The Problem-Solution Statement- Reining in Overbreadth

AuthorSlusky, Ronald D.
Pages45-51
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 state-
ment 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.
For example, an attorney writing a problem-solution statement for
the first “horseless carriage” and following the prescription to Think Big1
might have thought the invention to be the idea of mounting an engine
on a wheeled chassis and using its energy to rotate the wheels:
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