Claiming Strategies: Chapter 5

chapter 5

V. CLAIMING STRATEGIES

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(1)What Are Independent And Dependent Claims?

All patent claims are either independent claims or dependent independent claims. Independent claims stand alone, and do not reference any other claim. Thus, in the following claim set, claim 1 is independent because it does not reference any other claim.

1. A chair having only two legs.

2. The chair of claim 1, further comprising at least one leg made of wood.

3. The chair of claim 2, wherein at least a portion of the chair is covered with a fabric.

When filing a new patent application, claim 1 should always be independent. During prosecution, of course, claim 1 might be canceled or withdrawn, or it might be amended to recite dependency on a higher numbered claim. No matter. The examiner would renumber the claims, and place them in logical order, prior to issuance so that the first independent claim is once again numbered claim 1.

Dependent claims reference another claim, and are proper subsets of their parents, i.e. the claim(s) upon which they depend. Continuing with the example above, claim 2 is dependent because it references claim 1 by saying “”The chair of claim 1”. As proper subsets of their parents, dependent claims include all the limitations of the parent claim. To infringe claim 2, a competitor’s chair would not only have to have at least one leg made of wood (the limitation stated in claim 2), but it would also need to have only two legs (the limitation imported by reference to claim

Dependent claims are simply claims that reference another claim, as in “the apparatus of claim 1”.

1). Dependent claims can be dependent on either an independent claim, or on

V.CLAIMING STRATEGIES

A) Independent Versus Dependent Claims

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another dependent claim. In the example above, claim 3 might is dependent on claim 2, and includes all of the limitations of claim 3, plus the limitations of claim 2, plus the limitations of claim 1.

Dependent claims can depend on any other claim, even if that parent claim has a higher number. Thus, claim 2 could be dependent on claim 5 or 7, even though those claims appear later in the listing. Having a claim dependent on a higher number claim often occurs during patent prosecution as a result of cancellation of claims. For example, claim 2-10 could be dependent on claim 1, and then claim 1 is canceled or withdrawn. The applicant may then add a new claim 18, and amend claims 2-10 to be dependent on claim 18. Even claim 1, which is traditionally an independent claim, could be made dependent on another claim (say claim 15).

Since dependent claims are proper subsets of the claim(s) upon which they depend, people often ask why they are useful. After all, in the example above, a competitor would escape infringement by producing a chair with four legs, i.e. circumventing a limitation from claim 1, regardless of whether the competitor’s chair has wood legs or has a fabric covering. The answer is twofold.

First, dependent claims provide
fallback positions during prosecution
and enforcement actions. If claim 1
were filed today, for example, it
would be anticipated because two-
legged chairs have been around for
decades. Even if claim 1 somehow
made it past the patent office, and
issued in a patent, the claim would be
invalidated over the prior art during
litigation. If claim 1 were the only claim in the patent, the case would be over and the patentee would lose. Claim 2, however, recited the additional limitation that the two-legged chair must have a wooden leg. That claim might well be patentable because the prior art always used metal legs. Thus, inclusion of claim 2 in the patent application would have provided valuable fallback positions in case claim 1 were invalidated. The same is true for claim 3. Even if claims 1 and 2 are invalid over the prior art, it may be that the only two legged chairs with wooden legs were made entirely of wood, and had no fabric covering. In that case claims 1 and 2 would be invalid, but claim 3 would still be valid. In short, inclusion of dependent claims in a patent

A dependent claims is a proper subset of its parent(s), and provides a fallback position in case the parent claim is invalidated.

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following claims:

1. A method of making money for an author, comprising:

writing a book on patenting that includes at least 90 indexed figures;

publishing the book through a publisher, and receiving a royalty that provides sufficient income to meet the author’s reasonable household expenses without incurring debt.

2. The method of claim 1, further comprising the author having a house that is at least 1500 sq. ft.

3. The method of claim 1, further comprising the author purchasing a house with three acres of land,
a 7500 sq. ft. house, a pool, a stable, and a guest house for live-in maintenance help.

4. The method of claim 1, further comprising the author having a spouse and three children in the household.

By itself, claim 1 doesn’t establish how much royalty is sufficient to meet the author’s reasonable household expenses. Presumably that would be an issue of fact at trial, but it could be argued that “reasonable expenses” are no more than say, $5,000 – $10,000 a month.. However, the fact that the dependent claims are proper subset of independent claim 1 necessarily means that claim 1 is broader in scope than any of the dependent claims. That wouldn’t change the scope of claim 1, but it may well help the court to properly interpret claim 1.

This can be shown graphically. The Venn diagram below depicts claims 1 and 2. Since claim 2 is a proper subset of claim 1, the oval for claim 2 is depicted as smaller than, and positioned completely within the circle of claim 2.

application can provide useful fallback positions during patent prosecution, and then later on during litigation.

The second major benefit of dependent claims is that they help ensure broad interpretation of the claims upon which they are dependent. Consider the

Chapter V –Claiming Strategies 122

Figure 24 – Dependent claims Are Proper Subsets Of Their Patents

The inclusion of claim 3, however, requires the term “reasonable household expenses” must be interpreted broadly enough to support a 7500 sq. foot house, not merely a 1500 sq. foot house. Similarly, the inclusion of claims 4 and 5 requires the term “reasonable household expenses” to be interpreted broadly enough to include having a spouse, and sending three children to college at the same time. So to reiterate, adding dependent claims doesn’t change the scope of the claims upon which they are dependent. But their inclusion in applications and patents helps the court properly interpret the parent claims in a broad fashion.

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Figure 25 – Dependent Claims Help Interpret The Independent claims

(2)Multiple Dependent Claims

Multiple dependent claims are claims that refer to parent claims in the alternative. The following claim is multiply dependent:

6. The method of any of claims 1-5….

Multiple dependent claims are allowed in U.S. practice, but they are not recommended. For one thing, the Patent Office charges extra just to have multiple dependent claims, and then each of the dependencies counts as another claim for cost calculations. In the example above, the multiple dependent claim 6 would be counted as five different claims for cost purposes.

It should also be obvious to the reader that multiple dependent claims can themselves have dependencies. Thus, claim 6 may depend upon any of claims 1-5, and then claims 7-10 might depend upon claim 6. In that case each of claims 7-10 would also be counted as five claims for cost purposes.

In U.S. practice it is improper to use multiple-multiple dependent claims ; i.e., multiple dependent claims that are themselves children of a multiple dependent claim. Thus, if claim 10 recites “The widget of any of claims 1, 6,

The figure below depicts a Venn diagram of the varying scopes of claims 1-5, showing how dependent clams 2-5 can help interpret the scope of claim 1.

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or 9, comprising…” claim 11 might properly recite “The widget of any of claims 1, 2, or 3, comprising….” But it would be improper for claim 11 to recite “The widget of any of claims 1, 6, or 10, comprising…” because claim 10 is itself multiply dependent.

(3)Deciding On How Many Independent Claims To Use

Practically every invention can be described in many different ways. The first person to invent a wooden chair, for example, might have focused on the combination of four legs, a seat, and a back, but another person might have focused on the use of wood and nails to make a seating device. Ideally, one would claim the invention from both perspectives, and possibly others as well.

The standard way of claiming an invention from multiple perspectives is to use a combination of independent claims and dependent claims. As discussed above, the distinction is quite straightforward. Independent claims are those that stand alone, without dependence on any other claim, while dependent claims are those that recite some sort of connection to another claim.

In the following example, claims 1 and 6 are all in independent format, while claims 2-6 are all in dependent format. Note that claim 1 is almost always independent. Although the claims must be numbered sequentially during prosecution, there can be gaps caused by withdrawal or abandonment of claims, and the dependencies can be set forth in any order. Thus, it is entirely proper for claims 2-4 to be dependent on claim 1, claim 5 to be dependent on claim 2, and claim 6 to be dependent on claim 3. But is it also entirely proper for claim 6 to be dependent on claim 18! Prior to

issuance the patent office will renumber the claims in a logical fashion.

Interestingly, even though it sounds terrible, the wording of “the at least one connector” in claims 3 and 4 is entirely acceptable. The reason is that the drafter is using the definite article “the” to refer to a specific item for which there is antecedent basis, namely “at least one connector”. On the other hand it is usually unnecessary to write in such a stilted manner. It would be much better to initially refer to “a connector” and then later refer to “the connector”. The term “a connector” means “at least one connector”.

Most patent applications use a combination of independent and dependent claims.

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3. The chair of claim 1, wherein the at least one connector comprises a nail.

4. The chair of claim 1 wherein the at least one connector comprises a screw.

5. The chair of claim 4, in which the screw is at least 1 inch long.

6. A chair comprising a wooden frame supporting a

A
prefer all their claims to be independent. One advantage is that multiple

patent can have numerous independent claims. Indeed, some attorneys

independent claims make a patent more difficult to dismiss when a competitor’s attorney is drafting a non-infringement opinion. That result obtains because dependent claims cannot usually be infringed without the independent claim is also infringed. A patent with only one or two independent claims is also much easier to analyze than a patent with 1 independent and 19 dependent claims.

One rather odd advantage of having multiple independent claims is that the claim drafter can call an item by one name in one claim, and the same item by a different name in another claim. For example, the tip of a catheter may be described as “a tip” in one claim, and as “a tapered portion” in another claim. That distinction might turn out to be useful if the term “tip” is ever deemed to be overly vague during litigation.

(4)Independent Claims Increase Filing & Prosecution Costs

There are also serious disadvantages to having so many independent claims. One of the worst problems is that the patent office will often issue restriction

There are many potential benefits to using multiple independent claims.

1. A chair, comprising at least three legs, a seat, and a back, held together with at least one connector.

2. The chair of claim 1, having a fourth leg.

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requirements, forcing the applicant to prosecute each independent claim (along with its dependencies) in a separate patent application. Such restriction requirements are proper between two independent claims as long as it is possible to practice the combination of one of the independent claims without necessarily practicing the combination in the other independent claim. Another disadvantage is that the examiners typically dislike lots of independent claims. Attorneys sometimes forget that there is a human being on the other end of the patent application, and it does the attorney little good to unnecessarily annoy the examiner.

Another disadvantage is cost. The standard filing fee187 for a utility application with the U.S. patent office covers up to three independent claims and up to 20 total claims before additional filing fees are incurred. As of
January 1, 2016, additional fees for small entities (companies with less than 500 employees) are $210 per independent claim more three, and $40 for each claim more than twenty. The fees are half that for micro entities under the America Invents Act, and double that for large entities. See Chapter V, section G(1) for a discussion of different entity sizes.

187 http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule.

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filing cost.

It quickly gets worse. The first substantive action of the patent office will be to issue a restriction requirement, forcing the applicant to either abandon, withdraw, or divide out the various independent claims into perhaps five, ten,

or even up to twenty separate applications. Let’s say the applicant decides to pursue five separate applications. He now has to abandon or at least withdraw several of his originally filed claims with all the attendant prejudice resulting from that action. And in addition he must file another five divisionalFiling Strategies: Divisionals”Divisional Application” (i.e. child) patent applications to pursue the withdrawn claims. The out-of-pocket costs on those five divisional applications is 5 * 830 = $4,150, plus paralegal time to file the paperwork. The total cost of filing fees for the twenty original independent claims is now over $8,000 instead of the original $533. If this were a large entity, the unnecessary additional U.S. government filing costs would be over $16,000!

Even if the examiner doesn’t issue a restriction requirement, it is unlikely that all twenty claims will be granted together in the same patent. The more likely result is that after prosecuting all those independent claims for a few years, the patent office will deem three or four of the claims to be allowable. The applicant will pay the issue fee so that the allowed claims can go to issuance.

Those additional fees can add up quickly. Let’s say a large company files a patent application with 20 independent claims. The filing fees (for a small entity filing electronically) are the standard fee of $830, plus the penalty fees for the 17 extra independent claims, which comes to 17 * 210 = $3570, for a total of $4,400. Using all those independent claims more than quintuples the

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But that leaves seventeen non-issued claims, which must then be filed in a divisional application.

Figure 26 – Too Many Independent Claims Greatly Increase Filing Costs Of U.S. Patent Applications

Worse still, foreign countries will never allow so many independent claims. Thus, after drafting and filing a slew of independent claims for U.S. prosecution, the draftsperson will have to go back and convert some of the independent claims into dependent claims.

All of that is unnecessary. The application containing 20 independent claims could just as well have been drafted with one or two independent claims, and the remainder filed as dependent claims.

(5)Independent Claims Increase Cost Of Foreign Prosecution

Foreign filing can be excruciatingly expensive. Indeed, the problem is much worse where the applicant employs a large number of independent claims. Whereas a single U.S. application with a few independent claims may spawn a family of half a dozen or more foreign applications, the same U.S. application drafted with many independent claims will likely spawn separate families of foreign applications for each of the U.S. divisionals. This is a big reason that a patent family based upon a single U.S. application can end up costing the patent holder a million dollars in prosecution fees!

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In addition, the patent offices of many foreign countries refuse to deal with large numbers of independent claims. The EPO, for example, may allow an application to contain more than one independent claim, but only if the subject matter claimed falls within one or more of the exceptional situations.188 Otherwise the EPO will usually examine only the first independent claim, and issue a lack of clarity rejection, refusing to examine the remaining claims. The specific rejection will be that “the plurality of claims makes it difficult, if not impossible, to determine the matter for which protection is sought, and places an undue burden on others seeking to establish the extent of the protection”.

Thus, even if the U.S. patent office allows the applicant to keep several independent claims within the same utility application, a foreign patent office may still require the applicant to divide out the foreign application into several divisional applications. Since the expense is often too high to file all those divisionals, the applicant is forced to re-draft his claims to be dependent upon a single independent claim. That additional work is both unnecessary, and expensive. Among other things, all those new claims have to be translated. Indeed, both inventors and foreign associates often wonder why U.S. patents drafters fail to draft appropriate

claims in the first place.

As an aside, one wonders why the U.S. Patent Office doesn’t adopt a similar strategy to reduce the number of claims. As of January 1, 2016, the U.S. Patent Office had issued just over 9.2 million patents in the entire history of the country. And yet the Patent Office is currently

Figure 27 – Foreign Filing Costs Go Up Even More

Having a large number of independent claims is just not practical in foreign countries.

188 Article 54 in combination with Rule 29 (2) EPC.

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backlogged more than 557,163 applications.189

One solution previously floated by the Patent Office was to severely limit the number of continuations. That was a terrible idea. In our many years of experience, RCE type continuations are usually due to intransigence, inexperience, or illogic on the part of the examiner, and CIP type continuations are usually the result of the inventor having developed a significant improvement. In both cases the patent office should encourage rather than limit further prosecution. It’s a moot point anyway, because rules implementing that idea were deep sixed by the Federal Circuit.190

A better solution is to limit the total number of claims of any application to twenty or thirty, and the total number of independent claims to two or three. Yes, that would require those drafting the claims to do the heavy mental lifting of actually figuring out what the “invention” is before filing the application. But we know that can be done. Patent applicants already re-write their claims to meet similar requirements in several foreign countries.

(6)Use Of Many Independent claims Is A Smoke Screen

The added out-of-pocket cost of using too many independent claims is only part of the problem. The bigger problem is that filing a great many independent claims is often just a smoke screen for an attorney failing to do the difficult mental work of figuring out what the invention really is. Indeed the “value added” of good patent counsel lies not so much in his knowledge of the field of the invention, or the drafting of application per se, but in his conceptualizing of the “invention” at an appropriate level of abstraction. It is that latter skill that allows him to clearly identify and claim the inventive subject matter in a commercially valuable manner.

(7)Recommended Number Of Independent Claims

The patent office recommends that applicants keep their number of independent claims to three or less, and the total number of claims to 20 or less. This is good practice, and in many instances it makes sense to file an

Patent applicants

should generally

stick to three

application with only a single independent claim. One reason is that multiple independent claims are usually regarded as being directed to multiple inventions, even where they are simply method and

189 These and other fascinating facts can be tracked on the USPTO’s performance dashboard. www.uspto.gov/ independent

dashboards/patents/main.dashxml.

claims.

190 Tafas v. Kappos, 586 F. 3d 1369 (Fed. Cir. 2009).

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unfavorably from the start.

The main exception to filing applications with only a few independent claims is in filing PCT applications. The PCT deals with what they call “disunity” rejections by requiring the applicant to pay an extra fee for each “invention” arising from multiple independent claims. The fee used to be a bargain at only $220 per invention, but recently the PCT increased the fee to about $1,000 per invention. While no longer a bargain, that price is still often a good choice when compared to the cost of prosecuting multiple divisionals. When the application goes into national phase, the national phase country or region typically allows the applicant to keep all his claims together.

These suggestions should not be read to imply that only a single inventive subject matter should be disclosed in a given patent application. Quite the contrary. applications should be filed with several different patentable subject matters if they can be reasonably combined. The applicant can eventually claim all of those different subject matters in divisionals if need be. It’s just more cost-effective to direct the initial set of claims to a single patentable subject matter, and use subsequent divisionals and/or continuations to focus on the other subject matters.

(8)Claim Differentiation

There is also the doctrine of claim differentiation. That doctrine states that every claim in a patent should be interpreted to have different scope from every other claim. The effect is to force an independent (or parent dependent) claim to be read as having broader scope than its “child” dependent claim. This is readily appreciated by example. Consider once again the hypothetical chair claims discussed above:

In claims 1, 4, and 5, the idea of the connector being a screw was introduced in claim 4. Since claim 4 must have a different scope from claim 1, this necessarily means that claim 1 includes connectors other than screws. That logical conclusion was accomplished without ever claiming what the other choices are, and without ever even including the other choices in the drawing. This can be a significant advantage because in general every claimed element

apparatus claims directed to the same subject matter. Having several independent claims triggers a restriction requirement, and ends up forcing the applicant to either prosecute multiple applications or abandon some of the claims. Another reason is that examiners are presently overwhelmed with cases. A case with an unreasonably large number of claims can be viewed

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1. A chair, comprising at least three legs, a seat, and a back, held together with at least one connector.

2. The chair of claim 1, having a fourth leg.

3. The chair of claim 1, wherein the at least one connector comprises a nail.

4. The chair of claim 1 wherein the at least one connector comprises a screw.

5. The chair of claim 4, in which the screw is at least 1” long.

6. A chair comprising a wooden frame

that is susceptible to a drawing should have a drawing. Clever use of the doctrine of claim differentiation allows the person drafting the claims to inherently claim choices without ever having to expressly include them in the drawing figures. To continue with our example, child claim 5 has a similar relationship to its parent, claim 4. Claim 5 recites that the screw is at least 1 inch long, which necessarily means that claim 4 must be interpreted to include screws having a length less than or equal to 1 inch. Note that claim differentiation only works with dependent claims.

Interestingly, the judicially developed doctrine of claim differentiation cannot be used to trump the statutory limitations on the scope of mean-plus-function and step-plus function claims. As explained by the District Court of NJ in 2001.191 “A means-plus-function limitation is not made open-ended by the presence of another claim specifically claiming the disclosed structure which underlies the means clause or an equivalent of that structure. Indeed, the doctrine of claim differentiation cannot broaden claims beyond their correct scope, determined in light of the specification and the prosecution history and any relevant extrinsic evidence. Where the meaning of a term is

191 Akos Sule et al. v. Kloehn Co., 149 F. Supp. 2d 115, 128 (DC NJ 2001); Retractable Techs., Inc. v. Becton, 2011 U.S. App. LEXIS 13925 (Fed. Cir. July 8, 2011).

Claim differentiation can be a very valuable strategy.

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interpretation, similarity will have to be tolerated. Under the circumstances the disputed claim will bear only one interpretation. Thus, in at least these specific instances, similarity with other non-asserted claims will have to be tolerated”.

(9)Drafting Useful Dependent Claims

Those with less experience tend to draft dependent claims that are technically correct, but that have no real commercial benefit to the patentee. One common problem is trying to list all viable choices in a given dependent claim. For example, if a parent claim recites a mechanical connector, it does little good for the dependent claim to recite that the connector is selected from the list consisting of a nail, a screw, a bolt, a dowel, a tack, a brad, a clamp…” and so forth. If it turns out that the parent

claim is invalid because of prior art relating to the connector being a tack, then both the parent claim and the child claim will be invalidated. If the attorney had listed screws, bolts, and dowels in one dependent claim, and nails, tacks, and brads in another dependent claim, it is entirely possible that the first of those dependent claims would still be left standing.

Those with less experience also tend to draft dependent claims that are irrelevant. Remember, the main purpose of most patents is to keep competitors out of the marketplace, or to at least make their entry into the marketplace much more difficult. An extreme example of a worthless dependent claim is one directed to an ornamental aspect of a useful device. If the inventor developed a ballpoint pen having a new type of ink, the invention is in the ink, not in the color of the barrel of the pen. The selection of blue, black, or white barrel is merely a design choice having nothing to do with the inventive features. Dependent claims to the color of the barrel would do little more than emphasize that whoever drafted the claims needs to improve his drafting skills.

Don’t waste time and money on obvious dependent claims.

clear based on the relevant intrinsic and extrinsic evidence, pursuant to 35 U.S.C. § 112 P6, the doctrine of claim differentiation cannot alter that meaning.

Claim differentiation is a guide, not a rigid rule. If a claim will bear only one

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B)Target Claiming

One of the oldest and best strategies to secure strong patent coverage for an invention is to claim the inventive subject matter using target claiming. In that strategy the applicant drafts a broad claim, and then drafts successively narrower dependent claims relative to a particular parameter. For example, if a manufacturing process is discovered that is effective above pH 8, but works best at around pH 10.3, the broad independent claim might specify a method or apparatus in which the process takes place above pH 8. Dependent claim 1 might specify a pH range of 9.5 – 11.5, with dependent claim 3 specifying pH 10 – 10.5, and dependent claim 4 specifying approximately pH 10.3.

(1)Simple Target Claiming

The main purpose of target claiming is to retain some measure of protection against infringement even if prior art comes to the fore that would invalidate the broadest claim. This can be readily appreciated using a Venn diagram. The scope of claim 1 covers the subject matter of the entire target, which includes rings a, b, c, and d. Claim 2 covers rings “a”, “b”, and “c”, while claim 3 covers the inner rings “a” and “b”, and claim 1 only covers the innermost ring “a”. If invalidating prior art is discovered in ring c, then claims 1 and 2 would fall, but claims 3 and 4 have at least some chance of remaining valid.

Figure 28 – Simple Target Claiming

A second purpose of target claiming is to focus whoever is drafting the claims on alternatives to the preferred embodiment. Inventors have often spent a good deal of time and effort optimizing a working model of their invention. It sometimes requires the

Target claiming is one of the easiest and best strategies.

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wisely. Ideally, the targeted parameter is one that captures the essence of the improvement over the prior art. In the above example the parameter was pH. In other claim sets the targeted parameter might be size, or duration, smoothness, or something else. In some instances it may also be necessary to claim a combination of parameters, especially where those parameters tend to run counter to each other. For example, it may be that an inventive battery is novel because it has a combination of both higher conductivity and thermal stability. In that instance the targeting would have to recite both elements. Claim 1 might recite “a solid polymer battery having a conductivity of at least [x], and cycle life of at least [y] cycles”. (The x and y thresholds are given numbers here because exact numbers are irrelevant to the present discussion). claims 2 and 3 might recite the same conductivity, but successively higher cycle life. claims 4 and 5 might recite a higher conductivity, and the same successively higher cycle lives set forth in claims 2 and 3. Note that since a combination of two parameters is employed, a systematic targeting will likely require more claims than targeting of a single variable.

It should be apparent that a patents drafter could also use qualitative parameters to define the target. The only requirement is that the targeted parameter can be split into subsets. In a wine making patent for example, a process may be claimed in which an ingredient is added until the wine turns darker, with dependent claims reciting that the ingredient is added until the wine turns slightly darker, moderately darker, or considerably darker. Of course the terms “slightly”, “considerably”, and “moderately” should be defined in the specification. By way of further example, a broad claim could be directed to a covering towards the tip of a catheter, with dependent claims reciting that the covering is applied near the tip and at the tip. In those instances the specification needs to define “towards”, “near”, “at”, as well as the term “tip”.

Note also that the successively narrower claims can be set forth as independent claims, or as successive dependent claims. The use of dependent claiming structure is recommended for the reasons mentioned above.

inventor, or someone else, to step out of that mode and focus on the white space. The proper question is not “what was invented”, but “what do we want to stop competitors from doing.”

The key to effective target claiming is to choose the targeted parameter

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(2)Overlapping Target Claiming

Overlapping Target Claiming (OTC) is a more sophisticated version of target claiming. In OTC the patents drafter devises multiple series of claims that independently focus on different parameters. In the example given above it may turn out that in addition to pH, the success of the process is dependent upon adding a large excess of ethanol. claims 5, 6, and 7 could then be directed to adding at least two times,

three times, or four times as much ethanol as some other reagent, respectively.

The main advantage of OTC is that later identification of invalidating prior art would tend to invalidate a much smaller subset of subject matter. In the drawing below, the added claims 5-7 cover subject matters e, f, and g, such that only area x is eliminated from patent protection.

Figure 29 – Overlapping Target Claiming

There are many good examples of overlapping target claiming in the patents literature.US68438441‐92forexample,hasheavilyoverlappingclaims directed to producing a modified cellulose aggregate. In one series of claims, the independent claim lays out the critical few elements,

The remaining dependent claims recite alternatives to those features and add new elements.

Overlapping target claiming is even better.

192 U.S. 6843844 (Jan. 2005) ”Modified cellulose aggregate material”.

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26. A process for preparing a cellulose modified aggregate while simultaneously reclaiming submerged land comprising: selecting a cellulose based waste material; … grinding said treated material … so as to comminute said materials into fibers; adding fortifying solution …; treating said sun-dried fibers with at least one activating agent ….

Cellulose
27 = recycled paper
28 = industrial waste material 29 = natural waste material

30 = aquatic vegetation Submerged land

31 = lake, pond or swamp land

Fortifying solution
32 = comprises calcium oxide, silica oxide and water

34 = comprises fly ash
35 = comprises calcium sulfate, calcium carbonate

Activating agent
37 = calcium chloride, calcium

hydroxide Modifying aggregate

38 = adding water and cement 39 = adding sand

Preventing mold growth
40 = treat with an anti-mold

41 = anti-mold solution is ammonium sulfate
42 = use artificial heat source

Curing and drying
43 = cure at approximately 120

degrees Fahrenheit

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Figure 30 – Overlapping claims In US6843844193 (3)Targeting Different Examining Groups

A still more sophisticated aspect of target claiming is the filing of multiple applications designed to target different examining groups. The fact is that some examining groups have more manageable workloads than others, and some examiners are more willing to follow the law than others. It is just incredibly frustrating to have an application land in the lap of an examiner who is completely overwhelmed with work, and who keeps rejecting the claims for no good reason.

One way to deal with that problem is to write up the invention in several different claim sets, and then distribute the various claim sets among multiple applications. If this is done correctly, the different applications will be assigned to different examining groups and different attorneys.

For example, individuals from our office filed three separate applications addressing three different aspects of the basic ZeteraTM technology, using Internet Protocol (IP) to directly access different partitions of disk drives.194 One patent was directed towards communication protocols, systems and methods, the second was directed towards the IP accessible partitions, and the third was directed towards electrical devices with improved communication. The strategy was successful in directing the different applications to five different examining groups, and patents issued from all five applications. This cost a bit more money, but the applicant got claims allowed

early on, and ended up with a much stronger portfolio.

A corresponding strategy can be used in a single application. In that strategy a patent drafter intentionally includes multiple claim sets directed to different inventions in a single application. If the patent office issues a restriction requirement, the child applications will likely go to different examiners, and the applicant can then focus on one or another of the different applications depending on his experience (good or bad) with particular examiners. Some examiners are just intractable, and seem to think it is their God given duty to

193 U.S. 6843844 (Jan. 2005) “Modified cellulose aggregate material

194 U.S. 7602773 (Oct 2009) ”Communication Protocols, Systems And Methods”, 7643476 (Jan. 2010) ”Data Storage Devices Having IP Capable Partitions”, and US7698526 (Apr. 2010) ”Electrical Devices With Improved Communication”.

Directing multiple applications to different examining groups can be a great

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C)Write Short claimsShort Claims”Claiming Strategies: Short Claims”

(1)Short Claims Are Usually Broader Than Long claims

Many people think of patent claims the way they
think of ordinary real estate property claims. They
think that a long claim is like a bigger piece of
property; it has as more “stuff” in it and is more
valuable. But exactly the reverse is true. Every
word in a patent claim is another limitation, and
the longer the claim is the narrower it is. A shorter
claim is almost always better than a longer one,
and is more cost effective because it includes more subject matter. As a first example, consider the first person who invents a two-legged chair. Yes, a two- legged chair does exist.

Figure 31 – A Two-Legged Chair Does Exist

Let’s assume that the inventor believes metal is the only material strong enough to support a two-legged chair, and he also thinks that metal chairs are

195Actually, a good patent examiner can be an inventor’s best friend, by preventing a junk patent from issuing, only to get invalidated during an expensive litigation.

Write short claims.

deny all applications. Other examiners are entirely reasonable195, and appreciate that allowable claims should be allowed. Obviously, if an application gets split up, one can continue on with favorable examiners, and abandon applicants if desired that were assigned to unreasonable examiners.

Chapter V –Claiming Strategies 140

only viable if they are covered with fabric. Thus, his broadest claim is “A two-legged chair made of metal and covered with fabric”. That might seem like a nice, short, claim, but it is way too narrow as shown by the following series of diagrams. The set of all two-legged chairs is shown graphically below.

The set of two-legged chairs made of metal is smaller than that (a “proper subset”), and includes only the smaller circle in the diagram below.

Figure 32 – The World Of Two-Legged Chairs

Figure 33 – Two-Legged Chairs Made Of Metal

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Figure 34 – Two-Legged Chairs Covered With Fabric

Finally, the set of two-legged chairs made of metal and covered in fabric is smaller still, because it only includes the overlap of the two subsets. Thus, a claim to a “two-legged chair made of metal and covered with fabric” is too narrow because it contains unnecessary limitations. If the inventor was truly the first person to devise a two-legged chair, the better claim would be to simply state “A chair having two legs”.

Figure 35 – Two-Legged Chairs Made Of Metal And Covered With Fabric

The set of two-legged chairs covered with fabric is also smaller than the set of all two-legged chairs, but in a different manner from two legged chairs made of metal.

Chapter V –Claiming Strategies 142

As an aside, there is no statute requiring that patent claims be written as a single sentence. That, however, is the tradition, and the USPTO enforces that tradition.196

(2)Omit Unnecessary Elements

Omitting unnecessary elements is critical to drafting short claims. Consider the very first person to invent a chair of any type. He claims “a chair having four legs, a vertical back, held together with nails, screws, bolts or dowels”. That claim is way too narrow! The seat doesn’t have to be flat, the back doesn’t have to be vertical, the chair could be built with some other number of legs, and the seat, back, and legs could be held together with connectors other than those listed. The following chart shows how the original claim should be reworded to omit unnecessary elements.

Figure 36 – All Unnecessary Elements Should Be Omitted

Most patent attorneys and agents are adamant in saying that they eliminate all of the unnecessary elements in their patent claims. But the facts belie their words. One can pick almost any patent, in almost any field, and find claims that are bloated with unnecessary elements. Consider the following claim in US4958145197 for a sensor that detects improper posture while lifting an object:

196 In re application of Alfred A. Fressola, (PTO Feb. 19. 1992), decision at www.ipmall. info/hosted_resources/ commissioner decisions/cd_90.pdf; affirmed, 17 F.3d 1442, (Fed. Cir. 1993); Petition for Rehearing Denied, 1994 U.S. App. LEXIS 1489 (Fed. Cir. 1994).

197 U.S. 4958145 (Sep. 1990) ”Back incline indicator”.

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(b) attaching means on the casing for securing the casing to the back of a shirt collar of a user with the side plate resting against the back of the user,

(c) electric audio signal …

That claim is just terrible. Why recite that the casing is hollow? For that matter why recite a casing at all? It is perfectly possible to produce the device as a solid electronic device, similar to an RF (radio frequency) tags. In that embodiment there would be no casing at all, let alone a hollow casing. The point is that the housing has nothing whatever to do with the invention. Recitation of “a housing” would therefore have no effect on patentability. The same analysis, of course, applies to several other elements in the claim. There is absolutely no reason that the claim should recite an attaching means for attaching the casing to the back of a shirt collar. The device could just as readily be worn on the front of the user. If the element is not needed for patentability, it

should be eliminated (at least from the broadest claim).

1. A posture training device, comprising:
a rigid frame positionable against the back of a

person at the intersection of a backbone curve defined by the person’s backbone and a transverse curve thereof;

a rigid generally box-shaped hollow module disposed in the frame and movably engaged therewith between a good posture position …and a poor posture position, corresponding to … second convexities of the curves, each second convexity being greater than the

Eliminating unnecessary elements is critical to claim drafting.

1. A back incline indicator for indicating whenever the back of a user is bent beyond an acceptable limit, comprising:

(a) a hollow casing having a side plate,

Chapter V –Claiming Strategies 144 US57498381‐ 98 provides another good example:

This claim is also a waste of good paper. It makes no sense to require the device to be attached to a rigid frame. Why not just say a frame? Indeed, why recite the frame at all? The rest of the claim is also replete with unnecessary elements, including the rigid, box-shaped, hollow module, and the business about one convexity being greater than another. The invention is providing a posture sensor with tactile signal generator. Why not just claim this as “A posture sensor with a tactile signal generator?” Unless there is some special reason to the contrary, claim limitations in independent claims should be limited to those needed to circumvent the prior art.

(3)But Sometimes It Is Useful To Add More Words

Of course, there are occasions in which unnecessary elements can properly be added to a patent claim. The primary use is when an invention involves so few elements that the simplest claim would be rejected out of hand by the patent office, just by virtue of its simplicity. In that case it can be a very good idea to include a few other elements to make allowance more palatable to the examiner.

The patent office’s distaste for very short claims is true of all types of claims, but especially method claims. Indeed, the patent office seems to have an unspoken rule against allowing method claims with only a single step. The remedy is to simply add another step, even if the added step is merely introduce an element. For example, if the claim involves a single processing step relating to a chemical, one can always avoid a “single step” patenting rejection by adding the limitation “providing the chemical”.

Additional verbiage can also be added to apparatus claims in an innocuous manner. For example, in a patent directed to a new gearing mechanism for a bicycle, one could add limitations to the claims that define the bicycle as having a seat, handlebars, wheels, and so forth. Those limitations lengthen the claim, but very likely have no significant impact on the scope.

Another strategy for making a claim more palatable to the patent office is to reciteoptionalelements.LookatthefollowingclaimfromUS6356546.1‐99 The claim is very broad, but includes plenty of extra text to hide the (possibly

198 U.S. 5749838 (Feb. 1992) ”Posture training device”.
199 U.S. 6356546 (Mar. 2002) ”Universal transfer method and network with distributed switch”.

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network), comprising a plurality of Universal- Transfer-Mode modules (UTM modules) interconnected by a passive core, said passive core consisting of a plurality of optical cross connectors through which routes are established among said UTM modules…comprising:

(a) STM ports;
(b) ATM ports;
(c) Frame relay ports; and
(d) IP ports; protocol), and each of said UTM

ports includes
(a) a hysteresis control…; and

Careful review of this claim establishes that all of the important limitations occur in the italicized text of the preamble. All of the subsequent text is merely surplusage, and fails to limit the scope of the claim in any significant manner!

Here’s another doozy.2‐ 00 What verbosity.

10. A method of diagnosing if a tissue has been exposed to BoNT/A enzymatic activity comprising contacting a tissue sample suspected of having been exposed to BoNT/A enzymatic activity with an anti- SNAP25 antibody wherein the antibody binds preferentially to BoNT/A cleaved SNAP25; and detecting whether the anti-SNAP25 antibody bound to the tissue sample, wherein the presence of the anti- SNAP25 antibody binding to the tissue sample indicates that the tissue sample has been exposed to

200 U.S. 2016/0003824 (Jan. 2016).

overbroad) scope. For example, the italicized portion is a necessary corollary from element (d), and therefore adds nothing besides bulk to the claim.

1. A Universal-Transfer-Mode network (UTM

Chapter V –Claiming Strategies 146

D)Write Claims That Can Be Realistically EnforcedWrite Claims That Can Be Realistically Enforced”Infringement Strategies: Write Claims That Can Be Realistically Enforced”Claiming Strategies: Enforcement”

Market-oriented claiming by itself, of course, is not the whole story. One should also focus on securing claims that are realistically enforceable. Method of manufacture claims, for example, can be very difficult to enforce. Once a computer chip is manufactured, who can tell whether one of the polymer layers was cured at 100° F or 120 °F? Enforcement of such claims requires discovery as to the exact manufacturing process of the defendant, and such discovery is exceedingly problematic unless opposing counsel is particularly generous. In the case of overseas manufacturing such discovery can be downright impossible to obtain.

If the invention does lie in the method of manufacture of the product rather than the end product itself, the goal is to identify some relevant difference between products produced by the inventive method versus other methods. Perhaps the novel manufacturing process produces material that is harder or softer than the previous methods, or is slightly smoother, or has some superior electrical property. In that case the claims should be directed to a product having the material with the claimed property.

Method of use claims can also be difficult to enforce. In the pharmaceutical field, for example, the physicians and medical staff administer the drugs, not the manufacturers. The manufacturers merely provide drugs for physicians to administer, and can often escape infringement of method of use claims by asserting that they are selling the drugs solely for some non-infringing purpose. Indeed, the only way to establish infringement of a method of use claim may be to show that the manufacturer purposefully put his product into the marketplace to cause people to infringe the patent (inducement to infringe), or to establish that there are no substantial non-infringing uses of the product (contributory infringement). Those proofs can easily increase the cost of litigation by hundreds of thousands of dollars.

The excuses wear pretty thin when it comes time to justify method claiming in certain fields. As shown below, apparatus and method claims are often readily converted one into the other. But the apparatus claim is often enforceable against a manufacturer, while the method claim may only be enforceable against a consumer.

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Figure 37 – Apparatus claims Can Be Easier To Enforce

One should also focus on who or what entity can be sued. For example, where claims to methods method claims of treating diseases in humans are unenforceable enforceability (as is the case in many foreign countries), it is better to claim a new chemical entity or a

method of manufacturing than trying to claim the method of treating. Generally, physicians (and their staffs) cannot be sued for treating patients even if the drugs theyareusinginfringeapatent,2‐01buta manufacturer of the drug can be sued for producing and/or marketing an infringing drug.

Similarly, where an invention is a new use for an old machine, it is much better to claim (a) a controller, software or other new aspect that allows the old machine to perform its new function, and (b) to focus on the new purpose of the machine. Even so, it is common to find a prosecuting attorney who directly claims the new method. The attorney may get his claim issued, but the litigating attorney will likely have a terrible time enforcing it.

Direct claims against a manufacturer, or other entity against which they can be realistically enforced.

201 35 U.S.C. 287(c).

Apparatus Claim

Method Claim Method Claims

A bath soap dispenser, comprising:

a container sized and dimensioned such that the bath soap is applied to at least part of a body surface by movement of the container along the body surface;

wherein at least part of the bath soap is retained within the container during the movement; and

wherein the soap is advanced by pressure of a finger on the base plate.

A method of dispensing a bath soap onto a body surface, comprising:

providing a dispenser containing a base plate and a bath soap, wherein at least part of the soap is retained within the container during the movement;

advancing the soap by pressure of a finger on the base plate; and

moving the container along the body surface

Chapter V –Claiming Strategies 148

A third example is somewhat subtler. A composition claim is usually the Holy Grail in chemical applications. But in the field of polymers it is often the worst type of claim because polymer composition claims tend to be extremely narrow, and readily circumvented. From a litigation perspective it is much better to focus on claiming a class of polymers according to their characteristics, rather than claiming specific compositions.

More Enforceable

Less Enforceable

A computer chip comprising a dielectric layer having xyz properties….

A computer chip manufactured by laying down a first layer comprising…, a second layer comprising….

A method of shampooing hair using an anti-psoriasis compound….

A method of treating psoriasis using a shampoo having an anti-psoriasis compound….

A controller that cooperates with an xyz machine, using a protocol intended to treat a cancer in an organism.

A method of treating cancer, comprising using an xyz machine to irradiate the cancer….

A method of imparting an image to a metallic surface comprising: …coating the bonding area with a highly cross-linked polymer having a hardness greater than 80 and a coefficient of elasticity of at least 120% without breaking …

A coating comprising 80–99.5 wt% of a polymerizable acrylate selected from mono-, di-, and triacrylates, urethane- modified acrylates, and polyester-modified acrylates, and 0.5 – 15 wt% of a photointiator…

Figure 38 – Claim Wording Greatly Affects Enforceability

Yet a fourth example shows that even seasoned patent attorneys and agents can write claims that have little chance of being enforced. U.S. patent application no. 2004/0093307 claims a banking system in which a transaction takes place at least in part in a foreign country. Unless enforcement can take place against SWIFT (Society of Worldwide Interbank Financial Telecommunication), the system cannot be enforced because U.S. patent law has no international reach.

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a second bank account which is owned by a trust entity, wherein the emerging market bank is the beneficiary of the trust entity; and wherein the first bank account and the second bank account are bank accounts at a first international correspondent bank.

E)Sequence Of Claims

The usual practice is to list the broadest claims first, followed by successively narrower claims. This may seem to go without saying because the first claim is always independent, and the dependent claims are always listed after the parent independent claim. The real issue arises when an application contains multiple independent claims. Should the person drafting the claims put the broader independent claims near the front of the application or near the back? Actually, it probably doesn’t matter. Some examiners say that they don’t care about the ordering of the claims, and but some feel that a broad claim in the middle or end of the list may be an attempt to sneak one by. My preference is to list the broader independent claims ahead of the narrower ones.

F)Creative Claiming

Having discussed the basic structure of a patent application, and having reviewed the basic claim types, we can now move on to more creative aspects of claiming.

(1)Business Methods

One of the most important developments in patenting in the last decade is the widespread use of business method claims. Such claims have now been used to protect almost any method imaginable, including methods of advertising, accounting, distributing goods and services, teaching courses, tax avoidance strategies, and most notoriously, selling goods on the Internet. It is even possible, for example, to claim a method of writing a book or a method of drafting a patent application.

1. A banking system comprising:
a first bank account directly owned by an first

emerging local bank chartered in a first emerging market country;

Chapter V –Claiming Strategies 150

Claim 2. A method of authoring a talking book with a memory …..

Claim 10. A method by computer for drafting a patent application having at least sections including claims, a summary of the invention, an abstract of the disclosure, and a detailed description of a preferred embodiment of

The Federal Circuit first formally authorized business method claims in the famous State Street case of 1998.202 Prior to that time the received wisdom was that business methods were unpatentable.203 The truth is a bit different, however, because patent attorneys and agents have been drafting business method claims for years. In the early 1990s, for example, I filed claims directed to the selling of annuities by a banking institution. Ordinarily that combination would violate the Glass-Steagall Act of 1933, which was in force at the time, and which mandated separation of banking and insurance activities. But the inventor recognized a loophole in the Act, and our job was to secure a patent on that loophole. A business method claim seemed the best way to proceed. Here was one of the independent claims.

1. A method of providing an annuity through a bank, comprising:

providing a deposit account at the bank; depositing funds into the deposit account; obligating the bank to make at least one future

payment as a function of the amount of

funds in the deposit account; qualifying the method to provide a tax benefit

under 26 U.S.C. § 72; and utilizing a computer based architecture to

202 State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998).

203 Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2d Cir. 1908); In re Howards, 394 F.2d 869, 872 (C.C.P.A. 1968); and In re Schrader, 22 F.3d 290, 296 & n.14, 297-98 (Fed. Cir. 1994).

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1. The improvement in the art of compiling statistics, which consists in first preparing a series of separate record-cards, each card representing an individual or subject; second, applying to each card at predetermined

intervals circuit-controlling index-points ….

Yes, the Supreme Court has been adding significant barriers against business method claims.

Figure 39 – Pursuing Business Method Claims Is Like Fighting Against A Brick Wall

Patent filers do, therefore, need to appreciate that securing broad business method claims can be a decidedly uphill battle, a bit like fighting against a brick wall. The allowance rate is very low, reported to be only 5 – 6 %, and the time to allowance can easily be five years or more.

But despite Alice and other Supreme Court cases that restrict availability of business method claims, it is still a good idea to at least consider filing business method claims for difficult-to-patent technologies. For example, where a bioactive compound is already known, and its use to treat a particular condition is already known, an applicant might still be able to secure a patent

204 U.S. 395781 (Jan. 1889) ”Art of COMPILING STATISTICS”.

There are even business method patents dating back into the 1800s, including what may be the first patent204 on a method of storing data using punched cards. Note use of the method term “preparing:.

Chapter V –Claiming Strategies 152

by claiming a method of marketing the compound by placing certain claims on the packaging. The patent office almost certainly issue a § 101 (Alice) rejection against such claims, but as long as the claims are sufficiently circumscribed, they eventually be allowed.

Similarly, if there is nothing particularly novel about the operation of a computer program, an applicant might still be able to secure a patent for the use of that type of program to increase productivity of workers.

There is also the argument that the pendulum might shift over the next few years. Many patent practitioners have put their applications

into “sleep” mode by filing appeals to final office actions. Since decisions on appeal are usually at least four to five years out, that strategy keeps the applications pending until perhaps there is a change in law.

Note that even though it might make sense to pursue business methods claims in the U.S., that is not necessarily the case for filing in foreign countries. Regardless of novelty and non-obviousness, such claims are routinely rejected in Japan and most or all of Europe on the grounds that there is no “technical contribution” to the field. In those countries it is much better to write the claims in the format of an apparatus, a computer-readable media, a system, and so forth. Interestingly, South Korea does allow business method claims, provided they are stated as being implemented in hardware.

(2)Other Creative Method Claims

Method claims can be very creative indeed. For example, in the pharmaceutical field, an applicant often needs to claim a new use of an old compound. The typical claim has the format “A method of treating <<a disease>>, comprising administering <<a drug>> according to a protocol sufficient to treat <<the disease>>“. Such format can be problematic, however, in that infringement occurs by the treating physicians rather than the manufacturers. Physicians are largely immune from patent infringement lawsuits when treating patients,205 and infringement suits against manufacturers must be based on indirect infringement (contributory infringement or inducement to infringe). One way to allow filing of an infringement action directly against the manufacturer is to file a claim directed to “A method of marketing <<a drug>>, comprising packaging <<the

Despite Mayo, Myriad and Alice, it is still a good idea to at least consider filing business method claims.

205 35 U.S.C. 287(c).

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improving domestic harmony! Instead of focusing on interpersonal relationships, the claim recites use of a landscape sprinkler that automatically reverts to a run position after an adjustment is made. The specification supports the claim by pointing out that considerable marital disharmony can be caused by one spouse blaming the other for modifying the watering times, and then burning out the lawn because the controller was left in the adjustment position.

(3)Information Processing By Humans Or Machines

Quite a few patents have issued that recite “appreciating”, “recognizing“, “analyzing” or otherwise processing information. Even thought the strategy was successful at the time, it would very likely be rejected under current law as being directed to a mental step (no real-world effect). The history, however, is interesting.

drug>> along with labeling that identifies <<the drug>> as being useful to treat <<the new indication>>“.

Creative patenting methods are really only limited by one’s own imagination. There is a claim currently pending before the USPTO that recites a method of

Chapter V –Claiming Strategies 154

In the late 1990s, our office successfully used that very strategy with respect to U.S. 6063772206 to a pharmaceutical.

1. A method of treating a disease responsive to ribavirin, comprising:

recognizing progression of the disease as being mediated at least in part by Th1 lymphocytes;

recognizing ribavirin as being effective to promote a Th1 response and suppress a Th2 response…; and
administering ribavirin to a patient having the disease within the dosage

US4683195207 employed a similar mental step strategy, but instead of reciting “recognizing“, the claims use the term “suspected of containing”.

1. A process for detecting the presence or absence of at least one specific nucleic acid sequence in a sample containing a nucleic acid or mixture of nucleic acids, or distinguishing between two different sequences in said sample, wherein the sample is suspected of containing said sequence or sequences, which process comprises….

US6541267208 employed yet another similar strategy, this time relying on the mental step of “correlating”.

206 U.S. 6063772 (May 2000) ”Specific modulation of Th1/Th2 cytokine expression by ribavirin in activated T- lymphocytes”.

207 U.S. 4683195 (Jul. 1987) ”Process for amplifying, detecting, and/or-cloning nucleic acid sequences”. 208 U.S. 6541267 (Apr. 2003) ”Methods for testing oxidative stress”.

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of a subject with an oxidative stress in the

subject;
providing a test reagent comprising a pH

regulator…;
combining the test reagent with the urine… and correlating a color of the aldehyde-modified

Labs., Inc. v. Lab. Corp. of Am. Holdings, the Federal Circuit upheld claims directed to correlating levels of homocysteine and vitamins B6 and B12 in claim 13 of US4940658 against challenges to indefiniteness, sufficiency of written description, enablement, anticipation, and obviousness.

13. A method for detecting a deficiency of cobalamin or folate in warm- blooded animals comprising the steps of:
assaying a body fluid for an elevated level of total homocysteine; and

correlating an elevated level of total homocysteine in said body fluid with a deficiency of cobalamin or folate.

The U.S. Supreme Court had a chance to put a stop to such claiming in 2005. But after first granting certiorari, the court later denied certiorari, which opened the floodgates. As of January 2006, the USPTO database listed 11,717 patent (since 1976) patents that include the term “correlating” in the claims. By January 2013 that number had risen to 20,520. Perhaps recognizing their mistake, the Supreme Court has since handed down several decisions that seek to limit claims to multiple types of information processing.

In the field of computer software, for example, the Supreme Court handed downtheBilskidecision,2‐09whichinvalidatedclaimsthatitsaiddidnot “add” anything to the otherwise abstract idea of minimizing economic risk.

209 In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008).

Throughout the 2000s this seemed like a very good strategy. In Metabolite

1. A method of determining oxidative stress in a subject, comprising:

correlating a presence of an aldehyde in urine

Chapter V –Claiming Strategies 156

The Court found that the claimed method failed to meet 35 U.S.C. § 101’s eligibility requirements because it simply described the idea of hedging against economic risk and applied it using “familiar statistical approaches” and “well-known random analysis techniques.”

At the present time, of course, claims that rely on “recognizing” as a patentable feature are likely invalid over Alice. Nevertheless, there are examples of information processing that have passed muster under Alice. These include constructing and serving a new, hybrid web page (DDR Holdings, LLC v. Hotels.com 210), removing malicious code from email messages (2014 Guidance), creating a task node and inserting it under an associated task (ex parte Kogan211), directed to a physical edge device (ex parte Emmendorfer212), and creating a hybrid model with a normal and reduced dimensionality (Ex parte Wegman213).

(4)Purification

Another way of circumventing close prior art is to draft claims that expressly recite some level of purification. For example, US6896910214 claims a concentrated water extract of a combination of herbs.

9. The agent according to claim 8, wherein said agent is formulated into powder, granules, tablets, capsules, a solution, suspension, solution for injection, jam, syrup,

essence or a concentrated solution.

Prior to Myriad, it was also possible to distinguish over the prior art by reciting a purified compound from an old product, even a product of nature suchasatomato.Claim1ofUS68905742‐15,however,wouldlikelybe invalid under current law, first because the compounds derived from purification are merely products of nature, and second because the claim recites a mental step of adding the concentrate “as a taste enhancer”.

1. An isolated nucleic acid consisting of the sequence of 210 DDR Holdings, LLCSvE. HQotIeDls.cNomO, :L.5P., 773 F.3d 1245 (Fed. Cir. 2014).

211 Ex Parte Kogan, 2015 Pat. App. LEXIS 1908 (Pat. App. 2015)..
212 Ex Parte Emmendorfer, 2015 Pat. App. LEXIS 2622 (Pat. App. 2015).
213 Ex Parte Wegman, 2015 Pat. App. LEXIS 12350 (Pat. App. 2015).
214 U.S. 6896910 (May 2005) ”Anti-fatigue and tonic agent containing wild ginseng”. 215 U.S. 6890574 (May 2005) ”Clear tomato concentrate as a taste enhancer”.

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be patentable:

18. An automotive door storage kit, comprising:
a bracket adapted to be mounted to a surface;

and a door retaining device adapted to be used in conjunction with the bracket to stabilize an automotive door having gins adapted to be connected to an automobile….

Similarly, US6726899217 recites:

24. A commercial package comprising a composition of 1) a composition comprising a polymerizable acrylate resin, an antimicrobial agent of Formula (I) according to claim 1 and at least one component selected from the group consisting of: glutaraldehyde and a chelating agent and 2) labeling having printed instructions indicating the use thereof as a dental facing preparation.

216 U.S. 6811038 (Nov. 2004) ”Bracket for vehicle door storage”.
217 U.S. 6726899 (Apr. 2004) ”Calcified tissue facing preparation containing antimicrobial agent”.

(5)Kit, Labeling, Or Packaging

Still another way of circumventing close prior art is to draft the claims to expressly recite a kit, labeling, or packaging. For example, US6811038216 recites a kit of components, where the components by themselves might not

Chapter V –Claiming Strategies 158

(6)Combined Method and Apparatus claims

Attorneys sometimes want to know whether it is proper to combine method claims with apparatus or composition claims. The answer is yes. If claim 1 recites some new type of chair, then claim 2 could recite a method of sitting on a lawn, comprising “providing a chair as in claim 1, placing it on the lawn, and sitting in the chair”. Similarly, if claim 1 recites a method of producing ethanol using a specific process, a dependent claim 22 might well recite “a processing plant having a distilling column and heat exchanger arranged to utilize the method of claim 1 inch.

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always be circumvented by simply changing the formula. Fortunately there are two very good strategies for claiming polymers.

The first strategy is to claim the polymer by its properties. This is most readily done in a method claim that recites a polymer having the desired

characteristics. The following claim was deemed allowable by the PCT (WO 98/13147, “Sublimation Dye Transfer Compositions and Methods”, (1998)), but was never pursued in national phase.

A method of imparting an image to a metallic surface, comprising:

providing the surface with a bonding area; coating the bonding area with a highly cross-

linked polymer having a hardness greater than 80 (Shore D, ASTM D2240) and a coefficient of elasticity of at least 120% without breaking;

curing the polymeric coating; and
sublimating dyes characterizing the image into

1. A method of fabricating a nanoporous material, comprising:

providing a first polymeric strand and a second polymeric strand, wherein each of the first polymeric strand and the second polymeric strand independently comprises a crosslinking functionality and a thermostable portion …;

crosslinking the first and second polymeric strands by reacting the crosslinking

(7)Chemical Claims

Polymers present a special problem for patents drafters. Among other things, a claim to a specific formulation is way too narrow, and can almost

Polymers can be claims by their functions or their structures.

Chapter V –Claiming Strategies 160

The other strategy is to claim the structure of the polymer as opposed to its chemical composition.

Pharmaceutical and other chemical inventions are quite easy to claim, so long as the chemical entities are novel. In that case an applicant can simply claim the structure and its variants. Problems arise, however, when the compound is old. In that case there are several alternative claiming strategies, including claiming a new use, a precursor, a new dosage form or regimen, a new route of administration, or a combination with some other drug, excipients and so forth. Note that claiming a metabolite of a drug doesn’t usually work because

1. A method of modulating Th1 and Th2 response in activated T cells of a human patient comprising administering Ribavirin to the T cells in a dosage which promotes the Th1 response and suppresses the Th2 response.

the metabolite is deemed to be inherent in the compound.218
It is even possible to claim a pharmaceutical where the compound is old, the

1. A method of inversely modulating Type 1 and Type 2 responses of lymphocytes contained within an environment by adding ribavirin to the lymphocytes in a concentration which increases the Type 1 response and suppresses the Type 2 response.

17. A composition comprising interferon gamma or an interferon gamma-inducing compound in an amount that is determined to be effective to increase activity of at least one component of a proteasome or guanylate binding protein and to thereby elicit a non-cytolytic reduction of viral propagation in a hepatocyte infected

use of the drug for the disease is old, and the formulation is old.

Now, one might argue that such claims are worthless because they would never issue. But as the footnotes show, the patent office did grant patents that include these three claims. The claims were challenged in federal court, but

218 Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1380 (Fed. Cir. 2003).

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drug for a new use, it is probably not possible to claim the drug as a chemical composition. Yes, one could try claiming a different dosage regimen or dosage form, but those may already be known, or be obvious. For example, if a drug is already known in 25 mg tablets, and prescribed at 75 mg/day (tid), the patent office will not be particularly happy about granting a claim to a dosing of only 25 mg/day. And claiming a new use per se might be patentable, but would be very difficult to enforce. The current manufacturers would simply say that they are producing the drug for the old off-patent uses, and the physicians can’t be sued for simply prescribing the medication.

The answer may be to determine whether the lower dosage results in a new metabolite profile (a downstream aspect). In that case one could claim giving a drug (any drug) that produces the new metabolite profile. Since the higher (known) dose would produce another profile, and presumably no one in the prior art ever saw the new profile, the claim might well be both patentable and enforceable. Similarly, from a manufacturing standpoint, one can sometimes claim slightly different strategies or components (upstream aspects) required when shifting from low volume to high volume production.

(8)Mechanical Claims

Claims in the mechanical arts can also be creatively drafted using semi- functional language and mental steps. One trick is to claim some physical

1. A dispenser for powder or granular material comprising:

a. a hopper for containing powder or granular material having a bottom member of substantially arcuate configuration, said bottom member including a plurality of openings therethrough and throughout the length thereof;

b. a wiper … including at least one blade having a length sufficient for contacting the bottom member at said openings and

the case settled before there was a ruling on validity. The bottom line is that the claims were never invalidated.

In difficult cases one should consider claiming upstream or downstream aspects of the combination of interest. For example, when claiming an old

Chapter V –Claiming Strategies 162

characteristic (e.g., length, weight) as being “sufficient” to achieve a particular goal. For example:

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compression and power strokes, (claim 1) movement of the crank pin, (claim 7) the use of planetary gears, (claim 11) and in another patent the noncircular shape of the path traveled by the crankpin.‐220

11. A reciprocating internal combustion engine comprising:

a first gear carrying a crank pin;

a second gear coupled in a planetary relationship with respect to said first gear such that said crank pin travels in a substantially hypocycloid path, said hypocycloid path completed during a single 360 degree rotation of the engine;

wherein the first and second gears have an effective gear ratio of 1:3….

–or–

1. An internal combustion engine comprising a piston reciprocating in a cylinder, said piston having a compression stroke and a power stroke having fixed lengths, wherein the length of the compression stroke is less than the length of the power stroke.

Still another trick is to claim minor distinctions that are added to a product solely for the purpose of providing patentable subject matter. For example, in desktop computer printers the profit lies in the cartridges rather than the

219 U.S. 5799636 (Sep. 1998) ”Split cycle engines”.
220 U.S. 5482015 (Jan. 1996) ”Device for coupling reciprocating and rotating motions”.

Another trick is to claim the invention from several different perspectives. The claims below219 add address the same substantive invention, but do so from the different perspectives of the length of the

Mechanical inventions are best claimed from multiple different perspectives.

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printers, but the cartridges are easy for competitors to knock off. A powerful strategy is to design a cartridge that relies upon some completely unnecessary feature, and then patent that feature. The following claim221 appears to follow

–or–

1. A device comprising:
a first gear carrying a crank pin;
a second gear more than twice the size of said

first gear and coupled in a planetary relationship with respect to said first gear such that said crank pin travels in one of and pentagonal paths.

–or–

7. A method of increasing the efficiency of a device producing usable power from internal

combustion, the method comprising: providing the device with a piston, a cylinder, a

connecting rod, a crank pin …; and

moving the crank pin in a manner that the piston has two top dead center points and two bottom dead center points

that strategy by claiming a mechanism that (completely
couples operation of the cartridge with movement of the paper advance.

1. An ink-jet printer comprising: an ink cartridge; a recording head; an ink supply passage connecting the ink cartridge to the recording head; a valve opening/ closing mechanism … operable to open the ink supply passage as a result of a rotation of the paper feed driving mechanism.

221 U.S. 6234616 (May 2001) ”Mechanism for opening or closing ink supply passage in ink-jet printer”; Brother apparently did the same thing with a design patent, U.S. Des. 383743 (Sep. 1997) ”Ink ribbon cartridge for facsimile transmitter-receiver”.

unnecessarily)

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examining groups have delays of two to four years before issuing the first office action, and there were years in which the business methods groups had delays of four to seven years.

One can try to circumvent such delays in several other ways, by (1) filing an application with a Petition to Make Special, (2) filing an application with a request for Prioritized Examination, (3) using one of the Patent Prosecution Highway countries; (4) using a PCT First filing strategy, and (5) filing with a petition for Accelerated Examination. These strategies are all detailed in the Green Fields Patenting book.

(9)Incorporate Classification Definitions To Achieve Fast Allowance

It happens far too often nowadays that a patent application becomes “lost” in a patent examining group with very long average time to issuance. Many

Chapter V –Claiming Strategies 166

(10)Add Orthogonal Limitations To Circumvent Prior Art

Yet another filing strategy that can be used in difficult cases is to include limitations in a claim that have little or nothing to do with the underlying invention. Consider, for example, a case in which an applicant is trying to claim subject matter that was disclosed many years ago, but never really commercialized. Simply claiming the apparatus or method in a straightforward manner is not a viable option because the prior art anticipates the invention. Thus, a method of whitening teeth with a peroxide solution could not currently be claimed as

follows because the method has been practiced for decades.

1. A method of whitening teeth, comprising: providing a polymeric material for use in conforming a tray to a set of teeth;

providing a solution containing peroxide to a user; and

providing instructions to the user to apply the solution to the tray, and then juxtapose the tray against the teeth to effect

But one can still add a novel step that would preclude competitors from entering the space. In a silly example, the combination of steps in the following claim may not have been done before, and might be allowable since carbamide peroxide is known for tooth whitening, but is also known to be a skin irritant.

Of course the patent office might reject the claim as containing irrelevant information.222 But assuming one could secure issuance of the claim, one could send letters to competitors advising them of the dual use. Upon receipt of that letter the competitor is suddenly infringing. Of course this is exactly the sort of “sharp” practice that gives attorneys a bad name.

222 Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357, 1371 (Fed. Cir. 2002), citing Toro Co. v. White Consol. Indus., Inc., 266 F.3d 1367, 1371 (Fed. Cir. 2000) and E.I. du Pont de Nemours & Co. v. Phillips Petroleum, 849 F.2d 1430, 1433 (Fed. Cir. 1988)).

Adding orthogonal limitations can circumvent prior art.

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fungal skin infections;
providing a polymeric material for use in

conforming a tray to a set of teeth; providing the solution to a user; and providing instructions to the user to apply the

solution to the tray, and then juxtapose the tray against the teeth to effect

The strategy can be expanded in all sorts of ways, including claiming undesirable activities of competitors in challenging a patent. For example, one could make competitors think twice with the following sort of claim:

The following claim is clearly novel because no one has yet practiced step (d). Moreover, the patent office will have a terrible time establish prima facie obviousness because the absence of this sort of claim in the prior art necessarily means that there was no teaching, suggestion or motivation in the prior art for practicing step (d).

1. A method of whitening teeth, comprising:

receiving information that a solution containing carbamide peroxide is effective to both whiten teeth and treat

Chapter V –Claiming Strategies 168

1. A method of whitening teeth, comprising:
(a) providing a polymeric material for use in

conforming a tray to a set of teeth;
(b) providing a solution containing peroxide to a

user;
(c) providing instructions to the user to apply

the solution to the tray, and then juxtapose the tray against the teeth to effect whitening of the teeth; and

(d) filing a pleading with a court that challenges validity of a patent claiming steps

One reader commented that a competitor could avoid infringement simply by not doing (d)” – filing a pleading with a court that challenges validity of a patent claiming steps (A) TO (C). But that argument is not valid. The fact is that counterclaiming for invalidity is a compulsory counterclaim, so that that failure to assert the counterclaim could be malpractice. The fascinating part is that a defendant’s assertion of invalidity would help the patent holder establish infringement, thus placing the defendant between a rock and hard place.

Now, should Congress allow this sort of claiming strategy? Probably not, and indeed the Patent Office has begun rejecting claims with such limitations. But adding minor or even completely obvious limitations to claims is still a very common, and sometimes necessary strategy. It’s not at all uncommon for a primary examiner to reject a claim even though he can’t find any invalidating prior art. In fact, the primary examiner will often tell us so, and admit that the claim is simply “too short” to get supervisor approval. In such instances we add obvious limitations to the claims to make them longer, and indeed sometime the examiners even suggest such limitations.

The problem here is that under our current system, an attorney or agent must resolve two sometimes irreconcilable goals. On the one hand attorneys and agents have a legal obligation to so whatever he/she can in the client’s interest, as long as those efforts are legal. And adding orthogonal limitations can be a very successful strategy. On the other hand, attorneys and agents are members of society too, and may well want to avoid socially offensive results. We see this in the criminal area all the time, where for example, a defense attorney has a duty to get his client off the hook, even though the client clearly did the crime. The result is bad for society in that the client did not

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VI.

have to pay for the crime, but it would have been malpractice for the attorney to act otherwise.