The Second Edition of Invention Analysis and Claming: A Patent Lawyers Guide Chapter 7: Problem-Solution-Based Independent Claims By Ronald

D. Slusky

Of the multifarious methods of claiming an invention, problem-solution-based claiming provides a formula to maximize the scope of the invention. Problem-solution-based claiming develops independent claims directly from the problem solution statement with few modifications. The purpose of this is to ensure that all elements within the claim relate to the problem solution statement, no modifiers are inadvertently added to limit the claim, and the relationship among claim elements remains the same. Essentially, diverging from the problemsolution statement can narrow a claim and thereby place unnecessary limitations on an invention. To execute problem-solution-based claiming, Slusky suggests the following, and I quote: 1. Choose one or more claim settings. 2. Choose one or more statutory claim types for each setting. 3. Remove the problem-related language, but retain the language defining the environment or context in which the problem arises. 4. Stitch the remaining language into one or more claims, adding as few words as possible. 5. Compare the resulting claim(s) to the problem-solution statement to verify the accuracy of the transformation(s). To explain his procedure he provides an example of a problem-solution based claim for uniform microwave oven heating. He begins with his problem solution statement:

The problem of nonuniform heating of food in a microwave cavity is solved by moving the food within the cavity while the food is being heated. Following his first step, he identifies the setting of his invention, the microwave cavity, and proceeds to develop two different statutory claim types, method and apparatus. Removing the problem-related language and introducing a stitch, Slusky writes the following: 1. A method comprising moving food within a microwave cavity while the food is being heated within the cavity. 2. Apparatus for heating food comprising a microwave cavity, and a food support configured to move the food within the cavity while the food is being heated. Comparing these claims to their problem-solution statement, Slusky shows that he merely replaced the problem of and is solved by with a method comprising and apparatus for to develop his claims and retain the original problem-solution statement language. This direct approach will be especially helpful for a novice like me, to begin developing basic, independent claims that do not unduly limit the scope of the invention. While I risk developing indefinite claims by using Slusky's broad method, Slusky assures that brevity is preferable and accusations of indefiniteness can be averted through a planned retreat. The latter he does not discuss until later chapters. However, I doubt I will struggle with indefiniteness in the beginning. The art of writing claims defies conventional writing rules, such as providing details and expanding upon the subject at hand. I predict that my initial claims will be too definite, not indefinite. Thus, Sluskys problem-solution-based claiming method not only provides an outline from which I can begin claiming, but from which I can begin claiming broadly. A skinny claim is a happy claim.

Slusky, Ronald D. "Chapter 7: Problem-Solution-Based Independent Claims." Invention Analysis and Claiming: A Patent Lawyer's Guide. 2nd ed. N.p.: American Bar Association, 2012. 83-94. Print.