Creating/Amending Claims

Creating/Amending Claims

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Perhaps the most daunting part of drafting a patent application is the drafting of the claims, particularly for the novice practitioner.  Many practitioners begin drafting their patent applications with the claims.  This serves a few purposes.  First, it causes the practitioner to step back and think about the important features of the invention.  Second, it causes the practitioner to determine the language that will be used to describe an invention, such that they may use and define the language throughout the specification.  As discussed elsewhere herein, claims may be drafted in different ways by different practitioners, and a novice practitioner would be wise to study recent applications written by their supervising associate, partner, etc. 

One of the more difficult parts of drafting a claim is determining the scope of the independent claim.  Similar to the fence on your property, claims determine the metes and bounds of your patent.  Entire books are written on claim drafting, and as such we will not go into too much depth here.  However, this section will discuss the structure of claims (including the classes of claims), and differences between drafting independent and dependent claims.  This section will also provide a few examples.^[1]Books literally are written on this subject alone.  As such, students are encouraged to further their own education by personal study of other methods and claim philosophies.   

The Structure of a Claim

To properly analyze how to draft claims, we will first dissect the structure of an independent claim.  For the purposes of claim drafting, we first must step back and ask ourselves questions including:

• What problem is the invention seeking to solve?
• What is novel about this invention?
• What part or parts need the most protection?
• What features do you suspect will be the source of confusion or argument during litigation?

With these questions in mind, we can start to determine the structure of the claim.  As an example, let’s start with claiming a table. 

A basic independent claim for a table may look something like this:

1. A table, which comprises:

a surface;

one or more support legs; and

one or more attachments for attaching the one or more support legs to the surface, wherein the one or

more support legs are mounted in a direction orthogonal to the surface and extend downwardly therefrom.

Notice that this broad claim could apply to several different table modifications.  For example:    

The goal of claim drafting is that you want the language to be precise enough so it will protect the invention and overcome prior art, but broad enough so it will encompass other related modifications of the invention as well. 

Let’s break down a claim and discuss each of its parts: 

1. [patent class and preamble] A table, [transition phrase] which comprises:

[claim body] a surface;

[claim body] one or more support legs;

[claim body] one or more attachments for attaching the one or more support legs to the surface, wherein

the one or more support legs are mounted in a direction orthogonal to the surface and extend downwardly therefrom.

Keep in mind that this is just one such way to claim the invention.  The patent claim is one complete sentence.  Although it is often broken up into separate parts, recognize that it is still one complete sentence and abides by regular grammar principles.

The Patent Class and Preamble

The preamble is the introductory part of the patent claim and indicates the class (e.g. process, machine, manufacture, composition of matter, etc.) as well as any functional language (e.g. indicating the purpose or function of the invention, etc.).

Types of Claims

When drafting a claim set, often many types of classes will be used.  Without incurring extra fees, a patent application may include 3 independent claims, with 20 claims total.  As such, one independent claim of the 20 claims may be directed toward “A computer-implemented method, comprising the steps of: . . .,” while another independent claim may be directed toward “A computing device, comprising:  a processor; a memory; and a computer readable medium that when executed causes the computing device to . . .” Note that although these two independent claims may recite the same steps to be performed by a computer, the first is a process claim, while the second is a machine claim.

Process

A process claim is synonymous with a method claim, which involves a series of steps for making something.  The focus in this type of claim class is on the “steps” and not necessarily the physical elements associated with the invention.  Normally, in terms of infringement, an infringer would have to be responsible for each and every step of the method/process.  However, the law on this particular point is in transition.^[2]This law is in flux as the Federal Circuit has indicated that an infringer may not need to practice each and every step in order to be found liable.  Consider, for example, induced infringement or … Continue reading   Recognize that the more steps you have, the harder it may be to show direct infringement.  Additionally, also know that a method or process usually must be tied to a machine or transformation to be valid.^[3]For case law on this particular point, see, In re Bilski, 545 F.3d 943 (Fed. Cir. 2008); Gottschalk v. Benson 409 U.S. 63 (1972); Parker v. Flook, 437 U.S. 584 (1978); Diamond v. Diehr 450 U.S. 175 … Continue reading  

Machine

A machine claim can be an apparatus, a device, a system, a widget, etc.  As defined by the Supreme Court, a machine is “a concrete thing, consisting of parts, or of certain devices and combination of devices.” Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863).  This “includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.” Corning v. Burden, 56 U.S. 252, 267 (1854).^[4]In re Nuitjen, 500 F.3d 1346 (Fed. Cir. 2007). 

Manufacture

A manufacture claim typically refers to an article of manufacture, and describes a manufactured product.  This class differs from a machine in that an article of manufacture generally has no moving parts.  As defined by the Supreme Court, “manufacture” (in its verb form) is “the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.” Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980).  When used in its noun form, the term manufacture refers to “articles” resulting from the process of manufacture. Article is defined as “a particular substance or commodity: as, an article of merchandise; an article of clothing; salt is a necessary article.” 1 Century Dictionary 326 (William Dwight Whitney ed., 1895).

Composition of Matter

The last claim class is a composition of matter, which the Supreme Court has defined as “all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.”^[5]Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980).   This definition is somewhat problematic as a “composite article” may also be considered articles of manufacture, such as plywood.^[6]See, e.g., http://en.wikipedia.org/wiki/Composition_of_matter.   Generally, composition of matter covers a chemical compound or molecule.

Comparison

As a quick overview:

Class	General Rule
Process	It includes a method. It focuses on the steps of the method or process.
Machine	An apparatus, device, system, or widget.
Manufacture	An article (generally non-moving parts) produced by a process of manufacture.
Composition of Matter	Generally chemical compounds or molecules.

To emphasize, a patent claim must start with a clear indication of the class to which the invention belongs.  Further, as indicated above, the preamble may include functional language associated with the patent class.  Some examples of functional language include: “A device for pouring concrete…;” “A compound X for use as a medicament for treating gout…”  Where an invention is generally known (e.g. a table, etc.), a preamble may not need as much functional language to lay the framework for the invention.  However, where the general invention is completely novel, more functional language may be necessary to provide a proper context for the invention. 

Regardless, a general rule is that it is better to minimize the amount of language in the preamble.  This is because any language used therein may be construed as a limitation at a later time.  The courts again are not quite clear on this.^[7]See, e.g., American Medical Systems, Inc. v. Biolitec, Inc. (Fed. Cir. 2010).   However, to avoid potentially incorporating further limitations into your claim based on preamble language, it is best to try and minimize the preamble to only that which is necessary.^[8]See, e.g., Jason Rantanen “Preambles as Limitations,” Patently-O (09/13/10), last accessed 04/13/13, available at http://www.patentlyo.com/patent/2010/09/construction-of-preamble.html.

The Transition Phrase

A transition phrase follows the preamble and links the preamble to the body of the claim.  The USPTO has indicated that “[t]he transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.”^[9]M.P.E.P. § 2111.03.  

Specifically, the “[t]he transitional term ‘comprising,’ which is synonymous with ‘including,’ ‘containing,’ or ‘characterized by,’ is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.”  Conversely, the phrases “consisting of” or “consisting essentially of” are exclusive or closed-ended.^[10]Id.   For example, a claim reciting, “A compound comprising A, B and C” would encompass a compound that included A, B, C and D.  Conversely, a claim reciting, “A compound consisting of A, B and C” would not encompass a compound that included A, B, C and D.

The Body of a Claim

The body of the claim follows the preamble and transition, sets forth the elements of the invention, and describes, as appropriate, each of the elements.  With respect to the exemplary table claim discussed above, the body of the claim stated the elements of the invention (e.g. legs, surface, attachment) and provided some details with regard to the attachments and how they would be used to mount the legs to the surface, namely, in an orthogonal, downward direction. 

From an infringement point of view, the body of the claim should contain the so-called “meat” of the claim.  The preamble and class should be no more than a bare-bones introduction, with the transition phrase leading to the body.  But the body of the claim contains the actual limitations that define the scope of desired patent protection.  It is here in the body that we define the metes and bounds of the claimed invention – the “fence” or “map” – and ultimately add value and substance to the claim.

Simply put, the limitations in the body help keep everything in one place.  Although this is the recommended practice, words or phrases may somehow creep into the preamble, adding ambiguity to the claim set (e.g. is the preamble now a limitation?). 

What is claimed is:

Patent Class / Preamble + Transition Phrase:

Body Element 1; and

Body Element 2.

Dependent Claims

Often, the more novel aspects of an invention are initially found in the dependent claims.  Such claims incorporate each and every element enumerated in their respective parent claims – i.e. the claims they depend from – and then add in additional elements or limitations.^[11]See, e.g., 37 C.F.R. § 1.75; M.P.E.P. § 608.01(i).   

From a strategy point of view, it may not be wise to put too many limitations in the independent claim to start with as this may unnecessarily limit the claim.  For example, although very rare, the first claim set you submit to the USPTO may be allowed.  Such may be an indication that perhaps the independent claim was overly limiting on the first time around.

Based on this reasoning, practitioners may not find the line or the best balance between desired and eligible patent protection until after the examiner performs a search of the prior art and the first office action is received.

Let’s go back to our table example, but now filter in (assuming proper specification support, etc.) two dependent claims.

What is claimed is:

1. A table, which comprises:

a. a surface;

b. one or more support legs;

c. one or more attachments for attaching the one or more support legs to the surface, wherein the one or more support legs are mounted in a direction orthogonal to the surface and extend downwardly therefrom.

2. The table of claim 1, wherein the surface is in a rectangular shape.

3. The table of claim 1, wherein the one or more support legs include four support legs.

In the first dependent claim (claim 2), the dependent claim limits the surface of the table.  In the second dependent claim (claim 3), the support legs are limited with regard to the number of legs.  The point of these dependent claims is to put in limitations that will distinguish the invention from prior art.

Fallback Claims

More often than not, an application will not be allowed without a prior art rejection.  That is to say, typically an Examiner will find some piece of prior art that anticipates or renders obvious the independent claim.  As such, practitioners often add fallback claims to their claim sets.

For example, while an inventor may be positive that no prior art possibly exists, from time to time “hidden” prior art may exist that an inventor did not know about.  That is to say, since a patent application does not publish for at least eighteen months after the application is filed, it is very possible that no other prior art can be found until the “hidden” prior art is published. 

Since it is impossible to know the extent of any prior art that an Examiner may find, having a range of intermediate to narrow claims within a claim set may be beneficial during prosecution.  Here, the philosophy is that there is no need to give up an acre if a few square feet will do.  Using the table example above, a fallback claim such as “wherein the surface is in a rectangular shape” may be a much better fallback claim such as “wherein the surface is in a square shape,” since the rectangular shape limitation does not narrow the claim as much as the square shape limitation.

It goes without saying that learning to draft claims is an art that takes many years of practice.  Further, various clients may have different expectations.  As emphasized before, when learning to draft claims, study claims that your client has previously approved and/or claims that your coworkers have recently written.