The Problem-Solution Statement, Reining in Overbreadth

• Author: Ronald D. Slusky
• Pages: 51-60

CHAPTER FIVE

The Problem-Solution Statement—

Reining in Overbreadth

Just as a problem-solution statement can be too narrow, it can also be

too broad. A pending claim based on an overly broad problem-solution

statement will be rejected as unpatentable. An overly broad issued claim

will be declared invalid.

Thus evaluating a problem-solution statement—trying it on for size—

means not only determining whether it is too narrow but also whether it

is too broad. Techniques for assuring ourselves that the problem-solution

statement is as broad as it can be were presented in Chapter Four. This

chapter presents ways of evaluating a problem-solution statement or a

claim to make sure it is not too broad.

Read the Problem-Solution Statement as Broadly as Possible

A crucial skill for patent attorneys is the ability to appreciate what the

words in a patent claim could be interpreted to mean—as compared with

what we intend them to mean. The methodology described in these pages

has us formulating a problem-solution statement rather than claims in

the first instance. However, at least some of the patent application’s

claims will be based on the problem-solution statement, as we will see in

upcoming chapters. Thus it is appropriate to evaluate the language of the

problem-solution statement with possible overbreadth in mind.

An attorney trying on the problem-solution statement for size must

not view his words through the lens of his own disclosure. The words of

the problem-solution statement must be compared to the prior art as an

examiner will do with the claims to see if there is some way—any way—

that the words of the problem-solution statement can be made to read on

prior art, whether relevant to the inventive contribution or not.

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