Hamre, Schumann, Mueller & Larson, P.C. 2008. U.S. Patent Claims By James A. Larson

Hamre, Schumann, Mueller & Larson, P.C. 2008


U.S. Patent ClaimsBy

James A. Larson


DIFFERENT TYPES OF PATENTS• Utility inventions – any new and useful

process, machine, manufacture or composition of matter, or new and useful improvement thereof

• Designs – any new, original, and ornamental design for an article of manufacture

• Plants – any distinct and new asexually reproduced variety of plant


WHAT IS NOT PATENTABLE?Examples• Mere printed matter• Naturally occurring articles• Scientific Principles• Algorithms per se• Computer programs per se


Patentable? INDIA U.S.

New property, new form, or new use for a known substance

Maybe Yes

Methods of agriculture or horticulture

No Yes

Methods of treating humans or animals

No Yes

Business methods

No Yes


COMMON CLAIM COMMON CLAIM ERRORS BY NON-US ERRORS BY NON-US

APPLICANTSAPPLICANTS


ERROR 1ERROR 1

Relying on one set of Relying on one set of claimsclaims

-- Applicant is allowed Applicant is allowed 3 independent claims 3 independent claims and 20 total claims per and 20 total claims per filing fee filing fee


Example of error 1:A system comprising:

a plurality of computers;a server connected to the computers via a network.

Consider a second independent claim.A system comprising:

a plurality of computers, the computers connected to each other via a network to allow the connected computers to communicate with each other.


ERROR 2

Using reference numbers in claims.• Reference numbers could be used

in litigation to limit the claim scope


Example of error 2

A system (10) comprising:a plurality of computers (20);a server (30) connected to the computer by a network (40).


ERROR 3

Not claiming methods of use• Therapeutic methods in pharma

cases• Use of medical devices


Example of error 3Invention is a new cancer treatment

drugConsider a claim to using the drug to

treat cancer

A method of treating cancer in humans, comprising:


ERROR 4

Relying on intended use statement for patentability of product claims

• During examination, such statements typically not considered limiting of claim scope by U.S. examiners

• However, such statements likely limiting if patent is litigated


Example of error 4A product comprising:elements A, B, C and D, where

element D is used to secure elements A, B and C together.


ERROR 5

Claiming broader scope than supported by the description

• Can be grounds for rejection for lack of enablement


Example of error 5Description indicates that a new

composition has 10-30% by weight of a PTFE which is the key ingredient to the invention. All examples in the description describe the composition with PTFE in an amount between 10-30%.

Claim to the composition recites simply PTFE with no restriction on the amount.


ERROR 6

Not providing intermediate range fallback positions

• Good to have if portion of the primary range is found in the prior art


Example of error 6Independent claim recites 10-30% of

PTFE. No description in specification of intermediate ranges within this range and no dependent claim(s) that limits this range, e.g. 15-20%.


ERROR 7

Improper use of multiple dependent claims

• USPTO charges a fee for multiple dependent claims

• Cannot depend from another multiple dependent claim

• Must use alternative language


Example of error 7

Claim 3 – The product of claims 1 and 2, further comprising…

Claim 4 – The product of claims 1-3, further comprising…


ERROR 8

Claiming subject matter that is not illustrated in a drawing

• Subject to an objection by the Examiner


Example of error 8

Drawings show features of one embodiment

Claims (usually dependent claims) recite features of other described but not illustrated embodiments


ERROR 9

Lack of antecedent basis for claim terms

• Reliance upon inherent features• Inferential features• Grounds for rejection


Examples of error 9

A system comprising:a plurality of computers, the memory of each computer storing a program.

Compare to:

A system comprising:a plurality of computers, each computer storing a program in memory.


ERROR 10

In design patents, submitting photographs of actual commercial product or which show to much detail

• The photographs form the claim – claim is much to narrow


Example of error 10

Submitted photographs are:• in color• show some of the packaging• show extraneous background subject matter• show labels such as warning labels• show fasteners • show other details that do not contribute to

the novel appearance


Comments On CurrentU.S. Examination Practice

USPTO is rejecting everything, often multiple times

Use of evidence and showing unexpected advantages, benefits, results is becoming more necessary

Consider appeals and requests for pre-appeal brief conferences


QUESTIONS?


Thank you!

Documents

Hamre, Schumann, Mueller & Larson, P.C. 2008. U.S. Patent Claims By James A. Larson