Written by the Law Offices of Steven Weinrieb
HOW TO DRAFT ALLOWABLE CLAIMS IN A PATENT APPLICATION
Drafting claims in a patent application is relatively simple if in fact you thoroughly understand the invention, all of its component parts, and how the invention operates. You also need to thoroughly understand all of the foregoing in order to properly assess the prior art in order to patentably distinguish your claimed invention from what is disclosed within the prior art.
We recently successfully prosecuted a US application by effectively following the aforenoted guidelines. The US application was Application Number 14/003,476 which was published as United States Patent Application Publication Number 2013/0340819. This was a French-originated application filed here in the US as a US national stage applica-tion. We were instructed to file Claims 21-52 as provided to us by our French associates. The application was then examined, and the examiner basically rejected all of the claims as being indefinite under 35 USC 112, although the examiner also rejected the claims based upon prior art, however, the prior art was not truly relevant – the 35 USC 112 was clearly proble-matic since the claims included so many entangled components that the claims were truly unintelligible. We even called the examiner after receiving the office action and candidly asked her if she understood the claims or what was trying to be claimed, and she clearly stated that she did not in fact understand the claims at all. Claim 21 was the main independ-ent structural claim.
So, after conferring with the French attorney as well as one of the inventors, who were, unfortunately not much help as they truly did not understand or appreciate how US patent claims needed to be drafted, we proposed all new claims to the examiner, in par-ticular, a new Claim 53 which then became Claim 1 of United States Patent 9,520,515, and the examiner issued a Notice of Allowance, we paid the issue fee, and the patent issued.
In retrospect, we were able to obtain allowance of this patent application simply because we followed the principles first noted at the beginning of this blog. We thor-oughly reviewed the application, we thoroughly understood what the important component parts of the invention were, we knew that the structure of the invention was patentably dis-tinguishable from all known prior art, and we set forth the various components in the proper format where the components were clearly noted, they cooperated with each other so as to define the invention, and they were properly connected together with proper antecedent bases such that anyone could clearly understand what the invention was. In particular, if one looks at, for example, FIGURES 2 or 3, Claim 1 will read upon what is illustrated within those drawing figures and the claimed invention will be readily and clearly understood.
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Feel free to view and compare the claims from the original application and the issued patent.
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