Introduction to Part IV: Preparing and Prosecuting the Patent Application

• Author: Slusky, Ronald D.
• Pages: 191-192

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 SIXTEEN 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 SEVENTEEN 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 EIGHTEEN and NINETEEN then turn to claim rejections

and amendments. The heart of Chapter Eighteen is a flow diagram lay-

ing out the six options one can take when a claim is rejected under 35

USC 102 or 103, based on the answers to four questions about the cited

prior art. Chapter Nineteen then homes in on the use of the invention

analysis principles 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 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

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