Introduction

• Author: Ronald D. Slusky
• Pages: 267-267

267

Introduction to Part IV: Preparing and Prosecuting

the Patent Application

PART IV—Preparing and Prosecuting the Patent Application—addresses

three topics: preparing the specification, responding to claim rejections

during prosecution, and working with the inventor. These activities may

seem unrelated, but each should be informed by the same notions that

inform the analysis and claiming of the invention—the inventive concept,

the problem, the solution, and the fallback features.

CHAPTER EIGHTEEN begins the overall topic of preparing the specifica-

tion by considering who its audience is and what their needs are. It then

focuses on the first two sections of the specification—the Background of

the Invention and the Summary of the Invention—and explains how the

problem-solution statement can serve as the basis for an effective, story-

telling Background and Summary that can engage that audience and, in

the process, advance the interests of the patent owner.

CHAPTER NINETEEN shows how the Background and Summary pro-

vide a framework on which the Detailed Description can be built to

advance the problem-solution story. The chapter also offers suggestions

for streamlining the process of writing the Detailed Description more

efficiently. The prescription Be Detailed Where the Invention Lives is intro-

duced as a guide for determining which details of the embodiment(s) the

Detailed Description should actually include.

CHAPTERS TWENTY and TWENTY-ONE then turn to claim rejections

and amendments. The heart of Chapter Twenty is a flow diagram laying out

the six options one can take when a claim is rejected under 35 U.S.C. 102 or

103, based on the answers to four questions about the cited prior art. Chap-

ter Twenty-One then homes in on the use of the invention analysis prin-

ciples described in earlier chapters as the basis for amending claims in the

most appropriate way, should amendment prove to be the desirable option.

CHAPTER TWENTY-TWO describes a methodology for the inventor

interview. Over time, each practitioner develops an approach that seems

to work best for him. This chapter was written mostly with the novice

in mind. It introduces the notion of “self-directed learning” as an effi-

cient way of using the inventor as an information resource to get at the

problem, the solution, and the fallback features. The chapter then goes on

to describe a collaborative process through which the patent lawyer and

inventor can write the patent application together.