Claim Amendments

• Author: Ronald D. Slusky
• Pages: 307-317

CHAPTER TWENTY-ONE

Claim Amendments

This chapter is of a piece with the one preceding. It describes the role

of the problem-solution paradigm in deciding how to amend a rejected

claim, should that prove to be the desirable option, per boxes 16 and 18

of Figure 20–1 (p. 299).

Rethink the Invention; Then Rethink the Claim

The final form of a claim should not depend on when the prior art that

shaped it comes to light. But the reality is sometimes different.

When drafting a claim initially, we may deem it “done” only to real-

ize that it still reads on some piece of prior art we thought we were

avoiding. Or a supervisor or colleague reviewing the claim may point

out that it reads on prior art we weren’t even aware of.

Returning to the word processor to further rework the claim, we may

discover that avoiding that last piece of prior art may be no simple mat-

ter. As new limitations are added to deal with the new piece of art, others

may be able to be taken out or the context may be redefined—all to make

the claim as broad as possible without reading on any prior art, includ-

ing that last new piece. Everything in the claim is up for grabs until the

day the application is sent over to the inventor for signature.

However, once the patent application is filed, a different mind-set

seems to take over and the claim and its limitations take on a sacrosanct

quality. So when examiner-cited prior art makes amending the claim

necessary, our tendency is to “bandage” the claim by simply engraft-

ing some new limitation onto what’s already there. This can result in the

claim we would have arrived at had we known about the cited prior art

ab initio. Often, however, it does not, and the resulting claim defines the

invention suboptimally, conceding more than it needs to.

This is not how it should be. It’s the same invention. It’s the same

prior art. And so the way we define the invention in view of that prior

art should not depend on when the prior art comes to light.

The antidote to all of this is not simply to rethink the claim. We should

first rethink the invention and only then rethink the claim.

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