Intermediate- and Narrow-Scope Claims

• Author: Slusky, Ronald D.
• Pages: 103-114

CHAPTER NINE

Intermediate- and

Narrow-Scope Claims

A patent application should be filed not only with claims defining the

invention at its broadest, but with claims of intermediate and narrow

scope as well. A claim of intermediate scope includes perhaps one, two,

or three limitations not required to define the broad invention. A claim of

narrow scope includes even more.

Intermediate- and narrow-scope claims serve a number of functions.

Most importantly, they implement a Planned Retreat for the invention so

that if prior art makes it necessary to retreat from the application’s broad-

est claims, those that remain will have given up as little valuable intellec-

tual property as possible while providing a defensible position for what’s

left.1That and other functions of intermediate- and narrow-scope claims

are discussed in this chapter.

Fallback Feature Claims

Fallback feature claims are the Planned Retreat’s front line of defense and

are a mainstay of patent claiming practice. A fallback feature claim is typ-

ically in dependent form and narrows the subject matter of the claim

from which it depends—its “parent”—by reciting a feature of the inven-

tion that may be relied on for patentability if prior art renders the parent

claim unpatentable.

Drafting a set of fallback feature claims is usually straightforward

once the fallback features have been identified. Identifying the fallback

features themselves is the heart of the matter. Chapter Six presents a

problem-solution-based process for doing so. Per that process, the broad

invention is regarded as being in the prior art for analysis purposes. A

problem-solution analysis is then carried out based on that assumed

prior art. The reader may wish to refer back to that discussion at this

point.2

A fallback feature claim can add its subject matter to its parent claim

in various ways, depending on the nature of the feature itself. A fallback

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