic page and should appear after the detailed description of the invention. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material. While there is no set statutory form for claims, the present Office practice is to insist that each claim must be the object of a sentence starting with “I (or we) claim,” “The invention claimed is” (or the equivalent). If, at the time of allowance, the quoted terminology is not present, it is inserted by the Office of Patent Publication. Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995).

8. Formalities of Claim Drafting • Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i). There may be plural indentations to further segregate subcombinations or related steps. In general, the printed patent copies will follow the format used but printing difficulties or expense may prevent the duplication of unduly complex claim formats.

9. Formalities of Claim Drafting • Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. The reference characters, however, should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. The use of reference characters is to be considered as having no effect on the scope of the claims.

10. Formalities of Claim Drafting • Claims should preferably be arranged in order of scope so that the first claim presented is the least restrictive. All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable. Where separate species are claimed, the claims of like species should be grouped together where possible. Similarly, product and process claims should be separately grouped. Such arrangements are for the purpose of facilitating classification and examination. • The form of claim required in 37 CFR 1.75(e) is particularly adapted for the description of improvement-type inventions. It is to be considered a combination claim. The preamble of this form of claim is considered to positively and clearly include all the elements or steps recited therein as a part of the claimed combination.

11. Formalities of Claim Drafting • MPEP 608.01(n) Dependent Claims • I. MULTIPLE DEPENDENT CLAIMS • Claims which are in improper dependent form for failing to further limit the subject matter of a previous claim should be objected to under 37 CFR 1.75(c). • The test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends ( 35 U.S.C. 112, fourth paragraph) or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim.

12. Formalities of Claim Drafting • The fact that the independent and dependent claims are in different statutory classes does not, in itself, render the latter improper. Thus, if claim 1 recites a specific product, a claim for the method of making the product of claim 1 in a particular manner would be a proper dependent claim since it could not be infringed without infringing claim 1. Similarly, if claim 1 recites a method of making a product, a claim for a product made by the method of claim 1 could be a proper dependent claim. On the other hand, if claim 1 recites a method of making a specified product, a claim to the product set forth in claim 1 would not be a proper dependent claim since it is conceivable that the product claim can be infringed without infringing the base method claim if the product can be made by a method other than that recited in the base method claim.

13. Multiple Dependent Claims • 35 U.S.C. 112, 5th paragraph. • A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.

14. 37 CFR§ 1.75 Claim(s) • (c) One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. 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. 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.

15. Multiple Dependent Claims • MPEP 608.01(n) Dependent Claims • I. MULTIPLE DEPENDENT CLAIMS • Generally, a multiple dependent claim is a dependent claim which refers back in the alternative to more than one preceding independent or dependent claim. 35 U.S.C. 112 authorizes multiple dependent claims, as long as they are in the alternative form (e.g., “A machine according to claims 3 or 4, further comprising---”). Cumulative claiming (e.g., “A machine according to claims 3 and 4, further comprising ---”) is not permitted. A multiple dependent claim may refer in the alternative 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. 35 U.S.C. 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.

16. Acceptable Multiple Dependent Claim Wording • Claim 5. A gadget according to claims 3 or 4, further comprising --- • Claim 5. A gadget as in any one of the preceding claims, in which --- • Claim 5. A gadget as in any one of claims 1, 2, and 3, in which --- • Claim 3. A gadget as in either claim 1 or claim 2, further comprising --- • Claim 4. A gadget as in claim 2 or 3, further comprising --- • Claim 16. A gadget as in claims 1, 7, 12, or 15, further comprising ---

17. Acceptable Multiple Dependent Claim Wording • Claim 5. A gadget as in any of the preceding claims, in which --- • Claim 8. A gadget as in one of claims 4-7, in which --- • Claim 5. A gadget as in any preceding claim, in which --- • Claim 10. A gadget as in any of claims 1-3 or 7-9, in which --- • Claim 11. A gadget as in any one of claims 1, 2, or 7-10 inclusive, in which ---

18. Unacceptable Multiple Dependent Claim Wording • Claim Does Not Refer Back in the Alternative Only: • Claim 5. A gadget according to claim 3 and 4, further comprising --- • Claim 9. A gadget according to claims 1-3, in which --- • Claim 9. A gadget as in claims 1 or 2 and 7 or 8, which --- • Claim 6. A gadget as in the preceding claims in which --- • Claim 6. A gadget as in claims 1, 2, 3, 4 and/or 5, in which --- • Claim 10. A gadget as in claims 1-3 or 7-9, in which ---

19. Unacceptable Multiple Dependent Claim Wording • Claim does not refer to a preceding claim: • Claim 3. A gadget as in any of the following claims, in which --- • Claim 5. A gadget as in either claim 6 or claim 8, in which --- • Reference to Two Sets of Claims to Different Features: • Claim 9. A gadget as in claim 1 or 4 made by the process of claims 5, 6, 7, or 8, in which --- • Reference Back to Another Multiple Dependent Claim: • Claim 8. A gadget as in claim 5 (claim 5 is a multiple dependent claim) or claim 7, in which ---

20. Multiple Dependent Claims • The limitations or elements of each claim incorporated by reference into a multiple dependent claim must be considered separately. Thus, a multiple dependent claim, as such, does not contain all the limitations of all the alternative claims to which it refers, but rather contains in any one embodiment only those limitations of the particular claim referred to for the embodiment under consideration. Hence, a multiple dependent claim must be considered in the same manner as a plurality of single dependent claims.

21. Claims • OBJECTIVE: Draft claims with broadest scope possible while avoiding the prior art (102,103), with clear and definite meaning (112, 2nd), and fully supported by disclosure of application (112,1st).

22. Definiteness of Claims • 35 U.S.C. 112, 2nd paragraph. • The specification shall conclude with one or more claims particularly pointing out, and distinctly claiming, the subject matter which the applicant regards as his invention.

23. Definiteness of Claims • Two separate requirements set forth in 35 U.S.C. 112, 2nd paragraph: • (A) the claims must set forth the subject matter that applicants regard as their invention; and • (B) the claims must particularly point out, and distinctly define, the metes and bounds of the subject matter that will be protected by the patent grant.

24. Definiteness of Claims • The first requirement is a subjective one because it is dependent on what the applicants for a patent regard as their invention. The second requirement is an objective one because it is not dependent on the views of the applicant or any particular individual, but is evaluated in the context of whether the claim is definite - whether the scope of the claim is clear to a hypothetical person possessing the ordinary level of skill in the pertinent art.

25. Subject Matter Which Applicants Regard as Their Invention • A rejection is appropriate only where applicant has stated, somewhere other than in the application as filed, that the invention is something different from what is defined by the claims. • Evidence that shows that a claim does not correspond in scope with that which applicant regards as applicant's invention may be found in: • Contentions or admissions contained in briefs or remarks filed by applicant • Affidavits filed under 37 CFR 1.132 • The content of applicant's specification is not used as evidence that the scope of the claims is inconsistent with the subject matter which applicants regard as their invention.

26. Subject Matter Which Applicants Regard as Their Invention • A claim which omits matter disclosed to be essential to the invention as described in the specification, or in other statements of record, may be rejected under 35 U.S.C. 112, first paragraph, as not enabling. Such essential matter may include missing elements, steps or necessary structural cooperative relationships of elements described by the applicant(s) as necessary to practice the invention. In addition, a claim which fails to interrelate essential elements of the invention as defined by applicant(s) in the specification may be rejected under 35 U.S.C. 112, second paragraph, for failure to point out and distinctly claim the invention.

27. Particularly Point Out and Distinctly Claim the Invention • The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is given notice of the boundaries of what constitutes infringement of the patent. • A secondary purpose is to provide a clear measure of what applicants regard as the invention so that it can be determined whether the claimed invention meets all the criteria for patentability and whether the specification meets the criteria of 35 U.S.C. 112, first paragraph, with respect to the claimed invention.

28. Particularly Point Out and Distinctly Claim the Invention • Applicants are their own lexicographers - They can define their invention essentially in whatever terms they choose so long as the terms are not used in ways that are contrary to accepted meanings in the art. • Applicant may use functional language, alternative expressions, negative limitations, or any style of expression or format of claim which makes clear the boundaries of the subject matter for which protection is sought.

29. Particularly Point Out and Distinctly Claim the Invention • The essential inquiry pertaining to this requirement is whether the claims set out and circumscribe a particular subject matter with a reasonable degree of clarity and particularity. Definiteness of claim language must be analyzed, not in a vacuum, but in light of: (A) The content of the particular application disclosure; (B) The teachings of the prior art; and (C) The claim interpretation that would be given by one possessing the ordinary level of skill in the pertinent art at the time the invention was made.

30. Particularly Point Out and Distinctly Claim the Invention • In reviewing a claim for compliance with 35 U.S.C. 112, second paragraph, the examiner must consider the claim as a whole to determine whether the claim apprises one of ordinary skill in the art of its scope and, therefore, serves the notice function required by 35 U.S.C. 112, second paragraph. If the scope of the invention sought to be patented cannot be determined from the language of the claims with a reasonable degree of certainty, a rejection of the claims under 35 U.S.C. 112, second paragraph is appropriate. • Breadth of a claim is not to be equated with indefiniteness. If the scope of the subject matter embraced by the claims is clear, and if applicants have not otherwise indicated that they intend the invention to be of a scope different from that defined in the claims, then the claims comply with 35 U.S.C. 112, second paragraph.

31. New Terminology • The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Applicants need not confine themselves to the terminology used in the prior art, but are required to make clear and precise the terms that are used to define the invention whereby the metes and bounds of the claimed invention can be ascertained. During patent examination, the pending claims must be given the broadest reasonable interpretation consistent with the specification.

32. New Terminology • New terms are often used when a new technology is in its infancy or is rapidly evolving. The requirements for clarity and precision must be balanced with the limitations of the language and the science. If the claims, read in light of the specification, reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits, the statute (35 U.S.C. 112, second paragraph) demands no more.

33. New Terminology • While a term used in the claims may be given a special meaning in the description of the invention, generally no term may be given a meaning repugnant to the usual meaning of the term. When there is more than one definition for a term, it is incumbent upon applicant to make clear which definition is being relied upon to claim the invention. It is appropriate to compare the meaning of terms given in technical dictionaries in order to ascertain the accepted meaning of a term in the art.

34. Relative Terminology • 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. 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. • 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.

35. Examples of Relative Terminology That May or May Not be Acceptable • "About" • "Essentially" • "Similar" • "Substantially“ ------------------------------------------------------ • "Type" • “Or like material" • “Comparable" • “Superior"

36. Narrow and Broader Ranges In the Same Claim • Use of a narrow numerical range that falls within a broader range in the same claim may render the claim indefinite when the boundaries of the claim are not discernible. Description of examples and preferences is properly set forth in the specification rather than in a single claim. A narrower range or preferred embodiment may also be set forth in another independent claim or in a dependent claim. If stated in a single claim, examples and preferences lead to confusion over the intended scope of the claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112, second paragraph, should be made.

37. Narrow and Broader Ranges In the Same Claim • Examples of claim language which have been held to be indefinite are: • A temperature of between 45 and 78 degrees Celsius, preferably between 50 and 60 degrees Celsius • A predetermined quantity, for example, the maximum capacity. • Material such as rock wool or asbestos.

38. "Effective Amount" • The common phrase "an effective amount" may or may not be indefinite. The proper test is whether or not one skilled in the art could determine specific values for the amount based on the disclosure. The phrase "an effective amount . . . for growth stimulation" was held to be definite where the amount was not critical and those skilled in the art would be able to determine from the written disclosure, including the examples, what an effective amount is. The phrase "an effective amount" has been held to be indefinite when the claim fails to state the function which is to be achieved and more than one effect can be implied from the specification or the relevant art. The more recent cases have tended to accept a limitation such as "an effective amount" as being definite when read in light of the supporting disclosure and in the absence of any prior art which would give rise to uncertainty about the scope of the claim.

39. Lack of Antecedent Basis • A claim is indefinite when it contains words or phrases whose meaning is unclear. The lack of clarity could arise where a claim refers to "said lever" or "the lever," where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference. Similarly, if two different levers are recited earlier in the claim, the recitation of "said lever" in the same or subsequent claim would be unclear where it is uncertain which of the two levers was intended. A claim which refers to "said aluminum lever," but recites only "a lever" earlier in the claim, is indefinite because it is uncertain as to the lever to which reference is made.

40. Lack of Antecedent Basis • However, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite. Inherent components of elements recited have antecedent basis in the recitation of the components themselves. For example, the limitation "the outer surface of said sphere" would not require an antecedent recitation that the sphere has an outer surface.

41. Functional Limitations • A functional limitation is an attempt to define something by what it does, rather than by what it is. There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper. A functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step.

42. Alternative Limitations • Alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. • One acceptable form of alternative expression, which is commonly referred to as a Markush group, recites members as being "selected from the group consisting of A, B and C." When materials recited in a claim are so related as to constitute a proper Markush group, they may be recited in the conventional manner, or alternatively. For example, if "wherein R is a material selected from the group consisting of A, B, C and D" is a proper limitation, then "wherein R is A, B, C or D" shall also be considered proper. • Alternative expressions using "or" are acceptable, such as "wherein R is A, B, C, or D." • An alternative format which requires some analysis before concluding whether or not the language is indefinite involves the use of the term "optionally."

43. Negative Limitations • The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation. So long as the boundaries of the patent protection sought are set forth definitely, albeit negatively, the claim complies with the requirements of 35 U.S.C. 112, second paragraph. • Any negative limitation must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement.

44. Product-By-Process • A product-by-process claim, which is a product claim that defines the claimed product in terms of the process by which it is made, is proper. A claim to a device, apparatus, manufacture, or composition of matter, may contain a reference to the process in which it is intended to be used without being objectionable under 35 U.S.C. 112, second paragraph, so long as it is clear that the claim is directed to the product and not the process.

45. Product And Process In The Same Claim • 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. • Such claims should 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.

46. "Use" Claims • Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112, second paragraph. For example, a claim which read: "A process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon." was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced.

47. Omnibus Claim • Some applications are filed with an omnibus claim which reads as follows: A device substantially as shown and described. This claim should be rejected under 35 U.S.C. 112, second paragraph, because it is indefinite in that it fails to point out what is included or excluded by the claim language. See Ex parte Fressola, 27 USPQ2d 1608 (Bd. Pat. App. & Inter. 1993).

48. 1. A chair comprising: a substantially horizontal seat portion; at least one leg member for supporting said seat portion; and a back portion mounted to said seat portion for supporting the headrest, wherein said seat portion is formed from a metal material, such as steel. Example