Inventive-Departure-Based Independent Claims

• Author: Ronald D. Slusky
• Pages: 95-122

CHAPTER EIGHT

Inventive-Departure-Based

Independent Claims

A patent should have at least one claim defining the invention as broadly

as the prior art will allow. Otherwise competitors may find a way to

appropriate the essence of the inventor’s contribution to the art while

avoiding all of the claims that are in the patent.

The ideal broad claim is perfectly congruent with the boundaries of

the invention, encompassing all present and future implementations of

the inventive concept while not reading on any prior art (Figure 8–1(A)).

The previous chapter showed how a problem-solution statement, care-

fully crafted following the techniques presented in Part I, can take us a

long way toward a claim that is as close to that ideal as our powers of

human analysis and written expression can make it.

Our powers of analysis are hardly perfect, however. We may think

we have distilled the inventive concept down to its most basic form, free

of implementational details, but we may not have. The possible limit-

ing effect of particular terminology in the problem-solution statement

may have escaped our consideration. Or a potential licensee, putative

infringer, judge, or jury may not interpret the claim language in the way

that we or the patent examiner understood it. Our broadest claims, then,

may be interpreted more narrowly than we had intended, possibly leav-

ing some embodiments outside the boundaries defined by the claim (Fig-

ure 8–1(B)).

It is for these reasons that a patent application preferably includes a

number of claims that each undertake to capture the invention at its full

breadth. It will be harder for a competitor to design around two, three,

or more claims defining the broad invention than to design around only

one such claim. Recall, for example, John Loud’s ballpoint pen patent1

in which one claim recited “a spheroidal marking-point” and another

recited “a marking sphere capable of revolving in all directions.”

Moreover, having several broad claims in the application may save

the day if one of them turns out to read on “invention-irrelevant” prior

1. See p. 7.

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96 CHAPTER EIGHT

art, meaning prior art that does not teach the inventive concept but

nonetheless anticipates the claim language (Figure 8–1(B)). In many Pat-

ent Office actions, this is the only type of prior art cited. We saw earlier,

for example, how a claim that seemed to nicely define the concept of a

heavier-than-air flying machine also managed to read on birds and fly-

ing dinosaurs.2 Although a particular claim may be unintentionally over-

broad in this way, another may not, thereby preserving coverage for the

broad invention.

The problem-solution-based claim-drafting technique presented in

the previous chapter is limited in the variety of claims that it can gener-

ate. This is a significant limitation. The above considerations require that

the broad invention be expressed in a number of different ways, using

various formats and different recitations of elements.

Some practitioners develop independent claims using an embodiment-

oriented, invention-analysis-by-claim-drafting approach. A claim directed

to the embodiment is drafted. The claim is then pruned and distilled,

eliminating features that are clearly optional and consolidating multiple

elements or functions into broader, overarching recitations.

Claims drafted in this way may capture the embodiment(s) at their

broadest, but may miss the real invention—a point that has been empha-

sized throughout the book. The paper-clip discussion in Chapter Two3

is as good an example as any of how an analysis that begins from the

embodiment may fail to yield a claim capturing the inventive concept, no

matter how much pruning and distilling is done.

2. See p. 39.

3. See pp. 12–16.

FIGURE 8–1(A) The theoretically perfect claim encompasses all possible

embodiments of the invention (x) but no prior art (n). FIGURE 8–1(B) But what

seems to be the broadest allowable claim may turn out to be too broad in one

aspect and/or too narrow in another.