How To Write A Patent Application - Book

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PLIREF-PATAPP Author FOR EDUCATIONAL USE ONLY Page 1
How to Write Pat. Application Author
(Cite as: PLIREF-PATAPP AUTHOR)
Practising Law Institute

How to Write a Patent Application
Jeffrey G. Sheldon
Copyright (c) 2007 by the Practising Law Institute
Current through Release 19, October 2006

About the Author
*v About the Author
JEFFREY G. SHELDON is the founding partner of Sheldon & Mak, a leading West Coast intellectual prop-
erty law firm with offices in Pasadena, Riverside, and Ventura, California. Mr. Sheldon is a summa cum laude
graduate of Loyola Law School. He has a Bachelor of Science degree in Chemical Engineering from the Carne-
gie Institute of Technology, and a Master of Science degree in Biomedical Engineering from the University of
Strathclyde, Glasgow, Scotland. His studies in Scotland resulted from receiving the Marshall Scholarship from
the United Kingdom government.
Mr. Sheldon has been litigating patents and prosecuting patent applications since 1975. He has been adjunct
professor in intellectual property law and patent law at Southwestern University Law School and advanced pat-
ent law at Loyola University, both in Los Angeles. He is a frequent lecturer for the Practising Law Institute and
other organizations. He is a member of the American Bar Association and the American Intellectual Property
Law Association and was chairman of the Los Angeles Intellectual Property Law Association. Mr. Sheldon is a
frequent author and was a columnist for the Los Angeles Daily Journal on intellectual property law. He has been
the author of the Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit (PLI). He is a past
chairman of the Intellectual Property Law Section of the State Bar of California and was identified by California
Lawyer magazine as one of the top patent lawyers in the state of California.
Mr. Sheldon has been responsible for the training of many patent practitioners and has been requested by
many in-house patent counsel to prepare and prosecute their more challenging patent applications.
PLIREF-PATAPP AUTHOR
END OF DOCUMENT
© 2008 Thomson/West. No Claim to Orig. US Gov. Works.

PLIREF-PATAPP § 1.1 FOR EDUCATIONAL USE ONLY Page 1
How to Write Pat. Application s 1.1
(Cite as: PLIREF-PATAPP s 1.1)

Jeffrey G. Sheldon
Current through Release 18, April 2006

Chapter 1: Introduction and When to File
*1-1 § 1.1 Need for This Book
There are few tasks more difficult than that of preparing a patent application for an important invention. The
U.S. Supreme Court, more than a century ago, wrote that a U.S. patent application is among the most difficult to
draft of all legal documents, saying:
*1-2 The specification and claims of a patent, particularly if the invention be at all complicated, consti-
tute one of the most difficult legal instruments to draw with accuracy; and, in view of the fact that valuable
inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims,
it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact inven-
tion of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omit-
ting some element which was a valuable or essential part of his actual invention. [FN1]
To prepare a perfect patent application the practitioner must be all-knowing in the relevant technology, in
patent law, and be able to predict future developments. A perfect patent application needs to realize many ob-
jectives, including:
1. Describing the invention so that those of ordinary skill in the art to which the invention pertains
can understand it.
2. Teaching how to practice the invention.
3. Explaining the invention in such terms that a judge and a jury will be impressed by the value of
the invention.
4. Claiming the invention sufficiently broadly so that the most talented experts in the field cannot
design around the claims for the next twenty years, even when millions of dollars in sales and royalties
are at stake.
5. Claiming the invention sufficiently narrowly so that all prior art is not encompassed by the
claims. This includes the prior art already known to the patent *1-3 practitioner, and unknown prior art.
The unknown prior art can include existing documents not found by a novelty search and "incubating"
prior art such as pending United States patent applications and inventions by others under 35 U.S.C. §
102(g).
6. Claiming the invention so that those elements that render the invention "nonobvious" are set
forth in the claims.
7. Claiming the invention so that a patent will be issued by the Patent Office, and its validity will
be sustained by the courts, even though the Patent Office will give the claim language its "broadest
reasonable interpretation" and the courts will not. [FN2]
8. Including only truthful and accurate statements in the application, so that none of the statements
could possibly mislead the examiner, and the inventors will not be embarrassed by cross-examination
during litigation.
9. Describing all features of the invention that may be needed to obtain allowance of the claims,
even when the inventor does not appreciate the importance of those features.

10. Describing the best mode contemplated by the inventor of carrying out the invention.
11. Preparing an application suitable as a vehicle for foreign filing.
12. Last, but not least, having the application issue as a valid patent.
It is no wonder that skilled patent attorneys and patent agents are so much in demand. [FN2.1] It is no won-
der that the *1-4 ability to write a good application is considered by many practitioners to be an "art."
How is this art taught? At present, by a combination of the "mentor" system and osmosis. It is necessary to
learn the hard way, by writing applications. Typically, a new attorney or agent is handed a stack of prior art, an
invention disclosure, and starts writing.
Many law schools provide a course in patent law. The purpose of most of these courses is not to teach how
to write a patent application, but rather to understand the substantive law of patents. It is, of course, necessary to
know patent law to write a good patent application. The requirements of 35 U.S.C. §§ 101, 102, 103, and 112
need to be fully appreciated in order to write a good specification. However, knowledge of the substantive law
of patents is not the same as knowing how to write a competent patent application. In fact, there are many excel-
lent patent lawyers who litigate patent issues with great skill. Many of those lawyers, if pressed into service to
write patent applications, would be lost.
It typically takes at least six months, and usually about two years, before a practitioner can write a compet-
ent application. One purpose of this book is to substantially reduce that amount of time. It is hoped that a new
practitioner, through use of this book, and the assistance of a skilled practitioner, will be able to prepare a com-
petent patent application on the second or third try.
However, this book is not limited to use by the new practitioner. If the experience of all of the practitioners
who contributed to this book is considered, this book reflects the wisdom of over 100 person-years of drafting
patent applications. The helpful suggestions and tips of the seasoned practitioners who contributed to this book
will be useful for anyone practicing in the field.
[FN1]. Topliff v. Topliff, 145 U.S. 156, 171, 12 S. Ct. 825, 831 (1892); see also Kayton & Gardner, Crafting
and Drafting Winning Patents: An Overview, J. PAT. & TRADEMARK OFF. SOC'Y, June, 2003, at 473-81
(1892 was "child's play" compared to the present).
[FN2]. In re Morris, 127 F.3d 1048, 44 U.S.P.Q.2d 1023 (Fed. Cir. 1997).
[FN2.1]. According to the Patent Office, the generic term for patent attorneys and patent agents is "patent practi-
tioner." 37 C.F.R. § 1.32(a).
PLIREF-PATAPP s 1.1
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Jeffrey G. Sheldon

*1-5 § 1.2 How to Use This Book
This book should not be used alone to learn how to write a patent application. No one can expect to read this
book and be able to sit down and write a satisfactory patent application. The guidance, assistance, and tutelage
of a skilled practitioner will be needed.
Writing a patent application is similar to learning how to play the piano. The aspiring pianist can read book
after book on how to play the piano, but reading alone will not make that pianist competent. The aspiring pianist
needs to actually play the piano and benefit from the comments, suggestions, and teachings of a skilled mentor.
Even the most experienced and skilled practitioners bounce ideas off other patent attorneys and agents, par-
ticularly when it comes to writing the claims of a patent application.
After this book is reviewed, the aspiring practitioner can sit down and try to write a patent application. As
discussed below, start with the claims. When problems are incurred, refer to the claims chapter in the book, and
if problems occur with other portions of the application, refer to the appropriate portion of the book.
Inevitably, some people will never be able to write a high-quality patent application, no matter how hard
they try. To a large extent, the ability to write good claims and clearly and succinctly describe the invention is
an art. Just as some people, including the author of this book, will never be competent at painting a picture,
some people, no matter how hard they try, will not be competent at writing a patent application.
A warning must be included in this book for the "do-it-yourselfers." Inevitably, some inventor will get a
copy of this book and attempt to write his or her own patent application. A word of warning to those people: do
not file that application until it has at least been reviewed by a skilled practitioner. *1-6 It is extremely unlikely
that a do-it-yourselfer can write a reasonably good patent application on his or her own, just based on the teach-
ings of this book. It has been the experience of this author that even attorneys with advanced degrees in engin-
eering who have graduated at the top of their class in law school require at least six months of intensive training
to be able to write a competent patent application. This author is no exception to that rule. Therefore, Mr. or Ms.
Do-it-yourselfer, if your invention is worth filing a patent application, it is worth hiring a skilled practitioner to
make certain that the application adequately claims the invention and meets the statutory requirements for a pat-
ent application. A poorly written and inadequate patent application will provide a false sense of security and in
the long run probably cost much more money in prosecution costs than if a skilled practitioner were engaged up
front.
PLIREF-PATAPP s 1.2
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Jeffrey G. Sheldon

*1-6 § 1.3 Organization of This Book
This book is organized logically to follow the steps recommended for preparing a patent application. First,
in chapter 2, the various parts of a patent application are described, including the formal papers, drawings, spe-
cification, information disclosure statement, and a checklist for verifying the contents of the application.
Chapter 3 describes working with the most important person, namely the inventor. This chapter discusses
how to obtain the information needed to prepare a patent application from the inventor.
Chapter 4 discusses novelty searches, which are generally conducted before preparing a patent application.
The novelty search forms an integral part of the application process, and its advantages and disadvantages are
discussed.
The next three chapters, chapters 5, 6, and 7, present the meat of this book, namely preparing the drawings,
claims, and specification, respectively.
*1-7 Typically, an information disclosure statement is filed with an application, and preparation of that doc-
ument is described in chapter 8.
Much of the discussion of the application preparation process is with regard to applications for utility pat-
ents for mechanical inventions, since most patent practitioners at some time need to write a mechanical applica-
tion. However, applications for inventions other than mechanical ones have unique features that should be dis-
cussed separately. Thus, chapters 9, 9A, and 10 are directed to different types of applications, namely design
patent applications (chapter 9), provisional patent applications (chapter 9A), and plant patent applications
(chapter 10). Moreover, applications directed to different technologies have their own special features and re-
quirements. Thus, chapters 11 through 14 are directed to special technological fields, namely electrical (chapter
11), computer software (chapter 12), chemical inventions (chapter 13), and biotechnology (chapter 14).
Since many patent applications are filed overseas, much money can be saved and better foreign patents can
be obtained if the original United States application is prepared with a view to eventual foreign filing. Chapter
15 provides many hints and suggestions for writing an application that will serve as a good vehicle for obtaining
foreign patents.
Procedures are available for correcting defects in patents. One of these procedures, a reissue application, is
discussed in chapter 16.
PLIREF-PATAPP s 1.3
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Jeffrey G. Sheldon

*1-7 § 1.4 Terminology Used in This Book
Certain terminology used in this book needs to be explained. First, the term "patent practitioner" is used to
refer to both patent attorneys and patent agents. Occasionally, the term "patent attorney" may have been used
rather than the more generic term "patent practitioner." Unless specifically indicated otherwise by the context,
when the term *1-8 "patent attorney" is used, it is meant also to include patent agents.
The term "patent application" is used to refer to all papers generally included in the initial filing with the
Patent Office. This includes the drawings, specification, claims, information disclosure statement, application
cover sheet, and formal papers. The formal papers include such papers as the declaration, power of attorney, as-
signment, and small entity form.
There are papers that are only occasionally included when filing a patent application, such as petitions to
make special under 37 C.F.R. § 1.102. These papers are not considered part of a patent application for the pur-
pose of this book. Thus, petitions to make special are not discussed.
The term "specification" technically includes all of the parts of the application that satisfy the requirements
of 35 U.S.C. § 112, including the description of the invention and the claims. [FN3] The term "specification" is
used both ways in this book; sometimes it includes the claims and sometimes does not, depending on the con-
text.
The Patent Office is officially the Patent and Trademark Office. These two terms are used interchangeably
in this book.
[FN3]. See 37 C.F.R. §§ 1.71-1.75.
PLIREF-PATAPP s 1.4
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PLIREF-PATAPP § 1.5.1 FOR EDUCATIONAL USE ONLY Page 1
How to Write Pat. Application s 1.5.1
(Cite as: PLIREF-PATAPP s 1.5.1)

Jeffrey G. Sheldon

§ 1.5 How Quickly Should the Application Be Filed?
*1-8 § 1.5.1 Reasons for Filing Promptly
It is important to file a patent application as quickly as possible for many reasons, including the following:
1. If filing the patent application will serve as a constructive reduction to practice of the invention, dili-
gence *1-9 in preparing the patent application could be a critical factor in determining the effective filing
date of the application to win an interference proceeding pursuant to 35 U.S.C. § 102(g) and to avoid prior
art. In one case, where a patent practitioner required six months to prepare the application, it was determ-
ined there was diligence under 35 U.S.C. § 102(g) if the attorney had a reasonable backlog of work that he
took up in chronological order and carried out expeditiously. [FN4] However, an unexplained delay by the
attorney or unreasonable deference to other business may negate diligence. [FN5]
2. In an interference proceeding in the Patent Office, it is beneficial to be the senior party, that is, the
party with the earlier filing date. For example, if no evidence is provided by either party in an interference,
the senior party wins. Delay in filing an application may result in an applicant's being a junior party rather
than a senior party.
3. The later the filing date, the more potential there is for prior art to be available to be cited against the
application. In fast-developing technologies, patents can issue and technical papers can be published with
alarming speed. Even a one-day delay in filing can result in the development of new art. If the delay be-
comes sufficiently long, some of the prior art may become an unremovable statutory bar under 35 U.S.C. §
102(b).
4. An applicant's own publications and commercial activities can be statutory bars under *1-1035
U.S.C. § 102(b) if too much time is taken in preparing a patent application.
5. Most of the world is on a first-to-file priority system rather than the United States' first-to-invent sys-
tem. If the United States application is to serve as a basis for foreign applications, then the United States fil-
ing date can be critical in determining who obtains foreign patent rights. There are situations in which the
United States inventor was able to obtain a United States patent under the United States first-to-invent sys-
tem, but was unable to obtain foreign patent rights because of the foreign first-to-file system. If the United
States application had been filed promptly, the United States applicant would have also been able to obtain
both the United States and foreign patent rights.
6. Most of the world, including such important countries as Japan and Germany, has an "absolute nov-
elty" system. Under that system, any "prior art" is available as a reference, and there is no one-year grace
period as is available in the United States. Thus, a publication by the inventor one day before the United
States filing date will not affect United States patent rights because of the one-year grace period under 35
U.S.C. § 102(b). However, the same publication may prevent foreign patents from issuing. Thus, by
promptly filing the United States application, foreign priority rights can be saved.
Accordingly, it can be very important to file an application promptly. § 1.5.3 presents techniques for speed-
ing up the filing process.

[FN4]. Rines v. Morgan, 250 F.2d 365, 116 U.S.P.Q. 145 (C.C.P.A. 1957).
[FN5]. Scharmann v. Kassel, 179 F.2d 991, 84 U.S.P.Q. 472 (C.C.P.A. 1950); see also Powell v. Poupitch, 167
F.2d 514, 77 U.S.P.Q. 379 (C.C.P.A. 1948).
PLIREF-PATAPP s 1.5.1
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Jeffrey G. Sheldon

*1-10 § 1.5.2 Reasons for Not Filing Promptly
There are some reasons for a delay in filing. It is unusual that these reasons will overcome the aforemen-
tioned reasons for filing promptly. However, they do need to be considered *1-11 in timing the filing. Among
the reasons that may make a delay in filing desirable are the following:
1. If the application is to be filed overseas, then the application most likely will be published eighteen
months from the filing date, with resultant loss of trade secret protection for any trade secrets in the applica-
tion. [FN6] Thus, the earlier the filing date, the earlier the loss of trade secret protection.
2. Filing a U.S. application triggers the start of the one-year priority period available for filing overseas.
This will accelerate the expenses associated with foreign filing.
3. The author tells clients that any patent application is a balance of quality, cost, and speed, and the cli-
ent gets to pick two out of three. Since few practitioners are willing to sacrifice quality, the client often may
have to pay extra for accelerated filing.
[FN6]. See 35 U.S.C. § 122(c).
END OF DOCUMENT


Jeffrey G. Sheldon

*1-11 § 1.5.3 Techniques for Speeding Up the Filing Process
There are many techniques available for speeding up the process of filing an application. Some of these are
as follows:
1. File the inventor's original disclosure document or draft scientific paper as a patent "application" by
adding an abstract and a single claim. Although such an application would be nowhere near the quality of an
application prepared using the procedures of this book, assuming that the disclosure by the inventor satisfies
the basic requirements of 35 U.S.C. § 112, at least a filing date will be obtained. Moreover, even if the ap-
plication does not satisfy the United States disclosure requirements of 35 U.S.C. § 112, it may be sufficient
for many foreign countries. This basic *1-12 application can then be converted into a quality application by
filing a continuation-in-part application as promptly as possible.
Clearly this approach gets an early filing date. However, one disadvantage is the increased cost of filing
two applications. Another disadvantage is that the one-year priority date for filing in foreign countries be-
gins to run on the date of filing of the first application, which means that the decision of whether to file a
foreign application needs to be made earlier, and costs associated with filing foreign applications are in-
curred earlier.
2. During the initial meeting with the inventor, draft at least the broadest claim, and preferably some of
the dependent claims. As discussed below, preparation of the claims is the most critical and difficult part of
an application. It is efficient and effective to prepare the claims when the inventor is readily available to
provide instant feedback and while the patent practitioner's mind is freshly acquainted with the merits and
novelty of the invention.
3. Forego a novelty search, or have the novelty search done in parallel with drafting the application. As
discussed in chapter 4, novelty searches are often ordered before preparing a patent application. However,
when time is of the essence, it may be necessary to forego the novelty search, or conduct it in parallel with
preparation of the application. When the novelty search is conducted while the application is being pre-
pared, once the search results are available, the application can be polished and the claims modified as re-
quired, based on the search results.
4. Order the drawings as soon as possible. Preparation of the drawings can be the longest lead-time item
due to the schedule of draftsmen. Get the drawings on order promptly.
*1-13 5. Do not wait for the drawings to prepare the application. Many practitioners wait until the
drawings are available before beginning the application. An advantage of this procedure is that the reference
numbers can be placed on the drawings as the specification is prepared. However, when it is important to
file promptly, rough sketches of the invention can serve the same purpose for preparation of the application.
Although some time is lost when the reference numbers are added to the draftsman's drawings, that lost time
can be sacrificed when filing early is important.
6. Use the inventor's drawings or drawings prepared by the patent practitioner for filing. The inventor
may have some drawings of the invention, or the patent practitioner may be a sufficiently skilled draftsman

to prepare rough sketches. If those sketches are sufficient for filing, they can be used for that purpose when
it is important to file early. Formal drawings can be prepared later by a skilled draftsman.
7. File the application without the formal papers, including the declaration. A week or more can be lost
while the inventor reviews the application and signs the declaration and other papers. It is possible to file
without the declaration and formal papers. [FN7] A disadvantage of this approach is that if the applicant is a
small entity and the small entity forms have not been completed, the much higher filing fee for large entities
needs to be paid. Although the Patent Office claims it is possible to get a refund by filing the necessary pa-
pers, [FN8] often the request for a refund gets lost in the Patent Office bureaucracy, and it is difficult and
time-consuming to get the refund. Another disadvantage is *1-14 that the Patent Office charges a surcharge
for filing the application piecemeal. [FN9] Another possible disadvantage is that the inventor or inventors
may have problems with the application and not like it. If the claims are not satisfactory, it may become ne-
cessary to file a preliminary amendment under 37 C.F.R. § 1.115, which adds to the expense of filing the
application. If something is incomplete or inaccurate in the specification, then it may become necessary to
file a continuation-in-part application. In the latter instance, the original filing date may be lost, and thus the
fees incurred for filing the first application would have been for naught.
[FN7]. 37 C.F.R. § 1.53.
[FN8]. 37 C.F.R. § 1.28(a).
[FN9]. 37 C.F.R. § 1.1(e) (the surcharge fee is $65 for small entity applicants).
END OF DOCUMENT


Jeffrey G. Sheldon

*1-14 § 1.6 Conclusion
Once a decision has been made to prepare and file a patent application, it is necessary to learn how to do so.
The remainder of this book discusses that exact topic.
PLIREF-PATAPP s 1.6
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Jeffrey G. Sheldon

Chapter 2: Parts of a Patent Application
*2-3 § 2.1 Introduction
This chapter outlines the statutory requirements for the various parts of a patent application and provides the
basic forms used to prepare a patent application. The sample forms satisfy the essential statutory requirements.
A good source of forms for different purposes can be found in Patent Law Practice Forms by Barry Kramer and
Allen D. Brufsky, published by Clark Boardman Company in 1990.
PLIREF-PATAPP s 2.1
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Jeffrey G. Sheldon

§ 2.2 Parts of a Patent Application
*2-3 § 2.2.1 What Is Needed to Obtain a Filing Date
To obtain a filing date, the application initially filed with the Patent Office must at the very minimum con-
tain the following:
1. a complete specification with a satisfactory description and at least one claim; and
2. any drawing that is necessary to understand the invention. [FN1]
These parts of a patent application are indispensable. If any of the indispensable papers is not provided with
the initial filing, then the filing date will be the date all the indispensable papers are provided. [FN2]
Even if the indispensable papers are provided, a filing date will not be awarded if those papers are incom-
plete or if they fail to meet statutory requirements. An application with *2-4 missing drawings or pages or with
an insufficient disclosure is regarded as incomplete. [FN3]
If an incomplete application is filed, the Patent Office issues an office action asking for the missing parts. A
disadvantage of filing an incomplete application is that the term of any patent that issues could be shortened.
The Patent Office considers filing an incomplete application to be a delay caused by the applicant, and subtracts
the delay associated with this from any delay caused by the Patent Office in calculating any term extension.
[FN1]. 37 C.F.R. § 1.53.
[FN2]. 37 C.F.R. § 1.53(c).
[FN3]. M.P.E.P. § 601.01.
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Jeffrey G. Sheldon

§ 2.2 Parts of a Patent Application
*2-4 § 2.2.2 Papers Filed in a "Typical" Application
Besides the specification, including at least one claim and drawings (when necessary), a complete patent ap-
plication also contains an oath or declaration by the applicant and the requisite filing fee. [FN4] The declaration
and filing fee may be submitted later (within two months of the date of notice given by the Patent Office)
without affecting the filing date, [FN5] if the indispensable papers are provided in the initial filing.
In addition to the statutory requirements, the patent application may require several supplementary formal
papers. Thus, a typical patent application includes all the following papers:
1. a declaration,
2. a power of attorney,
3. an assignment (if applicable),
*2-5 4. a small entity form (if applicable), [FN5.1]
5. drawings (if necessary),
6. a specification,
7. claim or claims,
8. an information disclosure statement,
9. a cover sheet,
10. a fee payment,
11. a postcard, and
12. an application data sheet containing bibliographic data. [FN6]
PTO approved forms, some of which are reproduced herein as Exhibits, can be found and downloaded from
the PTO website at <www.uspto.gov/web/forms>.
[FN4]. See 35 U.S.C. § 111; 37 C.F.R. § 1.51. Although an information disclosure statement is not required per
se, failure to disclose relevant prior art (known to the applicant) may be inequitable conduct.
[FN5]. 37 C.F.R. § 1.53(d).
[FN5.1]. A small entity form is not required if the small entity basic filing fee is paid, but it is recommended that
the form be filed. See § 2.3.4.
[FN6]. 37 C.F.R. § 1.76. The optional application data sheet and software for filling it out are available at the
Patent Office website.
END OF DOCUMENT


Jeffrey G. Sheldon

*2-5 § 2.3 Formal Papers
There are four types of formal papers that may be submitted with a patent application. These are
(1) an oath or declaration by the inventor;
(2) a power of attorney;
(3) an assignment, if the application is assigned; and
(4) a small entity form, if the applicant qualifies.
The substantive requirements of these formal papers are discussed below, with sample forms that satisfy the stat-
utory requirements.
PLIREF-PATAPP s 2.3
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Jeffrey G. Sheldon

§ 2.3 Formal Papers
*2-6 § 2.3.1 Oath or Declaration
Either an oath or a declaration must be filed as part of the application. [FN7] The essential requirements of
the oath and declaration are defined in 37 C.F.R. § 1.63 and can be categorized into three areas.
First, the documents must identify the inventors and the specification. Each inventor must declare his or her
name, place of residence, and country of citizenship. Additionally, each inventor must state whether he or she is
a sole or joint inventor of the invention claimed. [FN8] Joint inventorship may be implied by the listing of sever-
al inventors on the same form. The declarant is also required to attest to his or her belief that the inventor or in-
ventors named are the original inventors of the invention described. [FN9]
Second, the person making the oath or declaration must attest to the truth of all matters described in the pat-
ent application. The oath or declaration must identify the specification to which it is directed. [FN10] This re-
quirement is usually satisfied by stating the title of the application in the declaration and, in the case of new ap-
plications, by attaching the application to the declaration. An application that has been already filed with the
Patent Office is identified from the filing date and serial number assigned by the Patent Office.
The oath or declaration must also state that the declarant reviewed and understood the contents of the spe-
cification and claims. [FN11] Further, the declarant must acknowledge his or her duty to disclose information
that is material to the prosecution of the application under the provisions of *2-737 C.F.R. § 1.56. [FN12] As
will be discussed in greater detail in following sections, the declarant has a duty to disclose all information ma-
terial to the novelty or nonobviousness of the application under 35 U.S.C. §§ 102 and 103. [FN13] The provi-
sions of these statutes may be printed on the back of the declaration, as shown by Exhibit 2-1.
Third, the oath or declaration should also identify any foreign or United States documents on which the be-
nefit of an earlier filing date is claimed. When the benefit of an earlier filing date in a foreign country is claimed
under 35 U.S.C. § 119, the declaration must identify the foreign application on which such priority is claimed by
specifying the application number, country, day, month, and year of its filing. [FN14] Further, the declarant
must identify any foreign application having a filing date before that of the application on which priority is
claimed. [FN15] Similarly, if the declarant claims the benefit of prior United States applications under 35 U.S.C.
§ 120, he must identify the prior application by its application number, date of filing, and current status.
It is not necessary that these claims of priority from earlier foreign or PCT or domestic applications be made
at the time of the initial filing, as long as they are made during the applicable time limits, and always while the
application is pending. However, it is recommended that the claim be made with the initial filing to avoid forget-
ting to do so in time. The applicable time limits are: [FN16]
(1) Design application claiming U.S. or foreign priority--during the pendency of the application;
(2) Utility application filed under 35 U.S.C. § 111(a) claiming domestic priority and/or PCT application

designating the U.S. and/or foreign priority-- within *2-8 the later of four months from the actual filing date
of the later-filed application or sixteen months from the filing date of the prior-filed application;
(3) Nonprovisional application which entered the national stage from an international application after
compliance with 35 U.S.C. § 371 claiming domestic priority and/or priority from PCT application designat-
ing the U.S.-- within the later of four months from the date on which the national stage commenced under
35 U.S.C. § 371(b) or (f) in the later-filed international application or sixteen months from the filing date of
the prior-filed application.
If the inventor cannot read and understand English, the declaration must be provided in a language the in-
ventor can read and understand. [FN17] Declarations in the most often-used foreign languages can be found at
the PTO website <www.uspto.gov>. If the text of the oath or declaration is not in English and is not in a form
provided by the PTO or in accordance with PCT Rule 4.17(iv), the oath or declaration must be accompanied by
an English translation together with a statement that the translation is accurate. The translation can be filed after
receiving a notice from the PTO to file the translation. [FN17.1]
While the essential requirements of an oath and a declaration are the same, there are two major differences.
[FN18] The first difference relates to the manner of execution of the documents. An oath must be executed be-
fore an authorized official of the United States, such as a notary public or a consular officer. For that reason, and
because the additional language required in declarations is easily automated, oaths are rarely used today. [FN19]
*2-9 The second difference between an oath and a declaration lies in the prescribed contents of each docu-
ment. The declaration must contain additional language in its body to the effect that the applicant is aware of the
criminal penalties for wilfully attesting to false statements within a declaration. [FN20] The declaration must
also contain language to the effect that all statements made in the declaration are true to the declarant's know-
ledge, or are believed by the declarant to be true. [FN21]
A sample declaration form is provided in Exhibit 2-1. To convert this declaration into an oath, simply re-
place the "declaration" section with a section that reports the date and place of the oath and bears the seal and
signature of the notary officer.
If the inventors need to make relatively minor changes in prepared application papers, rather than creating a
new document, the inventors can make the changes and then initial and date the changes, before executing the
oath or declaration. [FN21.1] The application cannot be amended after the oath or declaration is signed by any
inventor except according to the provisions of 37 C.F.R. § 1.121. [FN21.2] One exception to this rule, which is
not applicable to an original application, is that such changes can be made if (i) the oath or declaration is a copy
of an oath or declaration from a prior application, and (ii) the change does not introduce any new matter.
[FN21.3]
[FN7]. 37 C.F.R. § 1.51(a)(2).
[FN8]. 37 C.F.R. § 1.63(a).
[FN9]. 37 C.F.R. § 1.63(b).
[FN10]. Id.
[FN11]. 37 C.F.R. § 1.63(b)(2).
[FN12]. 37 C.F.R. § 1.63(b)(3).

[FN13]. 37 C.F.R. § 1.63(d).
[FN14]. 37 C.F.R. § 1.63(c).
[FN15]. Id.
[FN16]. See 37 C.F.R. §§ 1.55, 1.78
[FN17]. 37 C.F.R. § 1.69.
[FN17.1]. 37 C.F.R. § 1.69(b).
[FN18]. 37 C.F.R. § 1.68.
[FN19]. M.P.E.P. § 602.
[FN20]. See 37 C.F.R. § 1.68. Under 37 C.F.R. § 1.68, wilful false statements on the patent application are pun-
ishable by fine, imprisonment, or both under 18 U.S.C. § 1001 and may also jeopardize the validity of the ap-
plication.
[FN21]. 37 C.F.R. § 1.68.
[FN21.1]. 37 C.F.R. § 1.52(c)(1).
[FN21.2]. 37 C.F.R. § 1.52(c)(2). A separate paper instructing the PTO to make the amendment is required.
[FN21.3]. 37 C.F.R. § 1.52(c)(3).
END OF DOCUMENT


Jeffrey G. Sheldon

*2-10 § 2.3.2 Power of Attorney
An applicant for a patent may either prosecute his or her own application or be represented by an attorney or
agent registered to practice before the Patent and Trademark Office. [FN22] If an applicant is represented by a
patent attorney or agent, a power of attorney should be filed to authorize the attorney or agent to act on behalf of
the applicant. However, whenever a registered attorney or agent signs and files a document in an application
pending before the Patent Office, the attorney or agent's signature constitutes a representation to the Patent Of-
fice that he or she is authorized to represent the particular party in whose behalf the practitioner ostensibly is
acting. [FN23] In such cases, a power of attorney is not required if the practitioner specifies his or her registra-
tion number on the document. Further proof of the practitioner's authority is not necessary but may be required
at the discretion of the Patent Office. [FN24] Although the filing of a power of attorney is not absolutely re-
quired, it is generally considered good form and allows the principal attorney or agent designated to appoint a
junior attorney or agent to expedite prosecution. [FN25]
A sample power-of-attorney statement is shown in Exhibit 2-2. It identifies the owners of the patent applica-
tion and the application itself. It states that the signer authorizes the named attorneys to conduct all business re-
garding the application within the Patent Office, and it grants the attorney or agent power to appoint associate
attorneys or agents. The attorney's name and Patent Office registration number are provided along with the full
postal address and telephone number of the firm. [FN26] This allows prompt correspondence between the Patent
Office and the attorney or agent. The full *2-11 names, addresses, and country of citizenship of the patent own-
ers are also listed.
The power-of-attorney statement can also be combined with the oath or declaration. Since the inventor or
inventors generally sign both documents, a combined document is more expedient.
Whenever an invention is assigned and the attorney or agent represents the assignee, it is strongly recom-
mended that the power of attorney be executed by the assignee rather than by the inventor or inventors. This
makes it clear that the attorney or agent represents the assignee, and not the inventor or inventors. This distinc-
tion can become important if a conflict of interest arises between the assignee and the inventor or inventors.
If the Power of Attorney is to more than ten registered patent attorneys or registered patent agents, then the
PTO Customer Number must be used. [FN26.1]
The Patent Office now accepts as a Power of Attorney one executed by an assignee that provides a power to
all registered practitioners associated with a customer number for all applications assigned to the assignee. An
advantage of using this form is that separate Power of Attorney form need not be prepared and filed. The form is
available at the PTO website, as Form PTO/SB/80. To use the form, it is necessary to file it accompanied by an
application specific statement under 37 C.F.R. § 3.73(b), using for example PTO Form SB/96.

[FN22]. 37 C.F.R. § 1.31.
[FN23]. 37 C.F.R. § 1.34(a).
[FN24]. Id.
[FN25]. 37 C.F.R. § 1.34(b).
[FN26]. M.P.E.P. § 601.02.
[FN26.1]. See M.P.E.P. § 403 for a description of Customer Number Practice.
END OF DOCUMENT


Jeffrey G. Sheldon

*2-11 § 2.3.3 Assignment
Patents have the attributes of personal property [FN27] and can be bought, sold, or licensed to another per-
son in exchange for valuable consideration. In this regard, patent applications are generally treated in the same
way as patents. Frequently, an *2-12 inventor assigns away his or her rights in a patent application at the time
the application is filed. For example, an employee often assigns to his or her employer a patent application in-
vented within the scope of his employment. In such cases, an assignment of rights to the application and to any
issuing patent is generally filed at the time the patent application is filed.
Filing the assignment with the patent application notifies the Patent Office that the inventor and the owner
of the patent rights are not the same entity. It also allows the patent to be issued in the name of the assignee,
provided the inventor assigns the entire interest in the invention and application to the assignee. [FN28]
Providing the assignment with the application also allows the Patent Office to secure the recordation of the
assignment at the earliest possible date. [FN29] This can be very important, because an assignment that is not re-
corded is void against a subsequent purchaser or mortgagee for value who did not have actual notice of the prior
assignment. [FN30]
A patent application, or any interest therein, is assignable by an instrument in writing. [FN31] A sample as-
signment form is shown in Exhibit 2-3. The assignment identifies the patent application assigned by the title of
the invention, the name of the inventor, and the date of execution of the application. [FN32] Typically, the date
of execution is referred to as "on even date herewith," which means that the assignment and application were ex-
ecuted by the inventor on the same date. The assignment should also identify the name and address of the *2-13
assignee, to allow the Patent Office to communicate with the assignee, if necessary. [FN33]
Exhibit 2-3A is an assignment form available from the USPTO website. The assignment of Exhibit 2-3
places more obligations on the assignor than does the assignment of Exhibit 2-3A. Accordingly, when represent-
ing the assignee, it is better to use the Exhibit 2-3 assignment, and when representing the assignor, it is better to
use the Exhibit 2-3A assignment.
Each document relating to title submitted to the Patent Office for recording must be accompanied by a cover
sheet referring to those patent applications and patents against which the document is to be recorded. [FN34]
The cover sheet should contain
(1) the name of the party conveying the interest;
(2) the name and address of the party receiving the interest;
(3) a description of the interest conveyed or transaction to be recorded;
(4) each application number of patent number against which the document is to be recorded, or an in-
dication that the document is filed together with a patent application;

(5) the name and address of the party to whom correspondence regarding the request to record the docu-
ment should be mailed;
(6) the number of applications identified in the cover sheet and the total fee;
(7) the date the document was executed;
*2-14 (8) a statement by the party submitting the document that, to the best of the person's knowledge
and belief, the information contained from the cover sheet is true and correct and any copies submitted is a
true copy of the original document; and
(9) the signature of the party submitting the document. [FN35]
A sample cover sheet is provided as Exhibit 2-3B.
Although an assignment does not have to be notarized, that practice is highly recommended. A notarized as-
signment is prima facie evidence that the assignment was executed. [FN36] The presumption of validity that at-
taches to notarized assignments gives the assignee a legal advantage in subsequent actions concerning patent
ownership. In addition, some foreign countries require notarized assignments.
The original patent assignment should not be submitted to the Patent Office; only a copy should be submit-
ted. This is because the Patent Office does not return submitted assignment documents after they are scanned in-
to the Patent Office's electronic assignment database.
It is also recommended that the assignment documents not be submitted at the time of filing the original ap-
plication. The Patent Office has a history of losing such assignment documents. It is best to wait until an official
filing receipt is received, and then submit the assignment documents separately.
[FN27]. 35 U.S.C. § 261.
[FN28]. 37 C.F.R. § 1.334.
[FN29]. 37 C.F.R. § 1.332.
[FN30]. 35 U.S.C. § 261. Note, however, that the first assignment is valid if it is recorded in the Patent Office
within three months from its date or prior to the date of the second assignment.
[FN31]. 35 U.S.C. § 261.
[FN32]. M.P.E.P. § 302.03.
[FN33]. M.P.E.P. § 302.05.
[FN34]. 37 C.F.R. § 3.11.
[FN35]. 37 C.F.R. § 3.31.
[FN36]. 35 U.S.C. § 261.
END OF DOCUMENT


Jeffrey G. Sheldon

*2-14 § 2.3.4 Small Entity Form
Patent prosecution fees are 50% lower for persons or organizations that meet a statutory test of "small en-
tity" status. That fee reduction is granted as an incentive for a small entity to obtain a patent. It applies to all Pat-
ent Office fees during the prosecution of a patent application and to any *2-15 required issue fees. It also applies
to maintenance fees required of any resulting patent.
Three classes of applicants can claim small entity status:

(a) independent inventors,
(b) small business concerns, and

(c) nonprofit organizations. [FN37]
An independent inventor is one who has not assigned or licensed his or her legal rights on the invention to any
entity that does not have small entity status. [FN38] A small business entity is any business with fewer than 500
employees. [FN39] That number is computed as the average number of part-time and full-time employees em-
ployed by the entity over the fiscal year. Nonprofit organizations comprise several categories of organizations,
too numerous to be listed here, which are listed in 37 C.F.R. § 1.27 and are explained in more detail in Manual
of Patent Examining Procedure § 509.02.
The small entity can be located in any country. There is no requirement that the small entity be located in
the United States to claim reduced fees. [FN40] However, any claim to small entity status is lost if the small en-
tity assigns or licenses its rights to a person or entity that does not qualify as a small entity, except that the feder-
al government may be assigned or licensed rights without loss of small entity status. [FN41] Small entity status
is not lost if there is a grant of a security interest, without default, to a large entity, [FN41.1] if the small entity is
in a foreign country and fails to make a significant contribution to the U.S. economy, [FN41.2] or if there is a li-
cense to a large entity under a patent application or patent to use a product, that is, software, as long as no own-
ership rights are granted. [FN41.3]
*2-16 To benefit from the fee reduction, there must be an assertion of small entity status. The assertion can
be effected by:
1. an assertion in writing by an attorney or agent registered with the Patent Office, an inventor, or an as-
signee of an undivided part interest; or
2. by payment of the basic filing or basic national fee. [FN42]
Thus it is not necessary to submit a small entity form; all that is needed is to pay the small entity basic filing fee.
If a small entity form is to be submitted, only one is needed from any person entitled to assert small entity status.
As a practice tip, it is not recommended that an attorney or agent execute a written assertion or rely on pay-
ment of a basic filing fee as an implicit assertion of utility. There are two reasons. First, usually the attorney or

agent does not have personal knowledge of whether or not the assertion is correct. For example, there may be a
license that the attorney does not know about. The second reason is that if the small entity status claim is incor-
rect and that becomes an issue in litigation, the attorney can end up being a witness, an undesirable situation;
and in a worst-case scenario, the attorney may be subject to a disciplinary proceeding before the PTO. Thus for
safety, it is recommended that at least one written assertion of small entity status be obtained, and preferably
from all the inventors and any organization with an interest in the patent application.
As another practice hint, it is recommended that a notice defining "small entity" be provided in writing to
the client to avoid any confusion. It is not intuitive for most inventors that a non-exclusive license to a large en-
tity eliminates small entity status for the inventor. Exhibit 2-3C is an example of a definition that can be in-
cluded with such a notice.
*2-17 Small entity forms originally sanctioned by the Patent Office are shown in Exhibit 2-4 for an inde-
pendent inventor, Exhibit 2-5 for a small business concern, and Exhibit 2-6 for a nonprofit organization.
It is important to check carefully any claim for small entity status. An improper claim, with deceptive intent,
can result in a patent's being unenforceable. [FN43]
[FN37]. 37 C.F.R. § 1.27.
[FN38]. Id.
[FN39]. Id.
[FN40]. 37 C.F.R. § 1.27(a)(2)(ii); M.P.E.P. § 509.02.
[FN41]. 35 U.S.C. § 202(c)(4); 37 C.F.R. § 1.27(a)(4)(i).
[FN41.1]. 37 C.F.R. § 1.27(a)(5).
[FN41.2]. 37 C.F.R. § 1.27(a)(2)(ii).
[FN41.3]. 1287 OG 67, comment 36.
[FN42]. 37 C.F.R. § 1.27.
[FN43]. Ulead Sys., Inc. v. Lex Computer & Mgmt. Corp., 351 F.3d 1139 (Fed. Cir. 2003); DH Tech., Inc. v.
Synergystex Int'l, Inc., 937 F. Supp. 902, 40 U.S.P.Q.2d 1754 (N.D. Cal. 1996); cf. Jewish Hosp. of St. Louis v.
Idexx Lab., 951 F. Supp. 2, 42 U.S.P.Q.2d 1720 (D. Me. 1996); see Richard A. Sterba, Small Entity Status:
Who's Small, Who Isn't, Who Should Be, and Why? 25 AIPLA Q.J., No. 4 at 425 (Fall 1997).
END OF DOCUMENT


Jeffrey G. Sheldon

*2-17 § 2.4 Drawings
Drawings of the invention must be filed with the application when they are necessary to understand the sub-
ject matter sought to be patented. [FN44] A detailed discussion of drawings, when drawings are needed, and
how to prepare them is presented in chapter 5. Only a brief introduction is provided in this section.
The Patent Office inspects applications that are submitted without drawings to determine if a drawing is ne-
cessary to understand the subject matter sought to be patented. If a drawing is deemed necessary to understand
the application, then the application will be rejected as incomplete, and no filing date will be granted until a
drawing is provided. [FN45] Moreover, when a patent application refers to a drawing, that drawing must be in-
cluded in the patent application or the application will be deemed incomplete and a filing date will not be gran-
ted. [FN46] Certain classes of inventions, like process *2-18 patents or composition-of-matter patents, are re-
cognized as often not requiring drawings. These classes of inventions are listed in M.P.E.P. § 608.02.
Drawings are subject to numerous and strict formal requirements found in 37 C.F.R. § 1.84 and described in
detail in M.P.E.P. § 608.02. The purpose of these strict requirements is to standardize the form of the drawings
so that the public can understand the invention with a minimum of effort. Significantly, however, a drawing that
does not meet these strict standards (an "informal drawing") may sufficiently satisfy the requirement of a "draw-
ing" to afford the applicant a filing date. An informal drawing must, however, be replaced with a formal drawing
(which does not add new matter) before any resulting patent will issue. [FN47]
A drawing must show every feature of the invention specified in the claims. [FN48] Conventional features
may be illustrated by graphical drawing symbols or labeled representations, if their detailed illustration is not es-
sential to understand the invention.
Examples of drawings are shown in the exemplary patent of Exhibit 2-7. Note the several views provided
for each article, including perspective, side, and cutaway views.
[FN44]. 35 U.S.C. § 113.
[FN45]. M.P.E.P. § 608.02.
[FN46]. 37 C.F.R. § 1.53(c).
[FN47]. 37 C.F.R. § 1.83(c).
[FN48]. 37 C.F.R. § 1.83(a).
PLIREF-PATAPP s 2.4
END OF DOCUMENT


Jeffrey G. Sheldon

*2-18 § 2.5 Specification
The specification is a description of the invention that is of sufficient detail to allow a person skilled in the
art of the invention to make and use the invention. [FN49] The specification must also set forth the best mode of
making and using the invention. The specification must be filed in or translated into the English language and
must be legibly written either *2-19 by a typewriter or mechanical printer in permanent dark ink or its equival-
ent. [FN50] If the translation is not filed with the application, the Patent Office will issue an office action and al-
low a given period of time to provide the translation. The translation, whenever filed, must be accompanied with
a statement that the translation is accurate, and a processing fee as set forth in 37 C.F.R. § 1.17(i). [FN50.1]
The following arrangement of the specification is generally provided as a guideline. [FN51]

(A) Title of the Invention
(B) Cross-Reference to Related Applications
(C) Statement Regarding Federally Sponsored Research or Development
(D) The names of the parties to a joint research agreement
(E) Reference to a "Sequence Listing," a table, or a computer program listing submitted on a compact
disc and an incorporation-by-reference of the material on the compact disc, stating the total number of com-
pact discs including duplicates, the files on each disc their date of creation, and their size in bytes
(F) Background of the Invention
(G) Brief Summary of the Invention
(H) Brief Description of the Several Views of the Drawing
(I) Detailed Description of the Invention
(J) Claims
(K) Abstract of the Disclosure
(L) Drawings
(M) Sequence Listing
*2-20 As discussed in chapter 7, it is not recommended that all of these titles be used verbatim. Not all ap-
plications have all of these sections. For example, most applications do not include a microfiche appendix or a
compact disc.
Although the M.P.E.P. specifies the contents of a model patent application, the applicant has a great deal of
discretion as to the form and contents of the application. This discretionary power is necessary to maintain the
flexibility required for the many different types of patentable inventions. A brief summary of the statutory re-
quirements for each section of the specification is presented below. A more detailed discussion is provided in
chapter 7.
The pages of the specification, including the claims and the abstract, must be numbered consecutively, start-
ing with 1, the numbers being centrally located above, or preferably below, the text. [FN52]

Each page must be single-sided only. All sheets of paper, except for drawings, must be the same size and
must be either size A4 or 8 1/2 x 11 inches. Each sheet must have a top margin of at least 2.0 cm ( 3/4 inch), a
left margin of at least 2.5 cm (1 inch), a right margin of at least 2.0 cm ( 3/4 inch), and a bottom margin of at
least 2.0 cm ( 3/4 inch). There should be no holes in the sheets as submitted. The papers cannot be permanently
bound, but binder clips and standard office staples are generally acceptable. [FN53]
The specification, including the abstract and claims, must have lines that are 1 1/2 - or double-spaced, and
text written in a nonscript-type font (for example, Arial, Times Roman or Courier), a lettering style having capit-
al letters that should be at least 0.3175 cm (0.125 inch high) (preferably a font size of 12), but may be no smaller
than 0.21 cm (0.08 inch high, for *2-21 example, a font size of 6). There can only be a single column of text.
[FN53.1]
The first page of the specification must commence on a new sheet, and no sheet including part of the text of
the specification is to include any other material. The title is considered part of the specification. [FN53.2]
The paragraphs of the specification can be numbered at the beginning of each paragraph, with applicants be-
ing encouraged to use consecutive four-digit Arabic numerals in bold and enclosed in brackets, that is, [0001],
[0002], [0003], etc. [FN54] This helps in amending the specification during prosecution of the application.
Very large tables can be provided on archival electronic media rather than in a paper specification. An indi-
vidual table more than fifty pages in length, or if the total number of pages of all the tables in the application ex-
ceeds 100 pages in length, can be submitted on a finalized compact disk. [FN55]
The text, except for pre-printed forms provided by the Patent Office, needs to be plainly and legibly written
by a typewriter or machine printer in permanent dark ink or its equivalent. The text needs to have sufficient clar-
ity and contrast with the paper to permit direct reproduction. [FN56]
The following provides a general description of the parts of the specification, including the claims. A more
detailed description can be found in chapter 6 for the claims and chapter 7 for the remainder of the specification.
[FN49]. 37 C.F.R. § 1.71.
[FN50]. M.P.E.P. § 601.
[FN50.1]. 37 C.F.R. § 1.52(d)(1).
[FN51]. 37 C.F.R. § 1.77(a).
[FN52]. 37 C.F.R. § 1.52.
[FN53]. Id.
[FN53.1]. 37 C.F.R. § 1.52(b)(2).
[FN53.2]. 37 C.F.R. § 1.71(f).
[FN54]. 37 C.F.R. § 1.52(b)(6).
[FN55]. 37 C.F.R. §§ 1.52(c), 1.58(b).

[FN56]. 37 C.F.R. § 1.52(a).
PLIREF-PATAPP s 2.5
END OF DOCUMENT


Jeffrey G. Sheldon

§ 2.5 Specification
*2-22 § 2.5.1 Title of the Invention
The title of the invention serves to identify the nature of the invention for indexing and classification of the
patent. The title is a brief, technically accurate description of the invention. It is only a few words in length, gen-
erally ranging in length from two to seven words, and it is placed at the top of the patent application. Although
the title is not used to interpret the scope of the invention, the applicant can use the title to pitch the invention to
the general public. Such descriptive terms as "Improved Electrophoresis of Biological Fluids" and "Safety Im-
proved Car Seat" can be used to tell the reader what the invention is about. The title of Exhibit 2-7, however, is
the single word "VIVARIUM."
END OF DOCUMENT


Jeffrey G. Sheldon

*2-22 § 2.5.2 Cross-References to Related Applications
Cross-references are not generally used for an original application but are used primarily for continuation
applications, divisional applications, or continuation-in-part applications. Continuation, divisional, and continu-
ation-in-part applications must contain a specific reference to the original application in order to benefit from
the earlier filing date of the original application. [FN57]
The cross reference section can also contain reference to an international application entitled to a filing date
in accordance with PCT Article 11 and designating the United States. [FN58] It can also contain a reference to
any provisional application from which priority is claimed. [FN59] If a provisional application is in a foreign
language, it is necessary to file a copy of an English translation of the provisional application to claim the bene-
fit of the provisional application. [FN59.1]
[FN57]. 37 C.F.R. § 1.78(a).
[FN58]. 37 C.F.R. § 1.78(a)(1).
[FN59]. 37 C.F.R. § 1.78(a)(3).
[FN59.1]. 37 C.F.R. § 1.78(a)(5)(iv).
END OF DOCUMENT


Jeffrey G. Sheldon

*2-23 § 2.5.3 Statement As to Invention Rights Under Federally Sponsored Research
If the invention was conceived or developed as a result of expenditures of funds obtained from the federal
government, a statement concerning the extent of governmental rights in the invention must be inserted in the
specification. [FN60] Since the vivarium was not conceived using federal funds, such a statement was not in-
cluded in Exhibit 2-7.
[FN60]. M.P.E.P. § 310.
END OF DOCUMENT


Jeffrey G. Sheldon

*2-23 § 2.5.4 Miscellaneous Statements
A variety of miscellaneous statements can be included in the specification as filed. For example, if certain
prior art is to be avoided under the CREATE ACT [FN60.1] because of the presence of a joint research agree-
ment, the specification needs to disclose the names of the parties to the joint research agreement. [FN60.2] Also,
a notice of claim of copyright can appear (see section 7.5.10.14).
[FN60.1]. 35 U.S.C. § 103(c).
[FN60.2]. 37 C.F.R. § 1.71(g)(1).
END OF DOCUMENT


Jeffrey G. Sheldon

*2-23 § 2.5.5 Compact Disc References
Compact discs optionally can be used, and in some circumstances must be used for materials such as se-
quence listing, tables, and computer program listings. An advantage of using compact discs is that any sequence
listing and any computer program listing on a compact disc or other electronic medium are excluded when de-
termining the application size filing fees based on the application size. [FN60.3]
[FN60.3]. 37 C.F.R. § 1.52(f)(1).
END OF DOCUMENT


Jeffrey G. Sheldon

*2-24 § 2.5.6 Background
The content of the background section usually includes two distinct parts: the technical field of the inven-
tion and a brief description of the art related to the invention. [FN61] These requirements are discussed in detail
in chapter 7.
The "field of the invention" must describe the technical field that encompasses the claimed invention.
[FN62] It should be directed to the subject matter of the claimed invention and may include a paraphrasing of
the applicable United States patent classification definitions. In Exhibit 2-7, the field of the invention relates to
the art of making vivariums, aquariums, and terrariums.
The "description of the related art" is one or more paragraphs briefly describing the state of the prior art.
[FN63] In Exhibit 2-11, this is found in the fourth paragraph of the background section.
It is important to avoid descriptions of applicant's invention or portions thereof that might not be part of the
prior art in the background section, because such language can be interpreted as admissions of prior art.
[FN61]. M.P.E.P. § 608.01(c).
[FN62]. Id.
[FN63]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

*2-24 § 2.5.7 Summary
A brief summary precedes the detailed description of the invention. [FN64] The summary briefly describes
the essence of the inventive concept. [FN65] The advantages of the invention or how it solves current problems
may also be elaborated. For example, the various patentable elements of the vivarium structure are described in
the summary of Exhibit 2-7.
[FN64]. 37 C.F.R.§ 1.73.
[FN65]. M.P.E.P. § 608.01(d).
END OF DOCUMENT


Jeffrey G. Sheldon

*2-25 § 2.5.8 Description of the Drawings
If the application contains drawings, a reference to the drawings and a brief description of the several views
of the drawings are necessary. [FN66] All the drawings should be correctly labeled and described. [FN67] The
description should concisely and accurately reflect the drawings themselves, as shown in Exhibit 2-7. It is also
important to make sure that all figures mentioned in the specification are correctly labeled and included with the
application.
[FN66]. 37 C.F.R. § 1.74.
[FN67]. M.P.E.P. § 608.01(g).
END OF DOCUMENT


Jeffrey G. Sheldon

*2-25 § 2.5.9 Description
The specification must include a sufficiently detailed description of at least one embodiment of the inven-
tion to enable any person skilled in the art of the invention to make and use the invention without undue experi-
mentation. [FN68] The description should distinguish the invention from the existing art and point out the novel
aspects of the invention.
The description must also present the best mode of operation of the invention that is contemplated by the in-
ventor at the time of filing the application. [FN69] This is to ensure that the public learn of the best method of
using or operating the invention without having to conduct extensive experiments. The patent examiner will gen-
erally accept any operative example of the invention as the best mode. Moreover, the description can be satis-
factory even in the absence of a specific working example. [FN70] However, any evidence of concealment of
the best mode of operation can invalidate the issued patent in subsequent litigation proceedings, so the applicant
should make sure that a sufficient disclosure is *2-26 provided. [FN71] The "best mode" requirement is dis-
cussed in detail in chapter 7.
The description should be as short and specific as possible to adequately and accurately describe the inven-
tion. In the body of the description, the applicant can use his or her own terminology to describe the invention,
so long as the words are implicitly or expressly defined within the specification and so long as the definitions
used are not contrary to the ordinary meaning of those words. [FN72] Elements of the invention, such as struc-
tures or process steps that are commonly known in the field, need not be described in detail, unless a detailed de-
scription is necessary to adequately and accurately describe the invention.
[FN68]. 35 U.S.C. § 112.
[FN69]. Id.
[FN70]. M.P.E.P. § 608.01(h).
[FN71]. Flick-Reedy Corp. v. Hydro-Line Mfg. Co., 351 F.2d 546, 146 U.S.P.Q. 694 (7th Cir. 1965), cert.
denied, 383 U.S. 958, 148 U.S.P.Q. 771 (1966).
[FN72]. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881 (Fed. Cir. 1984).
END OF DOCUMENT


Jeffrey G. Sheldon

*2-26 § 2.5.10 Claims
The specifications must end with one or more claims that particularly point out and distinctly claim the sub-
ject matter of the invention. [FN73] The claims define the extent of patent protection for the invention. Chapter
6 discusses the form and content of the claims in detail.
The claims must commence on a separate sheet of paper and should appear after the detailed description of
the invention. The claims section should begin with the words "I claim" or "We claim" or "What is claimed is."
[FN74]
Claims are of two varieties: independent and dependent claims. An independent claim claims the invention
without reference to any other claim. A dependent claim refers to and includes the limitations of some other
claim. In Exhibit 2-7, *2-27 claim 1 is an example of an independent claim, and claim 2 is an example of a de-
pendent claim.
A claim can only encompass subject matter disclosed in the specification. [FN75] Otherwise, the claim will
be rejected on the ground that it claims more than it discloses to the public. Also, the meaning of unusual terms
and phrases used in the claims must be clearly defined in the description. [FN76]
Claims are generally presented in order of scope with the first claim presented being the broadest. When
there are several claims, they are numbered consecutively in Arabic numerals. [FN77] Dependent claims should
be grouped with the claims from which they depend, to the extent possible. [FN78]
[FN73]. 37 C.F.R. § 1.75(a).
[FN74]. 37 C.F.R. § 1.75(h); M.P.E.P. § 608.01(m).
[FN75]. 37 C.F.R. § 1.75(d)(1).
[FN76]. Id.
[FN77]. 37 C.F.R. § 1.75(f).
[FN78]. 37 C.F.R. § 1.75(g).
END OF DOCUMENT


Jeffrey G. Sheldon

*2-27 § 2.5.11 Abstract
A brief abstract summarizing the technical disclosure in the specification must commence on a separate
sheet and should be placed after the claims section under the heading "Abstract of the Disclosure," or just "Ab-
stract." The paper presenting the abstract cannot include any other portions of the application or other material.
[FN79] The abstract is actually printed by the United States Patent Office on the cover page of the patent, as
shown in Exhibit 2-7. The purpose of the abstract is to allow the Patent Office examiners, and the public in gen-
eral, to determine the nature and essence of the invention from a quick, cursory inspection of the patent. The ab-
stract is presented in narrative form and is limited to a single paragraph of fewer than 150 words. [FN80] It
should be clear and concise, and it should avoid using "patentese."
*2-28 The abstract should mention the novel aspect of the invention. However, the abstract should not dis-
cuss the merits or speculative applications of the invention, nor should it compare the invention with the prior
art. [FN81]
[FN79]. 37 C.F.R. § 1.72(b).
[FN80]. M.P.E.P. § 608.01(b).
[FN81]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

*2-28 § 2.6 Preliminary Amendments
There are circumstances in which a preliminary amendment is filed with an original application. For ex-
ample, applications originating overseas may not conform to U.S. claim standards. Multiple dependent claims,
depending upon other multiple dependent claims and omnibus claims are frequently used overseas, but are not
acceptable in the United States.
A preliminary amendment is considered part of the original disclosure. [FN81.1] Therefore, it is best to file
such a preliminary amendment with the original application rather than waiting until a filing receipt is received.
One reason for this is a potential prosecution history estoppel issue. [FN81.2] By amending the claims by a pre-
liminary amendment that is considered part of the original application, it may be possible to avoid prosecution
history estoppel which would result if the claims are narrowed by a preliminary amendment submitted after the
application is filed.
If a preliminary amendment filed with the original disclosure contains new matter, the preliminary amend-
ment needs to be referenced in the oath. A preliminary amendment that cancels all claims will not be entered.
[FN81.3]
[FN81.1]. 37 C.F.R. § 1.115(a); see also 37 C.F.R. § 2.15(a).
[FN81.2]. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002).
[FN81.3]. 37 C.F.R. § 1.115(b)(1).
PLIREF-PATAPP s 2.6
END OF DOCUMENT


Jeffrey G. Sheldon

*2-29 § 2.7 Information Disclosure Statement
The inventor and every other person who is substantially involved in the preparation or prosecution of the
application have a duty of good faith and candor towards the Patent Office. [FN82] Under that duty, such indi-
viduals must disclose to the Office all information that is known by them and that is material to the application.
[FN83] As a means of complying with that duty of disclosure, applicants are encouraged to file an information
disclosure statement. [FN84] A detailed discussion of the contents of the information disclosure statement is
provided in chapter 8.
Information disclosure statements are generally filed with the patent application, although it is not necessary
to submit that document at the time of application for the patent. The submission is considered timely if made
within ninety days of the application filing date. Filing a complete disclosure with the application benefits the
applicant by immediately bringing all references to the attention of the examiner before the application is first
examined.
The information disclosure statement should disclose all information that is material to the application. In-
formation is material if it establishes by itself or in combination with other information a prima facie case of un-
patentability of a claim. [FN85] Such information includes material information found in publications and pat-
ents belonging to the inventor, other related United States and foreign patents, and published technical articles.
Such information also includes information known to the applicant and others involved in the prosecution of the
application regarding prior disclosures, commercial activity relating to the invention, and the *2-30 like. A
sample form for listing publications cited to the Patent Office is provided in Exhibit 2-8.
If there is doubt as to the materiality of a particular reference, it is safer to cite the reference in the disclos-
ure and let the examiner determine whether or not the information is material. Failure to comply with the duty of
disclosure can have severe consequences. An intentional withholding of material prior art can result in unen-
forceability of the entire patent, an award of attorney's fees, antitrust liability, and possible suspension or disbar-
ment of the prosecuting attorney.
[FN82]. 37 C.F.R. § 1.56(a).
[FN83]. Id.
[FN84]. 37 C.F.R. § 1.97(a).
[FN85]. 37 C.F.R. § 1.56(b).
PLIREF-PATAPP s 2.7
END OF DOCUMENT


Jeffrey G. Sheldon

*2-30 § 2.8 Claiming Foreign Priority
Under 35 U.S.C. §§ 119 and 365, a United States patent application may be entitled, for some purposes, to
the benefit of the filing date of an earlier patent application in a foreign country or an international application
that designates at least one foreign country. Establishing an earlier filing date can be crucial to overcome an in-
tervening reference with an effective date prior to the United States application filing date, but subsequent to the
date of filing the foreign application.
The earlier filing date may be obtained if

(1) the foreign application is for the same invention and identifies the same inventor or inventors,
(2) the foreign country at issue grants reciprocal rights to United States applicants,
(3) the United States application is filed within twelve months (six months for design patents) of the
first or earliest filing date in a reciprocating foreign country, and
(4) the invention was not patented or described in a printed publication in any country or in use or for
sale within this country more than one year prior to the *2-31 actual United States application date in the
United States. [FN86]
A list of foreign countries that recognize the right of priority is provided in M.P.E.P. § 201.13. Foreign priority
may also be claimed based on a foreign application for an inventor's certificate. [FN87]
The applicant must file a claim with the Patent Office to obtain foreign priority. There is no special form or
language for the claim for priority. [FN88] However, the oath or declaration of the application must identify the
foreign application on which priority is claimed and any foreign application having a filing date earlier than the
foreign application on which priority is claimed. [FN89] All foreign applications should be identified by spe-
cifying the application number, country, day, month, and year of filing. The claim should also include a copy of
the original foreign application certified by the patent office of the foreign country. When the foreign documents
are filed for the purpose of overcoming some prior art reference, a sworn or certified translation is required.
[FN90]
A claim for priority must be presented during the pendency of the application, and no later than four months
from the actual filing date of the application, or sixteen months from the filing date of the prior foreign applica-
tion, whichever period is longer. The claim must identify the foreign application from which priority is claimed,
as well as any foreign application for the same subject matter and having a filing date before that of the applica-
tion for which priority is claimed. A certified copy of the foreign application must be filed before the patent is
granted. [FN91] An English translation of *2-32 the non-English language foreign priority document is not re-
quired except when the application is involved in an interference or when it is necessary to overcome the date of
a reference relied upon by the examiner, or specifically requested by the examiner. [FN92]
[FN86]. 35 U.S.C. § 119.

[FN87]. Id. Certificates of inventorship are provided by Communist countries as an alternative to patent grants.
[FN88]. M.P.E.P. § 201.14(b).
[FN89]. 37 C.F.R. § 1.63.
[FN90]. M.P.E.P. § 201.15.
[FN91]. 37 C.F.R. § 1.55.
[FN92]. 37 C.F.R. § 1.55(a)(2).
PLIREF-PATAPP s 2.8
END OF DOCUMENT


Jeffrey G. Sheldon

§ 2.9 Petition to Make Special
*2-32 § 2.9.1 Introduction
Patent applications are ordinarily examined in the order in which they are received by the Patent and Trade-
mark Office. A Petition to Make Special is a request that a patent application be given "special" status, entitling
the application to be taken up out of turn and examined ahead of other applications. [FN92.1] In general, a grant
of such "special" status means that the time required in the overall Patent Office examining process may be
shortened by as much as 60%. A petition to make special can increase the effective term of a patent by adding to
the front end of the term. Since utility patents generally expire twenty years from the effective filing date, early
issuance of a patent as a result of special status does not adversely affect the end of the term.
[FN92.1]. See 37 C.F.R § 1.102 and M.P.E.P. § 708 for Petitions to Make Special for utility patent applications;
see 37 C.F.R. § 1.155 and M.P.E.P. § 1504.30 for petitions to make special for design patent applications.
END OF DOCUMENT


Jeffrey G. Sheldon

*2-32 § 2.9.2 Grounds for Requesting a Petition to Make Special
A utility application can be made "special" under any of the following circumstances:
1. If the Applicant is sixty-five years of age or more;
*2-33 2. If the Applicant's health is such that he or she might not be able to assist in the prosecution of
the application;
3. If the invention will materially enhance the quality of the environment;
4. If the invention will materially contribute to the development or conservation of energy resources;
5. If the invention relates to the safety of research in the field of recombinant DNA;
6. If the invention relates to superconductivity;
7. If the invention is ready to be manufactured but cannot be manufactured unless a patent is granted;
8. If actual infringement is occurring;
9. If the invention relates to HIV/AIDS and cancer;
10. If the invention relates to counterterrorism;
11. If the applicant complies with the accelerated examination program;
12. If the application relates to biotechnology and is filed by a small entity where the subject of the pat-
ent application is a major asset of the small entity, the development of the technology will be significantly
impaired if examination of the patent application is delayed;
13. If the invention is capable of countering terrorism;
14. Reissue applications (automatically treated as special pursuant to 37 C.F.R. § 1.176); and
15. If the applicant qualifies for the Patent Prosecution Highway (PPH) (where the applicant has re-
ceived a ruling from the Japanese Patent Office that at least one claim in a corresponding Japanese patent
application is patentable, corresponding claims in the U.S. applications can receive fast track examination).
[FN92.2]
*2-34 Design applications can be made special if the application is accompanied by the requisite petition
fee, a petition, a statement that a pre-examination search was conducted and an Information Disclosure State-
ment.
[FN92.2]. 37 C.F.R. § 1.102; M.P.E.P. § 708.02; 1308 OG 106.
END OF DOCUMENT


Jeffrey G. Sheldon

*2-34 § 2.9.3 Procedure
There are now two different procedures for Petitions to Make Special. If a petition is based on the applic-
ant's health or age or is under the PPH program (categories 1, 2, and 15 in § 2.9.2), the procedure is straightfor-
ward. It is only necessary to submit a petition in writing that identifies the application (by application number
and filing date) and to pay any petition fee.
All other categories have the same requirements as the requirements for the accelerated examination pro-
gram. The goal for the accelerated examination program is to complete examination of the application within
twelve months of the filing date. Therefore, for practical purposes, the reason for the Petition to Make Special
does not matter except for categories 1, 2, and 15 above.
The requirements to qualify for accelerated examination are daunting, and include the following:
1. The application has to be filed with a Petition to Make Special.
2. The application needs to be accompanied by the fees set forth in 37 C.F.R. § 1.17(h), or a statement
that the claimed subject matter is directed to environmental quality, energy, or counterterrorism.
3. The application, petition, and required fees must be filed electronically (with an exception if the elec-
tronic filing system is not available).
4. At the time of filing, the application must be complete under 37 C.F.R. § 1.51 and in condition for
examination. Thus it must include the basic filing fee, search *2-35 fee, examination fee, application size
fee, and an executed oath or declaration.
5. The application must contain three or fewer independent claims and twenty or fewer total claims, and
no multiple dependent claims.
6. Dependent claims cannot be argued separately for patentability; the petition must include a statement
to that effect.
7. The claims must be directed to a single invention. If the Patent Office decides they are not, the ap-
plicant must make an election without traverse in a telephone interview, and the petition must include a
statement to that effect.
8. The petition must include a statement that the applicant will agree to have an interview, including an
interview before a first office action, to discuss the prior art and any potential rejections or objections, with
the intention of clarifying and possibly resolving all issues with respect to patentability at that time.
9. Applicant must provide a statement that a preexamination search was conducted, including an identi-
fication of the field of search by U.S. class and subclass and the date of the search. For database searches,
the applicant must provide the search logic or chemical structure sequence used as a query, the name of the
files searched in, and the date of search. The preexamination search must involve U.S. patents and patent
application publications, foreign patent documents, and nonpatent literature, unless the applicant can justify
with reasonable certainty that no references more pertinent than those already identified are likely to be

found in the eliminated source and includes such a justification. The preexamination search must be directed
to the claimed invention and encompass all features of the claims, giving the claims their broadest *2-36
reasonable interpretation. The search must also encompass the disclosed features that may be claimed. A
search report from a foreign patent office will not satisfy the preexamination search requirement unless the
search report satisfies the above requirements.
10. During prosecution, amendments to claims, including any new claims, that are not encompassed by
the preexamination search or an updated accelerated examination support document will be treated as not
wholly responsive and will not be entered.
11. An accelerated examination support document must be provided in support of the petition, and the
document must include the following:
a. An information disclosure statement in compliance with 37 C.F.R. § 1.98 citing each reference
deemed most closely related to subject matter of each of the claims.
b. For each reference cited, identification of all the limitations in the claims disclosed by the refer-
ence, specifying where the limitation is disclosed in the cited reference.
c. A detailed explanation of how each of the claims is patentable over the references cited.
d. A concise statement of the utility of the invention as defined in each independent claim (unless
the application is a design application).
e. A showing where each limitation of the claims finds support in the specification.
f. If applicable, the identity of each means- or step-plus-function claim element and the structure,
material, or acts in the specification that correspond thereto.
*2-37 g. If the application claims the benefit of priority of one or more applications, a showing
where each limitation of the claims finds support in each such prior application.
h. Identify any cited references that may be disqualified as prior art under 35 U.S.C. § 103(c) as
amended by the Cooperative Research Technology Enhancement Act.
A form to use is PTO/SB/25, which is available at the PTO website.
END OF DOCUMENT


Jeffrey G. Sheldon

*2-37 § 2.9.4 Potential Advantages of a Petition to Make Special
Filing a Petition to Make Special has the following potential advantages:

1. Shorter Prosecution Time--If a Petition to Make Special is granted, the Patent and Trademark Office
examines the application on an expedited basis. Therefore, examination time is usually reduced and a patent
will generally issue sooner.
2. Longer Patent Term--Since the term of a United States patent expires twenty years from the filing
date of the application, and a Petition to Make Special usually decreases the examination time of the applic-
ation, the granting of a Petition to Make Special generally means that any resulting patent has a longer ef-
fective term.
END OF DOCUMENT


Jeffrey G. Sheldon

*2-37 § 2.9.5 Potential Disadvantages of a Petition to Make Special
Filing a Petition to Make Special has the following potential disadvantages:

*2-38 1. Higher Initial Costs--Preparing and filing a Petition to Make Special increases the cost of pro-
secuting the application. To what extent the costs are increased depends upon the basis for requesting the
Petition. The cost of complying with the accelerated examination procedure is huge.
2. Prosecution History Estoppel--The likelihood of creating prosecution history estoppel with the accel-
erated examination procedure is very high.
3. Miscellaneous Disadvantages--The inability to argue dependent claims, the limited number of
claims, and the inability to traverse restriction requirements greatly reduce the value of the accelerated ex-
amination program.
END OF DOCUMENT


Jeffrey G. Sheldon

*2-35 § 2.9.6 Procedure
It is recommended that petitions to make special be hand carried to the individual at the Patent Office that is
in charge of these petitions. Otherwise, there is a chance that the petition will be misplaced or lost. For example,
petitions for a design application can be directly hand carried to the Design Technology Center, Director's Of-
fice. The USPTO website can be checked to determine who is responsible for making petition decisions and
where that person is located.
Alternatively, a petition can be mailed to the Patent Office with the appropriate mail stop specified which
can be determined through the USPTO website, or alternatively by telephoning the Patent Office.
END OF DOCUMENT


Jeffrey G. Sheldon

§ 2.10 Filing the Application
*2-38 § 2.10.1 Cover Sheet and Filing Fees
The patent application should also include a cover sheet, as shown in Exhibit 2-9. The cover sheet acts as a
transmittal letter from the applicant to the Patent and Trademark Commissioner. It identifies the applicant,
serves as a table of contents for the patent application, and shows the fees due with the application.
The cover sheet is addressed to the Commissioner for Patents. It identifies the application by the name of
the first named inventor and the title of the patent application. It also lists the application elements that make up
the application, including the fee transmittal form (see Exhibit 2-9A), any claim for small entity status, the num-
ber of pages in the specification, the number of sheets of drawings, the accompanying oath or declaration, the
optional application data sheet, and any CD-ROMs or CD-Rs. The cover sheet also allows for identification of
any accompanying application parts such as assignment papers, Information Disclosure Statement, Power *2-39
of Attorney, return receipt postcard, and nonpublication request. [FN93]
The fee can be calculated using a Fee Transmittal form, shown as Exhibit 2- 9A. The fee schedule for pat-
ents is periodically revised by the PTO. Updated information can be obtained from the PTO website
<www.uspto.gov>. The fee schedule shown in Exhibit 2-9A is provided only for illustration and should not be
used to calculate actual fees without verification as to its accuracy.
The schedule requires a basic filing fee for general applicants and a reduced basic fee for small entity ap-
plicants. The present schedule entitles the applicant to present up to twenty claims, with a maximum of three of
those claims presented in independent form. Additional claims or independent claims require additional fees.
Additional fees are also required if the application contains multiple dependent claims.
The filing fees calculated on the fee transmittal form can be paid directly from a deposit account with the
Patent Office. Any person can start a deposit account in the Patent Office by paying a minimum deposit of
$1,000. [FN94] This account can be used to pay any fee or to order any service of the Patent Office so long as
the account contains sufficient funds to cover the requisite fee amount. On billing by the Patent Office, the ap-
plicant must promptly reimburse the deposit account. The cover sheet must report the correct deposit account
number to allow assessment of the fees.
The fee must be paid either by a check or through a deposit account. The Patent Office no longer accepts
credit cards.
The applicant can, and should, grant the Patent Office the broad authority to charge any additional fees in-
curred under *2-40 the same application to the deposit account. It is strongly recommended that this action be
taken to avoid abandonment of an application for the inadvertent failure to pay a fee.
It is desirable to include a customer number on the cover sheet. The Patent Application Information Retriev-

al (PAIR) project allows independent inventors, registered attorneys, and patent agents to securely access their
own patent application status if they have a customer number and if the patent application is associated with the
customer number. Although at one time the Patent Office wanted the customer number provided as a bar code,
the Patent Office presently does not accept bar codes because of difficulties in accurately reading them; the cus-
tomer number must be typed. Customer numbers can be obtained by downloading and filling out the appropriate
form from the Patent Office website.
If the application is not to be filed overseas, and the applicant does not want the application to be published,
that should be requested on the cover sheet under 35 U.S.C. § 122(b)(2)(B)(i). In addition, form PTO/SB/35 or
its equivalent needs to be submitted. [FN95] Submission of a request for nonpublication can be risky. If the ap-
plicant subsequently files an application directed to the invention in another country, or under a multilateral in-
ternational agreement, that requires publication of applications eighteen months after filing, the applicant must
notify the United States Patent and Trademark Office within forty-five days after the filing. Failure to do so res-
ults in abandonment of the application. [FN96]
If a customer number is available, it should be included on the cover sheet. This will allow access to online
information about the status of the application through the PTO PAIR system.
[FN93]. See text below regarding the advisability of submitting a nonpublication request.
[FN94]. 37 C.F.R. § 1.25.
[FN95]. That form and other PTO forms can be obtained at <http:// www.uspto.gov/web/forms>. Forms that are
easy to fill in can be obtained as a subscription service from Legal Star <http://www.legalstar.com/>.
[FN96]. 35 U.S.C. § 122(b)(2)(B)(iii); 1272 OG 22 (July 1, 2003).
END OF DOCUMENT


Jeffrey G. Sheldon

*2-41 § 2.10.2 Postcard and Mailing
A notice acknowledging receipt of the application is desired. The application package should also include a
stamped, self-addressed return postcard addressed to the applicant or the applicant's attorneys identifying the pa-
pers included in the application. When the application package is received by the Patent Office, the postcard will
be stamped with the date of receipt and the application's tentative serial number and placed in the return mail.
The postcard thus provides an acknowledgment by the Patent Office of receipt of the application. The postcard
should identify the application by the applicant's name or names and the title of the application. It should list all
of the formal papers included in the application package, state the filing fee check number, indicate the total
number of pages of the application, and specify the number of drawing sheets. An example of such a postcard is
shown in Exhibit 2-10.
The postcard is important because it serves as prima facie evidence of receipt of the papers identified at the
Patent Office on the date stamped by the Patent Office. [FN97] The person receiving the papers in the Patent Of-
fice checks the listing on the postcard against the filed papers. If any of the listed papers are not filed, they will
be crossed out and initialed by the person receiving the papers. [FN98]
The postage on the postcard should be either a stamp or nondated meter postmark. If it is a metered post-
mark, the Post Office may not deliver the postcard because of the discrepancy between the meter date and when
the Patent Office actually deposits the postcard in the mail.
The application, including all papers and drawings, should be placed unfolded in an envelope and addressed
to:
*2-42 Commissioner for Patents
PO Box 1450
Alexandria, Virginia 22313-1450
The application can be mailed or hand delivered to the Patent Office by any method. An application that is
filed using the Express Mail Service of the United States Postal Service is considered to have been filed in the
Office on the date of deposit with the Postal Service (as shown on the Postal Service's receipt of deposit).
[FN99] A certificate of express mailing, stating the date of mailing and signed by the person mailing the applica-
tion, must be included with the application. [FN100] A typical form for this certificate is provided in Exhibit
2-11. If the application is express mailed on a Saturday, Sunday, or federal holiday, the applicant gets the benefit
of the next working day.
If it is critical to obtain the earliest possible filing date, then the application should be hand-carried to the
post office and an express mail receipt obtained on the spot. Depositing an express mail application in a mailbox
can result in a one-day (or more) delay between the date of deposit and the date that the Postal Service acknow-

ledges receipt. The Patent Office uses the Postal Service date rather than the applicant's certificate-of-mailing
date as the filing date.
[FN97]. M.P.E.P. § 503.
[FN98]. Id.
[FN99]. 37 C.F.R. § 1.10(a).
[FN100]. 37 C.F.R. § 1.10(b).
END OF DOCUMENT


Jeffrey G. Sheldon

*2-42 § 2.10.3 Checklist
A comprehensive checklist for a patent application is provided in Exhibit 2- 12. The checklist lists the com-
ponents of a patent application and procedural steps calculated to avoid errors in the preparation and filing of the
application.
END OF DOCUMENT


Jeffrey G. Sheldon

*2-43 § 2.11 S-Signatures
An S-Signature is a signature between forward slash marks, but not a handwritten signature. [FN101] Exem-
plary of a situation where an S-Signature can be used is after the practitioner creates a document, and then S-
Signator signs it on his/her PC, and the document is then mailed or hand-carried to the Patent Office. Another
example is when a declaration or affidavit is signed by an inventor on a PC, the S-Signed declaration or affidavit
is electronically sent to the practitioner through email, the practitioner prints out the document, and then mails or
has it hand-carried to the Patent Office.
The requirements for an S-Signature are as follows:
1. The S-Signature must consist of only letters (including English and non-English alphabet, script
fonts, and text characters, such as Hebrew, Kanji etc.) and/or Arabic numbers and appropriate spaces and
commas, apostrophes, or hyphens for punctuation;
2. The person signing must insert his/her own S-Signature with a first single forward slash mark before
and a second single forward slash mark after the S-Signature;
3. A registered practitioner must supply his/her registration number, either as part of the S-Signature or
immediately below or adjacent thereto. A number sign (#) may precede the supplied registration number;
4. The signor's name must be presented in a printed or typed form immediately below or adjacent to the
S-Signature, and be reasonably specific so that the identity of the signor can be readily recognized;
*2-44 5. A person submitting a document signed by another with an S-Signature is obligated to have a
reasonable basis to believe that the person whose signature is present on the document actually inserted that
signature, and should retain evidence of authenticity of the signature;
6. The person inserting an S-Signature in a document submitted to the Patent Office certifies that the in-
serted signature appearing in the document is his or her own signature;
7. There is no requirement that the signor's actual, full or legal name be used, but the Patent Office sug-
gests that the full name be used.
An example of an appropriate S-Signature of an inventor is as follows:

/John T. Smith/ John T. Smith
An example of an S-Signature of a person acting in a representative capacity is as follows:

/John T. Smith/
John T. Smith, Reg. No. 11111
[FN101]. 37 C.F.R. § 1.4(d).
PLIREF-PATAPP s 2.11
END OF DOCUMENT

PLIREF-PATAPP 2 Exh. 2-1 FOR EDUCATIONAL USE ONLY Page 1
How to Write Pat. Application 2 Exh. 2-1
(Cite as: PLIREF-PATAPP 2 Exh. 2-1)

Jeffrey G. Sheldon

*2EX-1 Exhibit 2-1: Declaration for Utility or Design Patent Application
TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE
PLIREF-PATAPP 2 Exh. 2-1

END OF DOCUMENT


Jeffrey G. Sheldon

*2EX-3 Exhibit 2-2: Power of Attorney and Correspondence Address Indication Form

END OF DOCUMENT


Jeffrey G. Sheldon

*2EX-5 Exhibit 2-3: ASSIGNMENT
WHEREAS, I, _______________________________________________________ respectively, have invented cer-

tain new and useful improvements disclosed in an application for United States Letters Patent titled
_______________________, and executed by us, on even date herewith.
AND WHEREAS _____________, a _____ corporation (hereafter, together with any successors, legal representat-
ives of assign thereof, called "Assignee"), wants to acquire the entire right, title and interest in and to said improvement
and application.
NOW, THEREFORE, for good and valuable consideration, the receipt of which is hereby acknowledged, I have
sold, assigned, transferred and set over, and do hereby sell, assign, transfer and set over to Assignee the entire right, title
and interest in and to said improvements, and said application and all divisions, substitutions, continuations and continu-
ations-in-part thereof, and all United States Letters Patents which may be granted thereon and all reissues and extensions
thereof, and all priority rights under the International Convention for the Protection of Industrial Property for every
member country, and all applications for patents (including related rights such as utility-model registrations, inventor's
certificates, and the like) heretofore or hereafter filed for said improvements in any foreign countries, and all patents
(including all extensions, renewals and reissues thereof) granted for said improvements in any foreign countries; and we
hereby authorize and request the United States Commissioner of Patents and Trademarks, and any officials of foreign
countries whose duty it is to issue patents on applications as aforesaid, to issue all patents for said improvements to As-
signee in accordance with the terms of this assignment;
AND I HEREBY covenant that I have full right to convey the entire interest herein assigned, and that I have not ex-
ecuted, and will not execute, any agreement in conflict herewith;
AND I HEREBY further covenant and agree that I will communicate to Assignee any facts known to me respecting
said improvements, and testify in any legal proceeding, sign all lawful papers, execute all divisional, continuation, con-
tinuations-in-part, substitute and reissue applications, make all rightful oaths and generally do everything possible to aid
Assignee to obtain and enforce proper patent protection for said improvements in all countries.
IN TESTIMONY WHEREOF, I hereunto set my hand this ____ day of _______, 19 ___.
________________
STATE OF CALIFORNIA )
) SS.
COUNTY OF )

On __________, 19 ___, before the undersigned, a Notary Public for the State and County aforesaid, personally ap-
peared ____________, known to me or proved to me on the basis of satisfactory evidence to be the person whose name is
subscribed to the above assignment, and acknowledged that he executed the same.
________________
Notary Public

END OF DOCUMENT

PLIREF-PATAPP 2 Exh. 2-3A FOR EDUCATIONAL USE ONLY Page 1
How to Write Pat. Application 2 Exh. 2-3A
(Cite as: PLIREF-PATAPP 2 Exh. 2-3A)

Jeffrey G. Sheldon

*2EX-7 Exhibit 2-3A: Assignment of Application
Sample Form (former PTO/SB/15) (08-03)

-------------------------------------------------------------------
Docket Number (Optional)
ASSIGNMENT OF APPLICATION
-------------------------------------------------------------------
Whereas, I/We, __________ of _____________, hereafter referred to as applicant, have invented certain new and
useful improvements in _________________________________________________________
[ ] for which an application for a United States Patent was filed on __________, Application Number ___________.
[ ] for which an application for a United States Patent was executed on _____, and Whereas, ___________ of
___________ herein referred to "assignee" whose mailing address is ___________________ is desirous of acquiring the
entire right, title and interest in the same;
Now, therefore, in consideration of the sum of ___________ dollars ($ ___ ), the receipt whereof is acknowledged,
and other good and valuable consideration, I/We, the applicant(s), by these presents do sell, assign and transfer unto said
assignee the full and exclusive right to the said invention in the United States and the entire rights, title and interest in
and to any and all Patents which may be granted therefore in the United States. I/We hereby authorize and request the
Director of the U.S. Patent and Trademark Office to issue said United States Patent to said assignee, of the entire right,
title, and interest in and to the same, for his sole use and behoof; and for the use and behoof of his legal representatives,
to the full and of the term for which said Patent may be granted, as fully and entirely as the same would have been held
by me had this assignment and sale not been made.
Executed this ________ day of __________, 20 ___. at

_________________________________________________.
_____________
Signature
State of ______ ) _____________
SS: Printed Name/Registration No., If applicable
County of ______ )
Before me personally appeared said __________________ and acknowledged the foregoing instrument to be his free

act and deed this ________ day of _____ 20 ___.
Seal
Note, Signature of all the inventors or assignees of record of the entire interest or their representative(s) are required.
Submit
[ ] Total of _____ forms are submitted.
This form offers a sample or suggested format for an assignment document. This sample form is not an OMB offi-
cially approved form.
PLIREF-PATAPP 2 Exh. 2-3A

END OF DOCUMENT

PLIREF-PATAPP 2 Exh. 2-3B FOR EDUCATIONAL USE ONLY Page 1
How to Write Pat. Application 2 Exh. 2-3B
(Cite as: PLIREF-PATAPP 2 Exh. 2-3B)

Jeffrey G. Sheldon

*2EX-9 Exhibit 2-3B: Recordation Form Cover Sheet
PLIREF-PATAPP 2 Exh. 2-3B

END OF DOCUMENT

PLIREF-PATAPP 2 Exh. 2-3C FOR EDUCATIONAL USE ONLY Page 1
How to Write Pat. Application 2 Exh. 2-3C
(Cite as: PLIREF-PATAPP 2 Exh. 2-3C)

Jeffrey G. Sheldon

*2EX-11 Exhibit 2-3C: Definition of Small Entity Status
1 A "small entity" is defined in the federal patent law [FNa1] as an (1) independent inventor, (2) a small
business concern or (3) a non-profit organization.
2. A "small business concern" is defined as:

Any business concern (1) whose number of employees, including those of its affiliates, does not exceed
500 persons and (2) which has not assigned, granted, conveyed or licensed, and is under no obligation under
contract or law to assign, grant, convey or license, any rights in the invention to any person who could not
be classified as an independent inventor if that person had made the invention, or to any concern which
would not qualify as a small business concern or a non-profit organization. For the purpose of this defini-
tion, concerns are affiliates of each other when either, directly or indirectly, one concern controls or has
power to control the other, or a third party or parties controls or has the power to control both. The number
of employees of the business concern is the average over the fiscal year of the persons employed during
each of the pay periods of the fiscal year. Employees are those persons employed on a full-time, part-time or
temporary basis during the previous NSfiscal year of the concern.
3. A non-profit organization is defined as:

(1) a university or other institution of higher education located in any country; (2) a non-profit organiz-
ation as defined under the Internal Revenue Code; (3) any non-profit scientific or educational organization
qualified under the non-profit organization statute of any state of this country; or (4) any non-profit organiz-
ation located in a foreign country which would qualify as a non-profit organization under the Internal Rev-
enue Code or under the laws of any state were it located in this country.
[FNa1]. 37 C.F.R. 1.9 and 13 C.F.R. 121.3-18.
PLIREF-PATAPP 2 Exh. 2-3C

END OF DOCUMENT


Jeffrey G. Sheldon

*2EX-13 Exhibit 2-4: Verified Statement Claiming Small Entity Status-- Independent Inventor
---------------------------------------------------------------------
VERIFIED STATEMENT (DECLARATION) CLAIMING SMALL ENTITY Docket No.
STATUS (37 CFR 1.9(f) AND 1.27(b)) - INDEPENDENT INVENTOR
---------------------------------------------------------------------
Serial No. Filing Date Patent No. Issue Date
--------------------------------------------------------
Applicant/Patentee:
--------------------------------------------------------
Invention:
--------------------------------------------------------
As a below named inventor, I hereby declare that I qualify as an independent inventor as defined in 37 CFR 1.9(c)
for purposes of paying reduced fees under section 41(a) and (b) of Title 35, United States Code, to the Patent and Trade-
mark Office with regard to the invention entitled above and described in:
[ ] the specification to be filed herewith.
[ ] the application identified above.
[ ] the patent identified above.
I have not assigned, granted, conveyed or licensed and am under no obligation under contract or law to assign, grant,
convey or license, any rights in the invention to any person who could not be classified as an independent inventor under
37 CFR 1.9(c) if that person had made the invention, or to any concern which would not qualify as a small business con-
cern under 37 CFR 1.9(d) or a nonprofit organization under 37 CFR 1.9(e).
Each person, concern or organization to which I have assigned, granted, conveyed, or licensed or am under an oblig-
ation under contract or law to assign, grant, convey, or license any rights in the invention is listed below:
[ ] No such person, concern or organization exists.
[ ] Each such person, concern or organization is listed below.
"NOTE: Separate verified statements are required from each named person, concern or organization having
rights to the invention averring to their status as small entities (37 CFR 1.27)

FULL NAME ______________________________

ADDRESS ______________________________
[ ] Individual [ ] Small Business [ ] Nonprofit
Concern Organization
FULL NAME ______________________________

ADDRESS ______________________________
FULL NAME ______________________________

ADDRESS ______________________________
FULL NAME ______________________________

ADDRESS ______________________________
-------------------------------------------------------------------------------
Copyright 1994 P03/REV01 Patent and Trademark Office-U.S. DEPARTMENT OF

Legisoft COMMERCE
*2EX-14 I acknowledge the duty to file, in this application or patent, notification of any change in status resulting in
loss of entitlement to small entity status prior to paying, or at the time of paying, the earliest of the issue fee or any main-
tenance fee due after the date on which status as a small entity is no longer appropriate. (37 CFR 1.28(b))
I hereby declare that all statements made herein of my own knowledge are true and that all statements made on in-
formation and behalf are believed to be true: and further that these statements were made with the knowledge that willful
false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of
the United States Code, and that such willful false statements may jeopardize the validity of the application, any patent
issuing thereon, or any patent to which this verified statement is directed.
NAME OF INVENTOR _______________

SIGNATURE OF INVENTOR ______________ DATE: ______




SIGNATURE OF INVENTOR ______________ DATE:




SIGNATURE OF INVENTOR ______________ DATE:

--------------------------------------------------
Patent and Trademark Office-U.S. DEPARTMENT OF COMMERCE

END OF DOCUMENT


Jeffrey G. Sheldon

*2EX-15 Exhibit 2-5: Verified Statement Claiming Small Entity Status--Small Business Concern
-----------------------------------------------------------------------
VERIFIED STATEMENT (DECLARATION) CLAIMING SMALL ENTITY Docket No.
STATUS (37 CFR 1.9(f) AND 1.27(c)) - SMALL BUSINESS CONCERN
-----------------------------------------------------------------------
--------------------------------------------------------
Applicant/Patentee:
--------------------------------------------------------
Invention:
--------------------------------------------------------
I hereby declare that I am:

[ ] the owner of the small business concern identified below:
[ ] an official of the small business concern empowered to act on behalf of the concern identified below:
NAME OF CONCERN: _________________________
ADDRESS OF CONCERN: ________________________
I hereby declare that the above-identified small business concern qualifies as a small business concern as defined in
13 CFR 121.3-18, and reproduced in 37 CFR 1.9(d), for purposes of paying reduced fees under Section 41(a) and (b) of
Title 35, United States Code, in that the number of employees of the concern, including those of its affiliates, does not
exceed 500 persons. For purposes of this statement, (1) the number of employees of the business concern is the average
over the previous fiscal year of the concern of the persons employed on a full-time. part-time or temporary basis during
each of the pay periods of the fiscal year, and (2) concerns are affiliates of each other when either, directly or indirectly,
one concern controls or has the power to control the other, or a third party or parties controls or has the power to control
both.
I hereby declare that rights under contract or law have been conveyed to and remain with the small business concern
identified above with regard to the above identified invention described in:

[ ] the specification filed herewith with title as listed above.

If the rights held by the above-identified small business concern are not exclusive, each individual concern or organ-
ization having rights to the invention is listed on the next page and no rights to the invention are held by any parson, oth-
er than the inventor, who could not qualify as an independent inventor under 37 CFR 1.9(c) or by any concern which
would not qualify as a small business concern under 37 CFR 1.9(d) or a nonprofit organization under 37 CFR 1.9(e).
-------------------------------------------------------------------------------
Legisoft COMMENCE
*2EX-16 Each person, concern or organization to which I have assigned, granted, conveyed, or licensed or am under
an obligation under contract or law to assign, grant, convey, or license any rights in the invention is listed below:
[ ] no such person, concern or organization exists.
[ ] each such person, concern or organization is listed below.
FULL NAME ______________________________

ADDRESS ______________________________
FULL NAME ______________________________

ADDRESS ______________________________
FULL NAME ______________________________

ADDRESS ______________________________
FULL NAME ______________________________

ADDRESS ______________________________
Separate verified statements are required from each named person, concern or organization having rights to the in-
vention averring to their status as small entities. (37 CFR 1.27)
I acknowledge the duty to file, in this application or patent, notification of any change in status resulting in loss of
entitlement to small entity status prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance
fee due after the date on which status as a small entity is no longer appropriate. (37 CFR 1.28(b))

formation and belief are believed to be true; and further that these statements were made with the knowledge that willful
false statements and the like so made are punishable by line or imprisonment, or both, under Section 1001 of Title 18 of
NAME OF PERSON SIGNING: ______________________

TITLE OF PERSON SIGNING:
OTHER THAN OWNER: ______________________
ADDRESS OF PERSON SIGNING:
SIGNATURE: ________________ DATE: ______
Patent and Trademark Office-U.S. DEPARTMENT OF COMMENCE

END OF DOCUMENT


Jeffrey G. Sheldon

*2EX-17 Exhibit 2-6: Verified Statement Claiming Small Entity Status-- Nonprofit Organization
----------------------------------------------------------------------
VERIFIED STATEMENT (DECLARATION) CLAIMING SMALL ENTITY Docket No
STATUS (37 CFR 1.9(f) AND 1.27(d)) - NONPROFIT ORGANIZATION
----------------------------------------------------------------------
--------------------------------------------------------
Applicant/Patentee:
--------------------------------------------------------
Invention:
--------------------------------------------------------
I hereby declare that I am an official empowered to act on behalf of the nonprofit organization identified below:
NAME OF ORGANIZATION: _____________________

ADDRESS OF ORGANIZATION. ______________________
_______________________
______________________
_______________________
TYPE OF NONPROFIT ORGANIZATION:

[ ] University or other institute of Higher Education
[ ] Tax Exempt under Internal Revenue Service Code (26 U.S.C. 501(a) and 501(c)(3))
[ ] Nonprofit Scientific or Educational under Statute of State of The United States of America
Name of State: Citation of Statute:
[ ] Would Qualify as Tax Exempt under internal Revenue Service Code (26 U.S.C. 501(a) and 501(c)(3)) if Loc-

ated in The United States of America

[ ] Would Qualify as Nonprofit Scientific or Educational under Statute of State of The United States of America
if Located in The United States of America
Name of State: Citation of Statute:
I hereby declare that the above-identified nonprofit organization qualifies as a nonprofit organization as defined in
37 C.F.R. 1.9(e) for purposes of paying reduced fees to the United States Patent and Trademark Office regarding the in-
vention described in:
[ ] the specification to be filed herewith.
I hereby declare that rights under contract or law have been conveyed to and remain with the nonprofit organization
with regard to the above identified invention.
If the rights held by the above-identified nonprofit organization are not exclusive, each individual, concern or organ-
ization having rights to the invention is listed on the next page and no rights to the invention are held by any person, oth-
er than the inventor, who could not qualify as an independent inventor under 37 CFR 1.9(c) or by any concern which
would not qualify as a small business concern under 37 CFR 1.9(d) or a nonprofit organization under 37 CFR 1.9(a)
-------------------------------------------------------------------------------
Legisoft COMMENCE
*2EX-18 Each person, concern or organization to which I have assigned, granted, conveyed, or licensed or am under
an obligation under contract or law to assign, grent, convey, or license any rights in the invention is listed below:
[ ] no such person, concern or organization exists.
[ ] each such person, concern or organization is listed below.
FULL NAME ______________________________

ADDRESS ______________________________
FULL NAME ______________________________

ADDRESS ______________________________
FULL NAME ______________________________

ADDRESS ______________________________

FULL NAME ______________________________

ADDRESS ______________________________
Separate verified statements are required from each named person, concern or organization having rights to the in-
vention averring to their status as small entities. (37 CFR 1.27)
I acknowledge the duty to file, in this application or patent, notification of any change in status resulting in loss of
entitlement to small entity status prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance
fee due after the date on which status as a small entity is no longer appropriate. (37 CFR 1.28(b))
formation and belief are believed to be true; and further that these statements were made with the knowledge that willful
false statements and the like so made are punishable by line or imprisonment, or both, under Section 1001 of Title 18 of
NAME OF PERSON SIGNING: ______________________

TITLE IN ORGANIZATION: ______________________
ADDRESS OF PERSON SIGNING:
SIGNATURE: _______________ DATE: _______
Patent and Trademark Office-U.S. DEPARTMENT OF COMMENCE

END OF DOCUMENT


Jeffrey G. Sheldon

*2EX-19 Exhibit 2-7: Sample Patent
*2EX-22 VIVARIUM
BACKGROUND
This invention relates to a vivarium, more specifically to a combination terrarium - aquarium
Aquariums have been known for centuries. They allow marine plants and animals to be kept and viewed in a
controlled environment. Likewise, terrariums have long allowed convenient viewing of terrestrial plants and an-
imals of exotic origin. Aquariums and terrariums can be both educational and entertaining.
Most terrestrial plants and animals cannot five under water. For that reason it is visually stimulating and in-
teresting to see terrestrial plants and animals displayed next to aquatic life forms, capacially if the terrestrial life
forms exhibited appear to be submerged under water, although as a matter of fact, they are not located in the wa-
ter in which live fish and the like are kept For example, it is visually interesting to see a bird appearing to fare
well under water
Prior art attempts at such terrarium-aquarium combinations, such as U.S. Pat. No. 296,153 to Ledig, uses a
double walled, annular aquarium. Terrestrial life forms are placed in the terrarium area surrounded by the annu-
lar aquarium. This can give the illusion of having, for example, a bird living under water, as shown is Ledig.
However, typical of such prior art combinations in that the terrarium is open to the atmosphere on the top. This
detracts seriously from the desired visual impression that the terrarium is actually submerged under water Other
attempts at submerged terrariums, for example, U.S. Pat. No. 4,204,499 to Leyvs, which maintains as air space
underwater by clamping as inverted container under the water, has the shortcoming that there is no convention
access to the inside of the terrarium. Rearrangement of the terrarium display and the cleaning of the terrarium
are both major undertakings in such submerged terrariums.
What is needed is a vivarium, comprising a terrarium which appears to be totally submerged in water in an
aquarium, with convenient access provided to the inside of the terrarium.
SUMMARY
This invention satisfies the above needs. A novel vivarium for the sustenance of both terrestrial and aquatic
life is provided.
A preferred version of the vivarium of the present invention comprises:

(a) a bottom wall;

(b) upstanding, substantially transparent outer side walls which in cooperation with the bottom wall
form an outer container; and
(c) upstanding, substantially transparent inner side walls which in cooperation with the bottom wall
form at least one inner container, each inner container also having an enclosing top wall, such that the inner
container is not in fluid communication with the outer container.
The top of the outer side walls in higher than the top wall of the inner container. The space between the in-
ner container and the outer container is used as an aquarium, generally to be filled with water to a level above
the top of the inner container. A portion of the bottom wall inside at least one of the inner containers has at least
one access opening therethrough such that the inside of the inner container is normally in fluid communication
with the atmosphere. Each inner container is for use as a terrarium.
Preferably the vivariums further comprises supporting means, e.g. legs, supporting the vivarium and spacing
the bottom wall of the vivarium apart from the supporting surface, for easy access into the inside of the terrari-
um through the access opening. Preferably there is a door which normally closes the access opening in the bot-
tom wall, to prevent the escape of the terrestrial animals kept in the terrarium.
To increase visual interest, the walls of the terrarium can be joined by substantially transparent tubes, such
tubes being in fluid communication with either the aquarium or the terrarium. Therefore a live fish kept in the
aquarium could appear to be swimming through the air in the terrarium, and a land animal kept in the terrarium
could appear to be running through the water in the aquarium. There can also be multiple terrariums submerged
in the aquarium, as least some of which are linked together by substantially transparent tubes.
DRAWINGS
These and other features, aspects and advantages of the present invention will become better understood
with reference to the following description, appended claims, and accompanying drawings where
FIG. 1 is an oblique elevational perspective view of a preferred embodiment of the vivarium of the subject
invention;
FIG. 2 is a top plan view of the vivarium of FIG. 1;
FIG. 3 is a cross-sectional view at line 2-3 of the vivarium of FIG. 2;
FIG. 4 is a front elevational view of the vivarium of FIG. 1;
FIG. 5 is a front elevational view of another preferred embodiment of the vivarium of the subject invention.,
and
FIG. 6 is a perspective view of yes another preferred embodiment of the vivarium of the subject invention.
DESCRIPTION
The present invention is directed to a vivarium having a terrarium which appears to be totally submerged in
an aquarium With reference to the drawings, and particularly FIGS. 1, 2, and 3, a vivarium 10 has a bottom wall
15. Upstanding, substantially transparent outer side walls 20 cooperate with the bottom wall 15 to form a tank or
outer container 25. The top of the outer container 25 can be open, as shown in FIG. 1, or it can be equipped with
a removable cover as is conventional in the aquarium art.

Upstanding, substantially transparent inner side walls 35 cooperate with the bottom wall 15 to form as inner
container 40. The inner container 40 is sealed at the top by a top wall 45, a space 50 being formed between the
inside of the outer container 25 and the outside of the inner container 40. The inner container 40 and the outer
container 25 are not in fluid communication.
The walls 15, 20, 35 and 45 can be constructed of glass, or other suitable transparent material such as
plastics, and can be joined together by conventional means such as by the use of a water resistant adhesive suit-
able for aquarium use, the adhesive forming a seam 48. The walls could be substantially planer, as shown in
FIG. 1, with the seam 48 jointing edges of the walls. The top and bottom of the outer side walls can be capped
with upper fringe 51 and lower fringe 52 respectively. *2EX-23 These fringes can have an angle or changed
shaped cross-section, and can serve both decorative and structural purposes, as in well known in the aquarium
art. However, their presence is not absolutely necessary.
Alternatively, the walls could also be curved, as shown in FIG. 6, with the inner and outer containers 25 and
40 being substantially seamless, as being formed of substantially continuous walls. For example, the outer con-
tainer 25 can be formed to have a bowl shape, as shown in FIG. 6. Each inner container 40 can be formed in the
shape of a globe, or of an inverted bowl. Although in is necessary that the side walls 20 and 35 be upstanding,
they need not be either substantially planer or vertical, as is depicted in FIG. 1. Accordingly, these walls can
have any desired shape and orientation, as is well known in the aquarium art.
The outer container 25 and thus the space 50 between the inside of the outer container 25 and the outside of
the inner container 40, is used as an aquarium 60. The aquarium 60 is generally filled with water to a level suffi-
cient to totally submerge the inner container 40. The aquarium 60 and thus the water-filled space 50 can be pop-
ulated with various aquatic life forms, such as aquatic plants, live fish and other marine animals, and other con-
ventional aquarium exhibits, such as rocks and coral and ceramic figures, etc. Amphibian life forms. e.g. frogs.
etc. can also be kept in the aquarium 60.
The bottom wall 15, in an area located inside the inner container 40, has an access opening 65, such that the
inside of inner container 40 can conveniently be accessed from the bottom of the vivarium 10. A removable door
means 70 normally closes the access opening 65. In the exemplary configuration show in FIG. 3, the door means
70 is a hinged grated door which is normally held in the closed position, for preventing ingress and egress to the
inside of the inner container 40. The door is hinged at hinges 71, and normally latched shut by latch 72. The
door 70 swings downwards to open, as shown in FIG. 3. Alternatively, the door 70 can also be hinged to that it
swivels sideways to open. The access opening 65 can be co-extensive with the entire bottom of the inner con-
tainer 40, or it can be smaller
The inside of the inner container is used as a terrarium 62. It could be filled with exhibits of terrestrial ori-
gin, such as miniature landscapes, air breathing plants such as bonsai and other exotic plant species, and air
breathing animals or pets such as lizards, newts, white mice, hamsters, snakes, birds, and insects such as ants
and spiders, etc.
Through the access opening 65, the exhibit within the terrarium 62 can conveniently be rearranged as often
a desired The pets can also be fed and the terrarium 62 cleaned through the access opening 65. The vivarium 10
need not be dismantled and the aquarium 60 need not be drained for performing the day to day chores of main-
taining the terrarium. To further facilitate access through the opening 65, preferably the vivarium 10 has support
means 75, e.g. legs, for supporting the vivarium, and for specing the bottom of the vivarium 10 apart from a sup-
porting surface (e.g. the top of a table supporting the vivarium), so that it would be easy to work with arms and
hands beneath the bottom of the vivarium 10, and through the access opening 65.

In use, the vivarium 10 allows terrestrial life forms to be displayed as if they are living under and in water,
65 right next to aquatic plants and live fish.
The door means 70 need not be airtight. In fact it is preferable that it is not, such that the inside of the ter-
rarium 62 is in fluid communication with the outside atmosphere, such that the air breathing life forms inside the
terrarium 62 would be supplied with the air needed. For example, the door means 70 could comprise a grated
door, as shown in FIG. 1, which allows air to flow in and out of the inner container 40. Alternatively, expecially
where a controlled atmosphere within the terrarium is desired, a powered air-supply could be provided. For ex-
ample, the air pump for the aquarium 60 could also be used to blow fresh air into the terrarium 62 through an air
tube 77, which extends through the bottom of the inner container 40, as shown in FIG. 6
To enhance visual interest, passageways linking various parts of the terrarium 62 and extending through the
water in the aquarium 60 can be provided. The air breathing pets can travel through such passageways. and
would appear to be travelling through water. Similar passageways can also be provided for linking the various
parts of the aquarium 60, such passageways extending through the air space in the terrarium 62. Fish swimming
through such passageways would appear to be swimming through the air in the terrarium.
Referring to FIGS. 1 and 2, the vivarium can have tube means, namely a dry tube 80, having substantially
transparent walls. The dry tube 80 connects an opening 85 at one portion of the inner side walls 35, to another
opening 90 at another portion of the inner side walls 35. The dry tube 80 extends through the water in the aquar-
ium 60. The inside of the dry tube 80 forms a passageway 95, which is in fluid communication with the terrari-
um 62. Thus, the passage way 95 is air-filled, and air breathing pets can travel through the passageway 95.
Similarly, again referring to FIOS. 1 and 2, there can be tube means, namely a wet tube 100, having sub-
stantially transparent walls. The wet tube 100 connects an opening 105 at one portion of the inner side walls 35,
to another opening 110 at another portion of the inner side walls 35. The wet tube 100 extends through the air
space inside the terrarium 62 (the inner container 40). The inside of the wet tube 100 forms a passageway 115,
which is in liquid communication with the aquarium 60. That is, the passageway 115 is water-filled, and marine
animals such as live fish can swim through the passageway 115.
The tube means 80 and 100 can be constructed of conventional transparent materials, such as glass or
plastics, and can be joined to the inner side walls by conventional means, such as by the use of water resistant
adhesives suitable for aquarium construction. The tubes can be substantially straight and uniform in diameter, as
shown in the drawings herein, but they are not so limited. The rubes can also be of any shape, size, cross-sec-
tion, configuration and contortion, limited only by creativity, and by suitability for use with the particular pets
involved. Also, a tube can branch into two or more tube branches.
As shown in FIG. 5, the vivarium 10 can have more than one terrarium 62 being submerged in the water of
the aquarium 60 Each terrarium 62 is as described before. Incompatible exhibits can thus be displayed side by
side as long as these terrariums are not interconnected. For example, birds can be kept in one terrarium, and
makes can be kept in another, and a rare worm collection can be kept in yet another adjacent terrarium, all with-
in the same aquarium 60. The number of terrariums is limited generally by the sizes of the aquarium and the ter-
rariums, and the need for convenient access to each of the terrariums through the bottom of the vivarium
*2EX-24 10. Each of the terrariums would have its own access opening. Passageways can be provided through
some of all of the terrariums for travel therethrough by the marine animals that are kept in the aquarium 60.
FIG. 6 shows another preferred embodiment of the subject invention. Multiple terrariums, each as described
before, are submerged in water of the aquarium 60. The terrariums are connected to each other by dry tubes 80,

such that the air-breathing pets have access to all of the terrariums. Again, the background exhibits in each ter-
rarium can be different. Passageways can also be provided through some or all of the terrariums for swimming
therethrough by marine animals kept in the aquarium 60.
Although certain preferred embodiments of the present invention have been described, the spirit and scope
of the invention is by no means restricted to what is described above. For example, within the general frame-
work of (a) one or more terrariums submerged in an aquarium, (b) access to the terrariums through openings in
their bottom walls, (c) air-filled passageways passing through the water in the aquarium, and (d) water-filled
passageways passing through the air space in the terrarium, there is a very large number of permutations and
combinations possible, all of which are within the scope of the present invention. For example, even though only
a maximum of two terrarium chambers are shown in each of the drawings, the number of terrariums could be
much larger than two.
What we claim is:
1. A vivarium comprising:
(a) a bottom wall;
(b) upstanding, substantially transparent outer side walls which is cooperation with the bottom wall
form an outer container;
form a single inner container, the inner container also having as enclosing top wall, such that the inner con-
tainer is not in fluid communication with the outer container; and
(d) at least one substantially transparent tube member forming a dry tube, the said at least one dry tube
connecting an opening at one portion of the inner side walls to another opening at another portion of the in-
ner side walls, with the said at least one dry tube extending through the space between the inner container
and the outer container, the inside of the said at last one dry tube being in fluid communication with the in-
side of the inner container; wherein the top of the outer side walls extend higher than the top wall of the in-
ner container; the space between the inner container and the outer container is adapted to for use as an
aquarium, capable of being filled with water to a level above the top of the inner container; a portion of the
bottom wall inside the inner container having at least one access opening therethrough; the inside of the in-
ner container being in fluid communication with the atmosphere; and the inner container being adapted for
use as a terrarium.
2. The vivarium of claim 1, further comprising at least one substantially transparent tube member forming a
wet tube, the said at least one wet tube connecting an opening at one portion of the inner side walls, the said at
least one wet tube extending through the inside of the inner container, the inside of the said at least one wet tube
being in fluid communication with the space between the inner container and the outer container.
3. The vivarium of claim 2, comprising a plurality of the wet tubes.
4. The vivarium of claim 1, comprising a plurality of the dry tubes.
5. A vivarium comprising:
(a) a bottom wall;
(b) upstanding, substantially transparent outer side walls which in cooperation with the bottom wall
form an outer container;

form at least two inner containers spaced apart from each other, each said at least two inner containers also
having an enclosing top wall, such that each said at least two inner container is not in fluid communication
with the outer container; and
(d) at least one substantially transparent tube member forming a dry tube, the said at least one dry tube
connecting an opening at a portion of the inner side walls of one of the said at least two inner containers to
another opening at a portion of the inner side walls of another of the said at least two inner containers, the
said at least one dry tube extending through the space between the said at least one inner containers and the
outer container, the inside of the said at least one dry tube being in fluid communication with the insides of
said at least two inner containers; and
(e) at least one substantially transparent tube member forming a wet tube, the said at least one wet tube
connecting an opening at one portion of the inner side walls of one of the said at least two inner containers
to another opening at another portion of the inner side walls of the same inner container, with the said at
lease one wet tube extending through the same inner container, the inside of the said at least one wet tube
being in fluid communication with the space between the said at least two inner containers and the outer
container wherein the top of the outer side walls extend higher than the top wall of each of the said at least
two inner containers; the space between each of the said at least two inner containers and the outer container
is adapted for use as an aquarium, capable of being filled with water to a level above the top of each of the
said at least two inner containers; a portion of the bottom wall inside each of the said at least two inner con-
tainers having at least one access opening there-through; the inside of each of the said at least two inner
container being in fluid communication with the atmosphere; and each of the said at least two inner contain-
er being adapted for use as a terrarium.
6. The vivarium of claim 5, comprising a plurality of the dry tubes
7. The vivarium of claim 6, wherein the inner containers are all in fluid communication with each other
through the dry tubes.
8. The vivarium of claim 5, comprising a plurality of the wet tubes, at least one wet tube extending through
each of two different inner containers.
9. The vivarium of claim 14, wherein there is at least one wet tube extending through each inner container.
*****
END OF DOCUMENT


Jeffrey G. Sheldon

*2EX-25 Exhibit 2-8: Information Disclosure Statement by Applicant

END OF DOCUMENT


Jeffrey G. Sheldon

*2EX-27 Exhibit 2-9: Utility Patent Application Transmittal
*2EX-28 Privacy Act Statement

The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with
your submission of the attached form related to a patent application or patent Accordingly, pursuant to the re-
quirements of the Act, please be advised that: (1) the general authority for the collection of this information is
35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; and (3) the principal purpose for
which the information is used by the U.S. Patent and Trademark Office is to process and/or examine your sub-
mission related to a patent application or patent. If you do not furnish the requested information, the U.S. Patent
and Trademark Office may not be able to process and/or examine your submission, which may result in termina-
tion of proceedings or abandonment of the application or expiration of the patent.
The information provided by you in this form will be subject to the following routine uses:
1. The information on this form will be treated confidentially to the extent allowed under the Freedom
of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C. 552a). Records from this system of records
may be disclosed to the Department of Justice to determine whether disclosure of these records is required
by the Freedom of Information Act.
2. A record from this system of records may be disclosed, as a routine use, in the course of presenting
evidence to a court magistrate, or administrative tribunal, including disclosures to opposing counsel in the
course of settlement negotiations.
3. A record in this system of records may be disclosed, as a routine use, to a Member of Congress sub-
mitting a request involving an individual, to whom the record pertains, when the individual has requested
assistance from the Member with respect to the subject matter of the record.
4. A record in this system of records may be disclosed, as a routine use, to a contractor of the Agency
having need for the information in order to perform a contract Recipients of information shall be required to
comply with the requirements of the Privacy Act of 1974, as amended, pursuant to 5 U.S.C. 552a(m).
5. A record related to an International Application filed under the Patent Cooperation Treaty in this sys-
tem of records may be disclosed, as a routine use, to the International Bureau of the World Intellectual Prop-
erty Organization, pursuant to the Patent Cooperation Treaty.
6. A record in this system of records may be disclosed, as a routine use, to another federal agency for
purposes of National Security review (35 U.S.C. 181) and for review pursuant to the Atomic Energy Act (42
U.S.C. 218(c)).
7. A record from this system of records may be disclosed, as a routine use, to the Administrator, Gener-
al Services, or his/her designee, during an inspection of records conducted by GSA as part of that agency's
responsibility to recommend improvements in records management practices and programs, under authority
of 44 U.S.C. 2904 and 2906. Such disclosure shall be made in accordance with the GSA regulations govern-

ing inspection of records for this purpose, and any other relevant (i.e., GSA or Commerce) directive. Such
disclosure shall not be used to make determinations about individuals.
8. A record from this system of records may be disclosed, as a routine use, to the public after either
publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35 U.S.C.
151. Further, a record may be disclosed, subject to the limitations of 37 CFR 1.14, as a routine use, to the
public if the record was filed in an application which became abandoned or in which the proceedings were
terminated and which application is referenced by either a published application, an application open to
public inspection or an issued patent.
9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local
law enforcement agency, if the USPTO becomes aware of a violation or potential violation of law or regula-
tion.

END OF DOCUMENT


Jeffrey G. Sheldon

*2EX-29 Exhibit 2-9A: Fee Transmittal for FY 2005
*2EX-30 Privacy Act Statement

The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with
your submission of the attached form related to a patent application or patent. Accordingly, pursuant to the re-
quirements of the Act, please be advised that: (1) the general authority for the collection of this information is
35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; and (3) the principal purpose for
which the information is used by the U.S. Patent and Trademark Office is to process and/or examine your sub-
mission related to a patent application or patent. If you do not furnish the requested information, the U.S. Patent
and Trademark Office may not be able to process and/or examine your submission, which may result in termina-
tion of proceedings or abandonment of the application or expiration of the patent.
The information provided by you in this form will be subject to the following routine uses:
1. The Information on this form will be treated confidentially to the extent allowed under the Freedom
of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C. 552a). Records from this system of records
may be disclosed to the Department of Justice to determine whether disclosure of these records is required
by the Freedom of information Act.
2. A record from this system of records may be disclosed, as a routine use, in the course of presenting
evidence to a court, magistrate, or administrative tribunal, including disclosures to opposing counsel in the
course of settlement negotiations
3. A record in this system of records may be disclosed as a routine use, to a Member of Congress sub-
mitting a request involving an individual, to whom the record pertains, when the individual has requested
assistance from the Member with respect to the subject matter of the record.
4. A record in this system of records may be disclosed, as a routine use, to a contractor of the Agency
having need for the information in order to perform a contract Recipients of information shall be required to
comply with the requirements of the Privacy Act of 1974, as amended, pursuant to 5 U.S.C. 552a(m).
5. A record related to an International Application filed under the Patent Cooperation Treaty in this sys-
tem of records may be disclosed, as a routine use, to the International Bureau of the World Intellectual Prop-
erty Organization, pursuant to the Patent Cooperation Treaty.
6. A record in this system of records may be disclosed, as a routine use, to another federal agency for
purposes of National Security review (35 U.S.C. 181) and for review pursuant to the Atomic Energy Act (42
U.S.C. 218(c)).
7. A record from this system of records may be disclosed, as a routine use, to the Administrator, Gener-
al Services, or his/her designee, during an inspection of records conducted by GSA as part of that agency's
responsibility to recommend improvements in records management practices and programs, under authority
of 44 U.S.C. 2904 and 2906. Such disclosure shall be made in accordance with the GSA regulations govern-

ing inspection of records for this purpose, and any other relevant (i.e., GSA or Commerce) directive. Such
disclosure shall not be used to make determinations about individuals.
8. A record from this system of records may be disclosed, as a routine use, to the public after either
publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35 U.S.C.
151. Further, a record may be disclosed, subject to the limitations of 37 CFR 1.14, as a routine use, to the
public if the record was filed in an application which became abandoned or in which the proceedings were
terminated and which application is referenced by either a published application, an application open to
public inspection or an issued patent.
9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local
law enforcement agency, if the USPTO becomes aware of a violation or potential violation of law or regula-
tion.

END OF DOCUMENT


Jeffrey G. Sheldon

*2EX-31 Exhibit 2-10: Postcard
The following papers were received in the United States Patent and Trademark Office:
Applicant: ___________ Attorney: _____________
Title of Invention: _________________________
Serial No. ______________ Filing Date ____________
• Specification: No. of Pages ___

• Claims: No. of Claims ___
• Drawings: No. of Sheets ___
• Declaration of Power of Attorney
• Assignment
• Fee Enclosed: Amount ___
•
•
•
•

END OF DOCUMENT


Jeffrey G. Sheldon

*2EX-33 Exhibit 2-11: Express Mail Certificate
"Express Mail" mailing label No. __________
Date of Deposit: ___________________
I hereby certify that the following documents:
_______________________________________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
are being deposited in a single envelope with the United States Postal Service "Express Mail Post Office Addressee"
service under 37 C.F.R. 1.10 on the date indicated above and such envelope is addressed to the Commissioner of Patents
and Trademarks, Washington, D.C. 20231
_______________________
(Name of person mailing documents)
_______________________
(Signature of person mailing documents)

END OF DOCUMENT


Jeffrey G. Sheldon

*2EX-35 Exhibit 2-12: Checklist for Mailing Patent Applications
INSTRUCTIONS: EVERY BOX MUST BE INITIALED OR LABELED "N/A" (NOT APPLICABLE)

FOR EVERY APPLICATION.
[ ] SPECIFICATION AND CLAIMS PRESENT (NOT NEEDED FOR FWC)
[ ] ALL PAGES PRESENT
[ ] ALL PAGES NUMBERED CORRECTLY
[ ] ABSTRACT PRESENT
[ ] CLAIMS NUMBERED CONSECUTIVELY
[ ] DRAWINGS PRESENT
[ ] DRAWINGS HAVE FIGURE NUMBERS
[ ] DRAWING NUMBERS CORRESPOND TO FIGURE NUMBERS IN SPECIFICATION

[ ] POSTCARD PREPARED WITH ALL INFORMATION, INCLUDING CHECK NUMBER,
NUMBER OF PAGES, PRELIMINARY AMENDMENT, AND INFORMATION DISCLOSURE
STATEMENT.
[ ] COVER SHEET
[ ] FEES CORRECTLY CALCULATED
[ ] DEPOSIT ACCOUNT AUTHORIZATION INCLUDED
[ ] CUSTOMER NUMBER INCLUDED

[ ] CHECK SIGNED BY ATTORNEY (SAME AMOUNT AS FEE CALCULATION)
[ ] ASSIGNMENT PRESENT
[ ] RECORDATION COVER SHEET
[ ] EXECUTED ON SAME DATE AS DECLARATION
[ ] TITLE MATCHES APPLICATION TITLE
[ ] ASSIGNMENT FILING FEE INCLUDED
[ ] DECLARATION OR COMBINED DECLARATION/POWER OF ATTORNEY
[ ] ALL ADDRESSES PRESENT
[ ] ALL INVENTORS SIGNED AND DATED
[ ] POWER OF ATTORNEY BY CORPORATION
[ ] EXECUTED BY CORPORATION WHEN ASSIGNED BY APPLICANT
[ ] INFORMATION DISCLOSURE STATEMENT PROVIDED

[ ] OFFICE COPIES OF DOCUMENTS IN FILE
[ ] WORD "PRIOR" DELETED (BOTH PLACES)

[ ] ALL DOCUMENTS ENCLOSED

[ ] SIGNED BY ATTORNEY
[ ] EXPRESS MAIL PROPERLY DONE
[ ] COPIES OF PAPERS FILED BEING SENT TO CLIENT
[ ] DOCKETING NOTIFIED OF FILING

END OF DOCUMENT

PLIREF-PATAPP § 2A.1 FOR EDUCATIONAL USE ONLY Page 1
How to Write Pat. Application s 2A.1
(Cite as: PLIREF-PATAPP s 2A.1)

Jeffrey G. Sheldon

Chapter 2A: Electronic Filing in the Patent Office
*2A-2 § 2A.1 Introduction
The Patent Office Electronic Filing System (EFS) is available for filing utility, design, and provisional ap-
plications, and for U.S. national stage applications under 35 U.S.C. § 371. EFS can be used for continuation, di-
visional, and continuation-in-part applications.
Electronic filing of patent applications has many advantages, including:

(1) Almost twenty-four-hours-a-day, seven-days-a-week access to the USPTO filing window.
(2) An electronic acknowledgment receipt is immediately issued upon a successful filing, including the
USPTO assigned application serial number and the receipt date, which is likely to be the filing date. The ac-
knowledgment receipt is equivalent to a postcard receipt.
(3) The electronic submission is automatically validated for completeness against USPTO business
rules, thereby saving the time and effort required to deal with an incomplete application.
(4) EFS users potentially have greater control over the accuracy of pre-grant publications, since the data
submitted electronically is the data that the USPTO publishes.
(5) Eliminates charges for express mail and couriers.
(6) Allows online payment of fees.
(7) Provides immediate access to the PAIR system.
(8) Eliminates the possibility of losing applications en route to the Patent Office.
*2A-3 (9) Allows for a "paperless" office.
(10) Allows online collaboration among professionals worldwide.
Thus, there is very little reason not to file a patent application electronically.
PLIREF-PATAPP s 2A.1
END OF DOCUMENT


Jeffrey G. Sheldon

*2A-3 § 2A.2 Overview of Electronic Filing
The basic steps to file electronically are:

(1) Obtain the requisite hardware and software;
(2) Obtain authorization from the Patent Office for electronic filing to use secure filing;
(3) Author the patent documents;
(4) Scan drawings, declarations, and other formal papers; and
(5) Transmit the submission package to the Patent Office.
END OF DOCUMENT


Jeffrey G. Sheldon

*2A-3 § 2A.3 Who Can Electronically File
Anyone can electronically file. There are two types of filers: registered filers and unregistered filers. Re-
gistered filers are those who obtain a digital certificate in advance from the USPTO (see § 2A.6). Unregistered
filers are everyone else, including attorneys, patent agents, secretaries, pro se applicants, and paralegals.
END OF DOCUMENT


Jeffrey G. Sheldon

*2A-3 § 2A.4 What Can Be Electronically Filed
New patent applications can be electronically filed. These are utility, design, provisional, and national stage
applications under 35 U.S.C. § 371. Also, computer readable format (CRF) biosequence listings can be included
with the application filing. Follow-on submissions associated with an application *2A-4 can be electronically
filed, including amendments, petitions, Board of Appeals documents, Information Disclosure Statements, non-
patent literature, foreign references, filing fees, petition fees, and extension of time requests.
Certain documents cannot be filed electronically. These include new plant applications and color drawings
for plant applications, reexamination and reissue applications, and secrecy order applications and/or documents.
END OF DOCUMENT


Jeffrey G. Sheldon

*2A-4 § 2A.5 Hardware and Software Required
EFS hardware and software requirements and settings are as follows:

a. Firewalls must not strip packet header content. The EFS supports the following browsers: Internet
Explorer 5.5 and 6.0; Netscape Navigator 7.x; Apple Safari 2.0; and Mozilla 1.7.3.
b. The browser must support HTML frames.
c. Browser settings must:
• Accept first- and second-party cookies
• Allow per-session cookies
• Enable active scripting
• Enable scripting of Java applets

• Accept entrust security applets
• Disable "warn me before accepting a cookie"
With some browsers, it is acceptable to set an option for "prompt." A list of settings for different types of
browsers is available on the USPTO website, currently at ht-
tp://www.uspto.gov/ebc/portal/efs/tutorials_java.htm.
d. Networks infrastructures must allow communication via HTTPS/SSLv3 or TLSv1
i. SSL--Secure Sockets Layer
ii. TLS--Transport Layer Security (TLS is an upgrade of SSL security protocol)
*2A-5 e. Workstations must run a supported version of Java Runtime Environment (JRE) software,
such as:
i. Microsoft Java Virtual Machine (MSJVM), which is not included with Windows XP SP1a,
Windows XP SP2, Windows Server™ 2003, or any future Microsoft software
ii. Windows--Sun JRE 1.5.0_06 (SSL and TLS) http:// java.sun.com/j2se/1.5.0/download.jsp
iii. Macintosh--Apple JRE 1.5.0_05 http://
www.apple.com/downloads/macosx/apple/javaupdate142.html
iv. Linux--JRE 1.5.0_05 http://java.sun.com/j2se/1.5.0/download.jsp
f. One of the following operating systems is needed: Windows 2000 and XP; Windows OSX 10.4; or
Linux RedHat 9.0.
g. A PDF (portable document format) writer is required because the documents need to be submitted to
the USPTO as PDF files in version 1.1 to 1.6. This format preserves the fonts, images, graphics, and layout
of any source document, regardless of the application and platform used to create it. PDF writers that have
been tested by the USPTO are
i. Adobe Writer (commercial)
ii. Open Office (freeware)
iii. Easy Office (adware)

iv. CutePDF (freeware)

v. PDF 995 (adware)
vi. Primo PDF (freeware)
vii. Amyuni PDF Converter Pro (commercial)
viii. ABXPDF writer (available free from the USPTO)
A problem that arises with creation of PDF files is that all fonts used must be embedded. Otherwise the
USPTO rejects *2A-6 the document. To accomplish embedding with Adobe Acrobat Professional, a complicated
series of steps and settings must be implemented. A program that automatically embeds fonts, such as ABXPDF
writer or CutePDF, is preferred.
h. Adobe Reader 7.0 is required (preferably version 7.0.7 for optimal performance) for filling in the
USPTO online forms (such as the application data sheet and IDS forms).
END OF DOCUMENT


Jeffrey G. Sheldon

*2A-6 § 2A.6 Obtaining a Digital Certificate
A preferred first step to using the EFS is to obtain the appropriate authorization and password from the Pat-
ent Office to receive a high-level security digital certificate. This process takes only a few days to complete. (As
explained below, if circumstances require faster action, a low-level security filing can be made.) The steps
needed to obtain high-level security are:
(1) Obtain a customer number from the Patent Office, or update an existing customer number;
(2) Generate a high-level security digital certificate.
A customer number is issued for each entity such as a law firm or corporate patent department. Form PTO/
SB/125A is used to obtain a customer number and can be obtained from the USPTO website.
The digital certificate is issued separately to each individual. Only those individuals associated with a cus-
tomer number can be issued a high-level security digital certificate. For a registered attorney or patent agent, the
USPTO registration number must be associated with the entity's customer number.
A digital certificate can be obtained by downloading a certificate action form, USPTO Form PTO-2042
(PAIR access form) from the USPTO website. The certificate action form must be notarized and mailed or
overnighted with the original *2A-7 signature (a fax or copy is not acceptable) to Mail Stop EBC, Commissioner
for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
After approving the high-level security digital certificate application, the USPTO sends two codes, an au-
thorization code (sent by e-mail) and a reference number (sent by regular mail). You can also receive your refer-
ence number by calling the Electronic Business Center at 1-866-217-9197.
The foregoing procedure will not work if the deadline to file an application is short. The USPTO gives the
applicant the option of using a low-level security process instead. The EFS contains a built-in low-level security
system that does not require a password. Because of its immediate availability and the ability to avoid following
the prolix procedures necessary to obtain a full security certificate, there is an obvious advantage to the low-
level security procedure. When using this shortcut, you cannot save an application for later completion; the en-
tire application has to be submitted in one online session. Further, very little authentication of the sender takes
place during a low-level security filing. The USPTO advises that high-level certificates are preferred for all fil-
ings.
END OF DOCUMENT


Jeffrey G. Sheldon

*2A-7 § 2A.7 Preparing the Application for Electronic Filing
To file an application using the EFS, the application is prepared in the normal way using any word pro-
cessing program. Then, before filing, the application is "printed" to PDF format for electronic uploading to the
USPTO (see § 2A.5 for a list of available PDF writers). Electronic documents are printed into PDF format and
saved; any paper documents are converted to an electronic document by scanning the document into a PDF
format.
The format of the application must be standard 8 1/2 x 11 inches or A4 (21 x 29.7 cm). Larger pages need to
be reduced *2A-8 to 8 1/2 x 11 inches, generally while converting to PDF. All fonts must be embedded to en-
sure that they travel with the document and must be licensed and legally embeddable.
No 3D models, attachments, multipage objects, or commenting or reviewing features can be in the docu-
ment. Also, there can be no dependencies on external files or resources. The application documents submitted
must be self-contained.
PDF file layers are not permitted. Only single-layer documents can be submitted. Documents with multiple
layers must be flattened prior to submission. Also, invisible layers will be lost when processed by the USPTO.
No password-protected or encrypted PDF files are permitted.
All PDF documents must be free of executables, worms, viruses, or other malicious content. Files with ma-
licious content will be deleted by the USPTO.
The USPTO specifies the file naming conventions that can be used. The file names must start with A-Z, a-z,
or 0-9, and cannot use brackets and commas. The last four characters must be ".pdf". There can be no spaces in
the PDF file name, but the underscore character "___" is acceptable. Spaces are permitted in the file path. The
file name--including ".pdf" -- can be up to 256 characters long.
File sizes are limited to 25MB. For files larger than that size, divide them into smaller files.
A multidocument PDF is a single file that contains more than one document description. For example, the
typical patent filing contains one document with the specification, claims, and abstract sections separately de-
scribed when filing. For multidocument PDF files, it is necessary that each document section begin on a new
page, and when submitted to the USPTO, page ranges must be entered for each section.
The following are possible error messages that can be received when the PDF files are submitted to the
USPTO. It is *2A-9 wise to pre-check the documents to be certain none of these errors is present.
• Page size is not 8 1/2 x 11 inches or A4
• Nonlicensed fonts

• An application data sheet or IDS is attached that is not an USPTO fillable form
• An application data sheet or IDS fillable form is missing data from key fields
• Two or more files with the same name
• Secure file (password encrypted)
• Nonembedded fonts
• Any version of PDF that is not supported (below 1.1)
• PDF containing OLE (object linking and embedding) files
• Malicious and virus embedded files
• Not a PDF file type
• File size over 25MB (except USPTO fillable forms)
END OF DOCUMENT


Jeffrey G. Sheldon

*2A-9 § 2A.8 Preparing the Drawings for Electronic Filing
The drawings must be prepared for electronic filing before they are submitted. There are two techniques
available for preparing a drawing: (1) scan the drawing; (2) produce the file directly from a graphics application.
A directly produced file may be of greater quality.
Scanner software can be used to save the image in black-and-white format (not grayscale). The USPTO does
not consider color. The USPTO recommends that drawings be submitted as 300 dpi. Typically, drawings are
scanned directly into PDF files. If desired, the file can then be brought into an image-processing program, such
as Adobe Photoshop, for touchup and revision. Further file size reduction can be *2A-10 made by cropping the
image so that unnecessary white space is removed. It is acceptable to crop to, for example, 5 x 7 inches, since
that size prints easily in the required margins. Centering is not necessary, as that is handled at the USPTO.
A problem arises when the drawing contains shading, pictures, or darker areas. Since grayscale mode is not
supported, these images are converted to black-and-white format, with unpredictable results. It is still best to
pre-convert figures to black and white, in order to retain complete control over the figure. In some programs,
such as Adobe Photoshop, black and white is called bitmap mode. Choices for converting to bitmap may include
diffusion dither, pattern dither, 50% threshold, and halftone screen. Some experimentation is necessary, but, in
general, diffusion dither gives the best result for pictures. One unfortunate characteristic of a diffusion dither
converted file, however, is that it is relatively uncompressible. This results in large files and correspondingly
long transmission times.
END OF DOCUMENT


Jeffrey G. Sheldon

*2A-10 § 2A.9 Preparing Additional Parts
After preparing the specification and drawings, the next step is to prepare the formal papers, i.e. declaration
and any power of attorney. These can be treated like other paper documents such as drawings--scanned with a
scanner to create a PDF file.
END OF DOCUMENT


Jeffrey G. Sheldon

*2A-10 § 2A.10 Filing the Application
This section discusses how to file the application. The first step is done offline.
1. Fill out the application data sheet (ADS). This is done offline using the free Adobe Reader 7 pro-
gram. ADI is preferred, but not mandatory. The minimum requirements for the application data sheet are the
title of the invention, the first and last name of at least one inventor, *2A-11 and a customer number or cor-
respondence address.
The following steps are performed online:

2. Attach and describe the documents to be filed. This must include the application (including at least
one claim) and the drawings, if any. The application can be in multiple files. If a multidocument file is sub-
mitted (a single file that contains more than one document description), each document section must begin
on a new page and page ranges must be entered for each section. The specification needs to be broken out
into appropriate sections when filing, namely:
• Specification
• Claims
• Abstract
3. Calculate the filing fee, which is done automatically on a fee calculator form that appears while elec-
tronically filing.
4. "Submit" the application.
5. The EFS automatically generates on screen an application number, confirmation number, and EFS
ID. The same screen also states the total fees due for the filing.
6. Pay the fees, or elect to pay later. Paying later incurs additional fees. Payment can be made from a
USPTO deposit account, by electronic funds transfer, or credit card (American Express, Visa, Discover, or
MasterCard). A disadvantage of credit cards is that it is not possible to charge underpayments to the card, or
obtain credit for overpayments. An underpayment may jeopardize a filing date for a 35 U.S.C. § 371 nation-
al stage filing.
7. The EFS automatically generates on screen an acknowledgement receipt. See Exhibit 2A-1 for a sim-
ulated acknowledgement receipt. This acknowledgement *2A-12 receipt evidences receipt on the noted date
by the USPTO of the indicated documents as characterized by the applicant, including page counts, where
applicable. It serves as evidence of receipt similar to a postcard, as described in MPEP 503. It is not an offi-
cial filing receipt.
8. Submit any assignment of ownership documents, information disclosure statements, and power of at-
torney documents. See §§ 2A.11 and 2A.12.
Optionally a transmittal letter (PTO/SB/21) can be included with the filing. This is available at the USPTO
website. The document lists what is being electronically filed. This is generally not used, since the acknowledg-
ment receipt fits the documents filed.

With a digital certificate, it is possible to interrupt the process by choosing "Save for Later Submission." An
EFS electronic ID is generated that needs to be printed or saved for later use when completing the filing. The
submission is saved for up to four days. After four days, saved files are deleted by the USPTO.
When navigating the EFS, bear in mind:

• The "continue" buttons must be used to go forward and to save your information.
• The section tabs (not the browser buttons) are used to go back and review or make changes.
• The tab key can be used to move from field to field.
• The tabs allow users to move forward and backward to screens already visited. If the tabs are used to
go back and make changes, you must click Continue to save those changes -- if you simply use the tab to go
forward, the changes will be lost.
• Asterisks (*) represent required fields.
• There is a difference between cancel and logout (cancel does not logout registered eFilers).
*2A-13 • Page-level validation messages are displayed at the top of the page and also below the corres-
ponding field.
• PDF files receiving an error notice must be removed.
• PDF files receiving a warning notice allow you to continue.
END OF DOCUMENT


Jeffrey G. Sheldon

*2A-13 § 2A.11 Using USPTO Fillable Forms
The USPTO website has Form-Fillable PDFs that are fillable offline. These include the information disclos-
ure statement forms and the ADS. Using these forms helps to minimize rework and to improve data accuracy by
the USPTO, because the USPTO extracts data directly out of Form-Fillable PDFs.
END OF DOCUMENT


Jeffrey G. Sheldon

*2A-13 § 2A.12 Preparing Electronic Information Disclosure Statements
The EFS allows you to submit an electronic Information Disclosure Statement (e-IDS). An advantage of an
e-IDS is significant savings in copying and mailing costs.
The procedure for preparing the e-IDS is straightforward. Use USPTO Form SB08a. The order of the
entered references cannot be altered. If listing in numerical order is desired, then careful planning is required.
U.S. patent documents need not be submitted. Nonpatent literature and foreign patents need to be scanned
and provided as PDF files.
END OF DOCUMENT


Jeffrey G. Sheldon

*2A-13 § 2A.13 Electronic Filing of Assignments
It is possible to scan assignment documents (and other documents affecting title) and attach these to a sub-
mission with an electronically prepared cover sheet. The form is *2A-14 available on line at ht-
tp://epas.uspto.gov, and the data from the form is automatically saved by the USPTO. Preferably this is done
after a serial number is recorded. Assignment documents can be scanned in PDF or TIFF files.
END OF DOCUMENT


Jeffrey G. Sheldon

*2A-14 § 2A.14 EFS Signatures
If correspondence is electronically filed through the EFS, an electronic signature in EFS character-coded
form is used. The following are the requirements for signing such submissions:
1. The electronic signature must consist of only letters of the English alphabet and/or Arabic numerals
with appropriate spaces and commas.
2. The person signing the correspondence must personally insert his or her electronic signature with a
single forward slash mark before, and a single forward slash mark after, the signature.
3. Persons submitting a document signed by another with an EFS signature are obligated to have a reas-
onable basis to believe that the person whose signature is present on the document actually inserted that sig-
nature, and should retain evidence of authenticity of the signature.
4. The person inserting an EFS coded signature in a document submitted certifies that the inserted sig-
nature appearing on the document is his or her own signature.
5. There is no requirement that the signer's actual, full, or legal name be used, although the Patent Of-
fice suggests that such a name be used. Titles may be included as part of EFS character-coded signatures.
An example of an appropriate EFS signature of an inventor is as follows:

/John T. Smith/ John T. Smith
*2A-15 An example of an EFS signature of a person acting in a representative capacity is as follows:

/John T. Smith/
John T. Smith, Reg. No. 11111
END OF DOCUMENT


Jeffrey G. Sheldon

*2A-15 § 2A.15 Useful Contact Information and Help Sources
There are several online sources of information for those interested in electronic filing, including:
• EBC Customer Service Center: 1-866-217-9197 (6 AM to 12 midnight, Monday through Friday)
• EFS website: www.USPTO.gov/ebc/efs/index.html
• EFS website tutorials: http://www.uspto.gov/ebc/portal/tutorials.htm
END OF DOCUMENT


Jeffrey G. Sheldon

*2A-15 § 2A.16 Conclusion
The USPTO EFS system has many significant advantages for applicants. These include savings in copying
and mailing costs. It is recommended that it be used whenever possible.
END OF DOCUMENT

PLIREF-PATAPP 2A Exh. 2A-1 FOR EDUCATIONAL USE ONLY Page 1
How to Write Pat. Application 2A Exh. 2A-1
(Cite as: PLIREF-PATAPP 2A Exh. 2A-1)

Jeffrey G. Sheldon

*2AEX-1 Exhibit 2A-1: Electronic Acknowledgement Receipt
------------------------------------------------------------------------
EFS ID: 1182103
------------------------------------------------------------------------
Application Number: 11469364
------------------------------------------------------------------------
Confirmation Number: 6360
------------------------------------------------------------------------
Title of Invention: Greatest Invention Since Sliced Bread
------------------------------------------------------------------------
First Named Inventor: Joe Inventor
------------------------------------------------------------------------
Customer Number: 23676
------------------------------------------------------------------------
Filer: Jeffrey G. Sheldon
------------------------------------------------------------------------
Filer Authorized By: Jeffrey G. Sheldon
------------------------------------------------------------------------
Attorney Docket Number: 16900
------------------------------------------------------------------------
Receipt Date: 31-AUG-2006
------------------------------------------------------------------------
Filing Date:
------------------------------------------------------------------------
Time Stamp: 19:28:43
------------------------------------------------------------------------
Application Type: Utility
------------------------------------------------------------------------
International Application Number:
------------------------------------------------------------------------
Payment information:

-------------------------------------------------------------------------------
Submitted with Payment yes
-------------------------------------------------------------------------------
Payment was successfully received in RAM $ 650
-------------------------------------------------------------------------------
RAM confirmation Number 752
-------------------------------------------------------------------------------
Deposit Account 123456
-------------------------------------------------------------------------------
The Director of the USPTO is hereby authorized to charge indicated fees and
credit any overpayment as follows:
Charge any Additional Fees required under 37 C.F.R. Section 1.16 and 1.17
-------------------------------------------------------------------------------
File Listing:
-------------------------------------------------------------------------------
Document Document File Name File Multi Pages
Number Description Size(Bytes) Part
-------------------------------------------------------------------------------
1 Application US_ADS_Form.pdf 3326139 no 4

Data Sheet
-------------------------------------------------------------------------------
Warnings:
-------------------------------------------------------------------------------
Information:
-------------------------------------------------------------------------------
2 16900AppFinal.p- 73064 yes 16

df
-------------------------------------------------------------------------------
Multipart Description
----------------------------------------------------------------
Doc Desc Start End
----------------------------------------------------------------
Specification 1 10
----------------------------------------------------------------
Claims 11 15
----------------------------------------------------------------
Abstract 16 16

-------------------------------------------------------------------------------
Warnings:
-------------------------------------------------------------------------------
Information:
-------------------------------------------------------------------------------
3 Drawings drawingsfinal.p- 183281 no 8

df
-------------------------------------------------------------------------------
Warnings:
-------------------------------------------------------------------------------
Information:
-------------------------------------------------------------------------------
4 Oath or DeclPOA.pdf 153730 no 3

Declaration
filed
-------------------------------------------------------------------------------
Warnings:
-------------------------------------------------------------------------------
Information:
-------------------------------------------------------------------------------
5 Fee Worksheet fee-into.pdf 8465 no 2

(PTO-875)
-------------------------------------------------------------------------------
Warnings:
-------------------------------------------------------------------------------
Information:
-------------------------------------------------------------------------------
Total Files Size (in bytes): 3744679
-------------------------------------------------------------------------------
*2AEX-3 This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated docu-
ments, characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt simil-
ar to a Post Card, as described in MPEP 503.
New Applications Under 35 U.S.C. 111
If a new application is being filed and the application includes the necessary components for a filing date (see 37
CFR 1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
Acknowledgement Receipt will establish the filling date of the application.

National Stage of an International Application under 35 U.S.C. 371
If a timely submission to enter the national stage of an international application is compliant with the conditions of
35 U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
PLIREF-PATAPP 2A Exh. 2A-1

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 3: Working with the Inventor
There can be no invention without the inventor. Thus, the most important person in preparing a quality pat-
ent application is usually the inventor. An ability to work well with the inventor is one of the more important
skills that a patent practitioner needs to develop. The inventor can provide the information needed for an en-
abling disclosure, help write broad claims that adequately cover the invention, and help identify and distinguish
the prior art.
This chapter provides suggestions for working most effectively with the inventor, or if the inventor is un-
available, with the person knowledgeable about the invention.
END OF DOCUMENT


Jeffrey G. Sheldon

*3-2 § 3.2 Investigating Whether an Application Should Be Filed
Not every invention should be the subject matter of a patent application. Among the reasons for not filing
are:
1. Existence of a statutory bar
2. Inability to obtain an assignment from the inventor(s)
3. Better kept as a trade secret
4. Impossibility of enforcing a patent due to circumstances such as lack of financial resources or ability
to detect infringement
5. Invention provides no competitive advantage
6. Potential market is too small to justify the cost.
7. The only commercial use of the invention is for developing certain products for FDA approval, and
thus any potential infringer is exempted (see 35 U.S.C. § 271(e)(i))
One of the first things a skilled practitioner does when confronted with a new invention is analyze it for
what type of protection (utility patent, design patent, copyright, trade dress) is available and whether it makes
sense to file a patent *3-3 application. In order to do this, it is helpful to use a checklist, and a sample is
provided as Exhibit 3-1. Exhibit 3-2 is an annotated version of the same checklist. It is often helpful for clients
to use these checklists internally before even contacting a patent practitioner so there can be a focused discus-
sion of the advisability of seeking patent protection. The author has developed a checklist for clients so they can
perform their own analysis of whether or not to file a patent application. The checklist is provided as Exhibit
3-4. It is also useful for the practitioner.
PLIREF-PATAPP s 3.2
END OF DOCUMENT


Jeffrey G. Sheldon

*3-3 § 3.3 Identifying the Inventor or Inventors
The following discussion regarding meeting with the inventor presupposes that the practitioner knows who
the inventors are. As a matter of fact, one of the most difficult tasks in many situations is identifying the invent-
ors of the claimed invention. A patent application can be filed only in the name or names of the true inventor or
inventors.
The basis for this rule is found in 35 U.S.C. §§ 102(f) and 116, which state: "A person shall be entitled to a
patent unless he did not himself invent the subject matter sought to be patented" (35 U.S.C. § 102(f)) and "When
an invention is made by two or more persons jointly, they shall apply for a patent jointly and each sign the ap-
plication and make the required oath, except as otherwise provided in this title" (35 U.S.C. § 116).
Inventorship and ownership are separate issues. [FN1] The determination of who ultimately possesses own-
ership rights *3-4 has no bearing whatsoever on the question of who actually made the invention. [FN1.1]
The starting point for determining inventorship is to define the invention. Until it has been determined what
is to be claimed and how that distinguishes over the prior art, it may not be possible to actually identify the in-
ventors. For example, consider a disclosure that teaches using a prior art process for making a chemical com-
pound, with the invention that the temperature is increased and the pressure is decreased, thereby resulting in
much higher yields. If inventor A suggested higher temperature, and inventor B suggested lower pressure, then,
as discussed below, inventors A and B are properly co-inventors. However, if a novelty search or the Patent Of-
fice identifies a reference that teaches a prior art process that includes the higher temperature feature and differs
from the claimed process only because of the lower pressure, then inventor B may be a sole inventor, and it may
be necessary to remove inventor A from the application. Thus, it is often difficult to discuss who the proper in-
ventor is without identifying the claimed invention.
The next step is to determine who contributed the inventive concept of the invention claimed. [FN1.2] When
inventor A contributes the idea and person B develops and reduces the idea to practice through extensive efforts,
if all person B did amounts to no more than what a person with ordinary skill would have done with the idea, the
inventor A is the sole inventor. [FN1.3] The result is the same even if A and B believe they are co-inventors.
*3-5 Therefore, identification of joint co-inventors is extremely difficult. As stated by one court:
The exact parameters of what constitutes joint inventorship are quite difficult to define. It is one of the
muddiest concepts in the muddy metaphysics of the patent law. On the one hand, it is reasonably clear that a
person who has merely followed instructions of another in performing experiments is not a co-inventor of
the object to which those experiments are directed. To claim inventorship is to claim at least some role in
the final conception of that which is sought to be patented. Perhaps one need not be able to point to a specif-
ic component as one's sole idea, but one must be able to say that without his contribution to the final con-
ception, it would have been less--less efficient, less simple, less economical, less something of benefit.

[FN1.4]
There is some solace to the practitioner when determining inventorship. The burden of proof on the adverse
party challenging inventorship in litigation is clear and convincing evidence. [FN1.5]
To determine who contributed the inventive concept, it is necessary to understand exactly what is needed to
have an invention. Sometimes conception of an invention is sufficient for the invention to be made, and other
times it is necessary for there to be in addition actual or constructive reduction to practice. [FN1.6] Conception
is the formation in the mind of a definite and permanent idea of the complete operative invention and *3-6 meth-
od of obtaining it. [FN1.7] However, conception alone is insufficient unless there is "conceptual specificity."
"Conceptual specificity" is when somebody can describe minute details about the formulation or testing of a
concept. The concept must include every feature of the invention and be sufficiently complete to allow one of
ordinary skill to practice the invention without extensive research or experimentation. Thus conception alone is
sufficient if the inventor(s) have an idea that was definite and permanent enough that one skilled in the art could
make the invention. [FN1.8]
To have conception, it is not necessary to be certain that the invention will work. It is only necessary that
the inventor has a reasonable expectation that the invention will work. However, a mere "hope" regarding the
results of a biological process that had never before been achieved does not qualify as a conception. [FN1.9]
To be a joint inventor, an individual must make a contribution to the conception of the claimed invention
that is not insignificant in quality when that contribution is measured against the dimension of the full invention.
This requires more than merely exercising ordinary skill in the art. [FN1.10]
Due to the perceived unpredictability of certain arts such as the chemical arts, it can be the case that com-
plete conception cannot be demonstrated until the invention is reduced to practice. Thus in unpredictable arts,
until there is reduction to practice, no invention is made. In such a situation, the *3-7 person actually reducing
the conceived invention to practice can also be an inventor. [FN1.11]
It is also necessary for an invention to have utility. Thus merely discovering or synthesizing a new chemical
compound does not yield an invention unless a utility is identified for the chemical composition. Accordingly, a
person who identifies a utility for an invention, particularly in the chemical fields, may also be an inventor.
Also in the chemical arts, when the claimed invention is a particular compound per se, conception of an in-
termediate compound for preparing the claimed compound, or conception of a method of making the claimed
compound, is insufficient to rise to the level of inventorship of the claimed compound. The persons conceiving
the intermediate or the method of making the claimed composition may properly be inventors for claims directed
to the intermediate and the method of making. [FN1.12]
The following guidelines are provided to help the practitioner identify the inventors:
1. It is usually safest to include too many inventors rather than too few inventors. There is a pre-
sumption that the listing of inventors in an issued patent is correct. [FN2] It is less likely that a judge or
jury would invalidate a patent because, by mistake, an extra person was in error given credit for an in-
vention, than if a true inventor were left out. Moreover, the left-out true inventor is more likely to give
unfavorable testimony during litigation. However, there is a disadvantage in being overinclusive in
identifying inventors. By *3-8 including a person as an inventor who most likely should not have been
identified as an inventor, that person's testimony is lost as a collaborating witness as to conception and
reduction to practice.

2. It is not necessary for joint inventors to work together physically or at the same time. [FN3]
3. It is not necessary for each joint inventor to make the same type or amount of contribution to the
invention. [FN4] Merely suggesting limitations present in a claim can qualify the suggester as a co-
inventor. [FN5] However, contribution of an obvious element does not qualify the contributor for in-
ventorship status. [FN6]
4. It is not necessary for each joint inventor to make a contribution to the subject matter of every
claim of the patent, [FN7] although a contribution has to be made to at least one claim of the patent.
5. Individuals cannot be joint inventors if they are completely ignorant of what each has done until
years after their individual independent efforts. They cannot be totally independent of each other and be
joint inventors. Joint inventorship under 35 U.S.C. § 116 requires at least some collaboration or connec-
tion. [FN8]
*3-9 6. A person such as a lab technician, who simply follows designs and experiments of another,
is not a joint inventor. [FN9] Similarly, one who merely explains how or why the invention works
[FN10] or merely participates in consultations prior to or after conception, [FN11] or one who made no
contribution until after the invention was reduced to practice, [FN12] or whose activities were "'simply
the exercise of the normal skill expected of an ordinary' machinist," [FN12.1] is not an inventor.
7. A supervisor or employer of an inventor is not entitled to an inventor's status merely because that
person is a supervisor or employer. [FN13] Although the employer may end up owning the patent be-
cause of an employment agreement, ownership and inventorship are not the same concepts.
8. When a technical paper is to be published about an invention, investigate which of the authors
are properly inventors. In technical papers there is a tendency to be overinclusive as to who made a con-
tribution to the paper, sometimes even including laboratory technicians. In litigation, the fact that
someone was an author of a paper regarding an invention will at least raise an issue in the mind of the
defendant as to whether inventorship is correct. Thus, a listing of authors different from a listing of in-
ventors puts the practitioner on notice that inventorship needs to be investigated.
*3-10 9. The practitioner should not assume that the client's identification of inventorship is cor-
rect. The practi-tioner has an obligation to the client to make certain that the true and correct inventors
are accurately identified to the Patent Office. For example, investigate whether persons identified in
drawings submitted as being involved in the preparation of the drawings, including draftsmen, contrib-
uted to the claimed invention. If a prototype has been made, sometimes the machinist or mold maker
has made a contribution that is eventually claimed, and accordingly these people should be considered
as possible inventors. Also, anyone relied upon by the client to provide technical input to the practition-
er in order to prepare the patent application is a candidate for possible inclusion as an inventor.
10. It is difficult to have a patent invalidated because of allegations of improper inventorship. Such
a defense is highly technical, and courts disfavor a defense based on incorrect inventorship. [FN14]
Even if inventorship is incorrectly identified, the inventorship can be corrected and the patent will not
be invalidated if the error regarding inventorship arose without any deceptive intent. [FN15]
11. If the initial determination of inventorship is incorrect or inventorship changes during prosecu-
tion of the application, inventorship can be corrected pursuant to the provisions of 35 U.S.C. § 116.
Other options for correcting inventorship, such as abandoning the application and refiling with the cor-
rect inventorship, are discussed in M.P.E.P. § 201.03. Inventorship can change during prosecution as a
result of adding new claims to the application, the subject matter of which *3-11 was contributed to by
an inventor not originally named, or by cancelling all claims to which an originally named inventor
contributed. However, if the inventorship is incorrectly identified with fraudulent intent so that there is
inequitable conduct, even an innocent inventor cannot resurrect the patent. "One bad apple spoils the
entire barrel." [FN15.1]

12. A contributor to one of multiple structures within the scope of a "means-plus-function" clause
is a joint inventor, unless the structure is simply a reduction to practice of another inventor's broader
concept. [FN16] Thus, when determining inventorship, it is important to ascertain who contributed each
structure within the scope of a means-plus-function clause and whether that structure is beyond a mere
reduction to practice of the broader concept. If that structure is the subject matter of a specific depend-
ent claim, then the contributor of that structure should be included as a joint inventor.
13. It is advisable to prepare a file memo reporting any investigation re inventorship, the conclu-
sions reached, and the rationale for the conclusion. This will be helpful in avoiding a claim of deceptive
intent if it is necessary to change inventorship or if there is a challenge to the enforceability of an issued
patent due to inequitable conduct relating to inventorship.
14. In close situations where there can be an incentive for including or not including a person as an
inventor, consider submitting the facts relating to the issue to the Patent Office in an Information Dis-
closure Statement (see chapter 8). An example of an incentive not to include a person as an inventor is
where the person *3-12 has no obligation to assign the invention to the client, and it is impossible to ob-
tain the assignment or would require a payment to do so. Failure to disclose material facts relating to in-
ventorship, even where inventorship is correct, can result in a holding of inequitable conduct. [FN17]
15. For design patents, the same standards of inventorship are applied as for utility patents.
Changes in an original design do not qualify one as an inventor if the changes result in a design that is
"substantially similar" to the original design. Merely assisting the original inventor after conception and
providing differences that are just superficial rather than being an inventive concept do not qualify a
person as an inventor. [FN18]
[FN1]. Sewall v. Walters, 21 F.3d 411, 417, 30 U.S.P.Q.2d 1365, 1361 (Fed. Cir. 1994) ("Inventorship is a ques-
tion of who actually invented the subject matter claimed in a patent. Ownership, however, is a question of who
owns legal title to the subject matter claimed in a patent, patents having the attributes of personal property.").
[FN1.1]. Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248, 26 U.S.P.Q.2d 1527, 1582 (Fed. Cir. 1993).
[FN1.2]. Sewall v. Walters, 21 F.3d 411, 415, 30 U.S.P.Q.2d 1356, 1358 (Fed. Cir. 1994) ("Determining 'invent-
orship' is nothing more than determining who conceived the subject matter at issue, whether that subject matter
is recited in a claim in an application or in a count in an interference.").
[FN1.3]. Id.
[FN1.4]. Mueller Brass Co. v. Reading Indus., Inc., 352 F. Supp. 1357, 1372, 176 U.S.P.Q. 361, 372 (E.D. Pa.
1972); see Edward A. Remus et al., Clearing Up the "Muddy Metaphysics" of Patent Inventorship (Or How to
Conduct an Inventorship Determination), in 14 AIPLA SELECTED LEGAL PAPERS No. 1, at 3 (1996).
[FN1.5]. Eli Lilly & Co. v. Aradigm Corp., 376 F.3d. 1352 (Fed. Cir. 2004); Caterpillar, Inc. v. Sturman Indus.,
Inc., 387 F.3d 1358 (Fed. Cir. 2004).
[FN1.6]. For a discussion of the general principles of determining inventorship in joint inventorship determina-
tions, see Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 32 U.S.P.Q.2d 1915 (Fed. Cir. 1994).
[FN1.7]. Sewall v. Walters, 21 F.3d 411 (Fed. Cir. 1994).
[FN1.8]. Bd. of Educ. v. Am. Bioscience, Inc., 333 F.3d 1330, 67 U.S.P.Q.2d 1252 (Fed. Cir. 2003).
[FN1.9]. Hitzeman v. Rutter, 243 F.3d 1345, 58 U.S.P.Q.2d 1161 (Fed. Cir. 2001).

[FN1.10]. Final Oil & Chem. Co. v. Ewen, 123 F.3d 1466 (Fed. Cir. 1997); Caterpillar, Inc. v. Sturman Indus.,
Inc., 387 F.3d 1358 (Fed. Cir. 2004).
[FN1.11]. See Noud et al., Patent Law Issues Affected by the Predictability of Technology in the Field of Inven-
tion, 88 J. PAT. & TRADEMARK OFF. SOC'Y No. 7, July 2006, at 603-43.
[FN1.12]. Bd. of Educ. v. Am. Bioscience, Inc., 333 F.3d 1330, 67 U.S.P.Q.2d 1252 (Fed. Cir. 2003).
[FN2]. Cent. Soya Co. v. Geo. A. Hormel & Co., 205 U.S.P.Q. 421, 424 (W.D. Okla. 1979).
[FN3]. 35 U.S.C. § 116; Shields v. Halliburton Co., 493 F. Supp. 1376, 207 U.S.P.Q. 304 (W.D. La. 1980).
[FN4]. 35 U.S.C. § 116.
[FN5]. Pannu v. Iolab Corp., 155 F.3d 1344, 47 U.S.P.Q.2d 1657 (Fed. Cir. 1998).
[FN6]. Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 45 U.S.P.Q.2d 1545 (Fed. Cir. 1998); Se-
wall v. Walters, 21 F.3d 411, 30 U.S.P.Q.2d 1356 (Fed. Cir. 1994); Erie Tech. Prods. v. Die Craft Metal Prods.,
461 F.2d 5, 173 U.S.P.Q. 644 (7th Cir. 1972).
[FN7]. 35 U.S.C. § 116; Ethicon, Inc., supra note 6; Stern v. Columbia Univ., 434 F.3d 1375 (Fed. Cir. 2006).
[FN8]. Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 23 U.S.P.Q.2d 1921 (Fed. Cir.
1992); Ultra-Precision Mfg. Ltd. v. Ford Motor Co., 411 F.3d 1369 (Fed. Cir. 2005); Stern v. Columbia Univ.,
434 F.3d 1375 (Fed. Cir. 2006).
[FN9]. See Mattor v. Coolegem, 530 F.2d 1391, 189 U.S.P.Q. 201, 204 (C.C.P.A. 1976).
[FN10]. GAF Corp. v. AMCHEM Prods., 514 F. Supp. 943, 211 U.S.P.Q. 172 (E.D. Pa. 1981).
[FN11]. O'Reilly v. Morse, 15 How. 62, 14 L. Ed. 601 (1853).
[FN12]. Credle v. Bond, 25 F.3d 1566, 30 U.S.P.Q.2d 1911 (Fed. Cir. 1994).
[FN12.1]. Acromed Corp. v. Sofamor Danek Group, Inc., 253 F.3d 1371 (Fed. Cir. 2001).
[FN13]. Koehring Co. v. E.D. Etnyre & Co., 254 F. Supp. 334, 338, 149 U.S.P.Q. 263, 266 (N.D. Ill. 1966).
[FN14]. Gen. Motors Corp. v. Toyota Motors Co., 667 F.2d 504, 507, 212 U.S.P.Q. 659 (6th Cir. 1981).
[FN15]. 35 U.S.C. § 256.
[FN15.1]. Frank's Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd., 292 F.3d 1363 (Fed. Cir. 2002).
[FN16]. Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 45 U.S.P.Q.2d 1545 (Fed. Cir. 1998).
[FN17]. Perspective Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315 (Fed. Cir. 2000).
[FN18]. Hoop v. Hoop, 279 F.3d 1004, 61 U.S.P.Q.2d 1442 (Fed. Cir. 2002).
PLIREF-PATAPP s 3.3
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Jeffrey G. Sheldon

*3-12 § 3.4 Preparing for the Initial Interview
To the extent possible, the inventor should submit all available relevant materials before the initial inter-
view. These can include an invention disclosure, drawings of the product, and information regarding the prior
art. A review of these materials prior to the initial interview will allow the meeting with the inventor to go much
more quickly and expeditiously.
PLIREF-PATAPP s 3.4
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Jeffrey G. Sheldon

*3-12 § 3.5 Initial Interview
The initial interview, as described below, may actually be divided into two segments. Although the follow-
ing description will cover most of the information that needs to be obtained from the inventor, not all of this in-
formation needs *3-13 to be obtained at the initial meeting. Frequently the goal of the initial meeting is to obtain
sufficient information to order a novelty search, rather than to obtain all the information required to write a good
quality patent application.
PLIREF-PATAPP s 3.5
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Jeffrey G. Sheldon

§ 3.5 Initial Interview
*3-13 § 3.5.1 Let the Inventor Tell the Story
The inventor has a story to tell about his or her invention. Let the inventor tell the story. Inventions are
treated by inventors much as babies are treated by parents; there is no such thing as an ugly baby, and there is no
such thing as a meritless invention. It is important for a good relationship between the inventor and the practi-
tioner that the inventor be given an opportunity to explain the invention and its advantages.
This is often the best time to learn about the advantages of the invention. The inventor has thought about the
invention, is familiar with the problems solved, and can identify the features of the invention that most likely are
commercially important.
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Jeffrey G. Sheldon

*3-13 § 3.5.2 Obtain an Enabling Disclosure
As described in chapter 7, the patent application must contain an "enabling disclosure." Thus, the practition-
er must obtain an enabling disclosure. Accordingly, the practitioner needs to understand the invention, how it
works, the theory behind it (if the theory is known), and all other information necessary to teach one of ordinary
skill in the art to practice the invention. Refer to the checklist contained in chapter 13, Exhibit 13-1, which iden-
tifies information typically needed to have an enabling disclosure in the chemical, chemical process, and bio-
technical arts. A similar listing of information needed for mechanical inventions is provided in chapter 8.
If any drawings of the invention are available, they should be obtained. If any papers have been written, or
any documentation about the invention is available, the papers or *3-14 documentation should be obtained, as
well as relevant pages from laboratory notebooks. Photographs of any prototypes of the inventions should be
taken. An instant camera, such as a Polaroid® camera with a close-up lens, is a valuable tool for patent attorneys
and agents.
With regard to mechanical and electrical inventions, it is strongly recommended that the inventor be asked
to name all the elements of the invention. This can be done by labeling the drawings. It is always a challenge to
come up with satisfactory names for all the elements of mechanical inventions. Usually the inventor already has
a name for each part, since the inventor is responsible for putting the invention together. Therefore, it is wise to
obtain those names and use them as a starting point for describing the invention.
The inventor should identify substitutes for all the elements of the invention. Consider the following ex-
amples:
1. The drawing shows a polyurethane rubber seal. Ask the inventor what other materials can be used,
such as other types of rubber, or metal seals.
2. The inventor has used nuts and bolts as fasteners. Ask the inventor what else can be used, such as
glue.
3. Consider substitutes for materials, such as replacing metal with structural plastics, or one type of
plastic with another.
4. Determine if the number of parts can be reduced by combining various parts.
5. Determine the effect of changing size for various parts.
6. Obtain information about the ranges for various variables. This should include the broadest possible
ranges, preferred ranges, and most preferred ranges. Sound technical or economical reasons for the choice
of ranges should be identified.
One thing to be careful about in obtaining alternatives is that the practitioner not become a co-inventor. The
practitioner should not make suggestions. Rather, the practitioner *3-15 should ask questions and, if necessary,
lead the inventor. To the extent that new versions of the invention are developed that are going to be claimed,

the inventor should be the one who suggests them, even if the practitioner thought of the versions first. The
practitioner becoming a co-inventor may create conflict problems, which should be avoided.
With regard to all papers received from the inventor, they should be dated and initialed by the practitioner,
and if a docket number has been assigned to the matter, the docket number should be placed on the papers. Dat-
ing and initialling can become important if the date the invention was made or diligence becomes important in
litigation. Docket numbers are important in case papers get misplaced; using them makes it easy to match the
paper with the appropriate file.
The practitioner should have the inventor distinguish the prior art and explain why the invention is better
than the prior art.
It is strongly recommended that an attempt be made to draft the broadest claim at the initial interview. Many
practitioners have a laptop computer and a portable printer. This is an excellent use for them. Working with the
inventor is the best way to draft the claims. This is a good time to do it, since the invention, the prior art, and ad-
vantages of the invention are well understood by the inventor and practitioner at this time. Drafting the claims is
the most critical part of preparing a patent application, and usually the most difficult. Getting this done early
will make it much easier to write a good patent application.
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Jeffrey G. Sheldon

*3-15 § 3.5.3 Avoiding Inequitable Conduct
As discussed in chapter 8, it is important to cite to the examiner in the Patent Office all information material
to the examination of the application. Chapter 8 provides a comprehensive list of such information. Much of the
information is known to the inventor, and the practitioner should diligently *3-16 elicit the information from the
inventor. Among the inquiries that should me made of the inventor are the following:
• Who made the invention? (It is surprising how often somebody tries to patent a product seen in a for-
eign country.)
• What commercial activities have taken place, including quotes, displays at trade shows, offers for
sale?
• What technical disclosures have been made, such as in journal articles, by displays at trade shows, or
at scientific conferences?
• What patents and papers does the inventor have? (Ask for a CV, which often contains a comprehens-
ive list.)
• Have there been any foreign filings on this technology?
• What products are on the marketplace that the invention improves on?
• What publications provide good background information?
• Who has rights in the invention, including licensees, probable assignees, options, etc.? (The answer to
this question may avoid a wrong assertion of small entity status.)
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Jeffrey G. Sheldon

*3-16 § 3.6 Sending the Draft Application to the Inventor
Based on the information obtained from the inventor, a draft application is prepared. The procedure for do-
ing that will be described in the following chapters. The draft application, once prepared, is then provided to the
inventor, along with a draft information disclosure statement and any drawings.
It is recommended that a draft information disclosure statement be accompanied by a form that has the in-
ventor sign off regarding the requirements of 37 C.F.R. § 1.56. Exhibit 3-1 is a sample of such a form that has
proven to be *3-17 useful. This gives the inventor another chance to identify relevant prior art.
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Jeffrey G. Sheldon

*3-17 § 3.7 Getting the Application Executed
Once the inventor's comments are received on the application, the final version of the application is pre-
pared, and the inventor executes the formal papers so the application can be filed.
Occasionally the inventor wants to make changes to the final application. This can be done one of two ways.
First, the inventor can make the changes in ink and initial and date the changes, and then date and execute the
formal papers.
The other option is to have the inventor execute the formal papers and make the changes by way of prelim-
inary amendment. This is useful only if the changes to be made by the preliminary amendment do not create is-
sues of new matter.
Under no circumstances should the inventor execute the application and then have the patent attorney make
changes to the application by retyping pages to correct errors. This is unacceptable. Once the application is ex-
ecuted, no changes can be made to the application except by amendment.
PLIREF-PATAPP s 3.7
END OF DOCUMENT


Jeffrey G. Sheldon
Copyright © 2001 by the Practising Law Institut
Current through Release 9, December 2001

*3EX-1 Exhibit 3-1

END OF DOCUMENT


Jeffrey G. Sheldon
Current through Release 17, November 2005

*3EX-9 Exhibit 3-4: Checklist for Patent Protection Evaluation
[ ] Is the invention (product or process) different in any way from information which has been available
to the public for more than a year such as by being:
[ ] Described in a printed publication?
[ ] Been offered for sale?
[ ] Used to produce a product?
"The public" means anyone who does not have a confidential relationship with you.
The information can be in any form, for example a product, a written publication (including,
for example, a U.S. or foreign Patent, a scientific or trade journal, or a trade brochure), a public-
ation on the Internet, or a display at a trade show. A sale, or offer for sale, of the new product, or
of a product of the new process is also "information".
If the answer is "no", a U.S. patent cannot be obtained. It is also likely that no foreign Patent
can be obtained, with possible exceptions if the available information is ONLY in the form of (1)
use without written publication and/or (2) sale or offer for sale which does not disclose the inven-
tion.
[ ] Does the invention provide us with a competitive advantage?
[ ] We can do it cheaper?
[ ] We can do it better?
If the answer is no, it is not worth filing on since a competitor can practice an equally good option.
[ ] How large is the potential market?
If the market is not at least $100,00 per year, then no one might compete.
[ ] How long will the market exist?
*3EX-10 If the market will not exist two years from now, patent protection may not make sense.
[ ] How likely is it that there will be competitors in the market?
If there will be no competitor, there may be no reason to file.

[ ] Can we contractually prevent all customers from doing it themselves or purchasing from a competit-
or
If the answer is yes, there may be no reason to file.

[ ] Is this an invention that can be licensed to third parties?
If the answer is yes, then most likely we need to file since royalty rates are generally higher for a pat-
ented invention.
[ ] Can we protect this as a trade secret?

[ ] Can the invention be reverse engineered?

[ ] Will we have to disclose it to customers?
[ ] Will we have to disclose it to the government?
[ ] Does anyone outside of the company already know the invention such as consultants or Uni-
versity researchers?
[ ] Can we protect the invention from ex-employees?
If the answer is yes, trade secret protection may be the way to go. However, an option is to file, and
reserve the trade secret vs. patent decision for later.
[ ] Will filing a patent application and satisfying the "best mode" requirement require disclosure of
valuable trade secrets?
A "yes' answer may mean no filing.

[ ] Can we protect this with a copyright or trademark or trade dress rights?
*3EX-11 If the answer is yes, there may be a cheaper and easier way to obtain protection than
through a patent.
Is this invention unobvious compared to what came before it?

[ ] How different is the invention from the prior art?
[ ] How long have people been trying to solve the problem?

[ ] How much effort and time did it take to solve the problem?
To actually receive a patent, it is necessary that the invention be unobvious. However, I recommend
that a patent application be filed for any commercial product that is "different", even if "unobviousness"
is problematic. The "patent pending" notation generally slows down competitors enough to more than
justify the cost of a patent application.
[ ] Has anyone who does not have to assign their rights to us contributed to the invention?
If third parties will have the right to practice the patented invention, it may not be worth filing.
[ ] Can we obtain an enforceable patent?
[ ] Can we detect if someone is infringing?
If the patent is not enforceable, there may be no reason to file.

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Jeffrey G. Sheldon

Chapter 4: The Novelty Search
This chapter is directed to a procedure that more often than not is conducted before a patent application is
written, namely, the novelty search. The following sections discuss what is a novelty search, why do one, why in
some circumstances one is not ordered, what the procedure is for ordering a novelty search, what the limitations
are on a novelty search, and how to report the results of a novelty search. This chapter does not discuss how to
actually do a novelty search. In general, the search is left to expert searchers. Most (but not all) practitioners do
not conduct their own searches.
PLIREF-PATAPP s 4.1
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Jeffrey G. Sheldon

*4-2 § 4.2 What Is a Novelty Search?
Despite the use of the word "novelty," only infrequently does a novelty search actually ascertain whether an
invention is novel. As discussed in § 4.6 below, because of the limitations of a novelty search, rarely is a refer-
ence developed that anticipates or renders an invention non-novel. It is usually impossible with a conventional
novelty search to determine whether an invention is truly novel, i.e., it is impossible to prove a negative, namely
that there is no anticipatory reference anywhere in the world. Thus, it would be more accurate to call a "novelty"
search an "obviousness" search. However, the term "novelty search" is generally accepted, and that is the term
used here.
Most novelty searches are directed to determining whether an invention is obvious or nonobvious. One of
the key purposes of the search is to determine the chances of obtaining a patent in the Patent Office. Most patent
applications that do *4-3 not issue fail to issue because of the Patent Office's perception that the invention is ob-
vious under 35 U.S.C. § 103. Because a novelty search is conducted in an attempt to determine the likelihood
that the United States Patent Office will issue a patent on a particular invention, novelty searches generally are
used to determine if an invention is obvious.
A novelty search usually has the following elements:

1. The first element is a search request made from the practitioner to the person doing the search. The
requesting letter usually identifies how much financial effort is to be expended on the search, defines the in-
vention, and identifies the general categories of references that are to be investigated.
2. The second element is the actual search conducted by the searcher.
3. The third element is a review of the references developed by the searcher.
4. The fourth element is a report to the client regarding the search results.
A novelty search is not a patentability search. The term "patentability search" is used to refer to searches
that are substantially more thorough and more complete than the typical novelty search. Much more effort is ex-
pended on patentability searches. They are usually reserved for situations in which much more is riding on the
results of the search than the decision of whether or not to file a patent application, which is a principal objective
of a novelty search. Patentability searches are frequently used in the following contexts:
1. By the defendant in a patent infringement suit in order to find references to invalidate the patent in
suit.
*4-4 2. By the patentee before instituting a patent infringement suit to determine the likelihood of the
patent's surviving the litigation.
3. By a prospective licensee or purchaser of a patent to determine how much the patent is worth.
PLIREF-PATAPP s 4.2
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Jeffrey G. Sheldon

*4-4 § 4.3 Why Order a Novelty Search?
There are many reasons for ordering a novelty search, beyond the obvious reason of determining whether or
not to file a patent application. These are discussed in subsections 4.3.1 to 4.3.5.
PLIREF-PATAPP s 4.3
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Jeffrey G. Sheldon

§ 4.3 Why Order a Novelty Search?
*4-4 § 4.3.1 Economics
A novelty search can be conducted to assist in making the decision of whether or not to invest the money in
filing a patent application. The cost of a novelty search is usually much less than the cost of a patent application.
The typical ratio of the cost of a novelty search to the cost of the corresponding patent application is anywhere
from 1:4 to 1:20, with a typical midrange number being about 1:7. If the ratio is 1:7, then if, as a result of a nov-
elty search, a decision is made not to file an application one out of seven times, the novelty search has justified
itself on this basis alone.
Novelty searches are only infrequently conducted for design patents. Design patent applications cost sub-
stantially less than utility applications, and there is little economic justification for conducting a novelty search
before filing a design patent application.
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Jeffrey G. Sheldon

*4-4 § 4.3.2 A Better Application Can Be Prepared
The novelty search results allow a practitioner to prepare a better patent application. Novelty searches help
identify the features of the invention that are most likely to be patentable. With this knowledge, the practitioner
can write an application *4-5 that stresses those features and be certain to have an adequate disclosure of those
features in the specification and display them in the drawings. Without a novelty search, the emphasis of the ap-
plication can improperly be placed on nonpatentable or trivial features.
Moreover, by having typical patents in the art, it is much easier for the patent practitioner to write the ap-
plication. Sometimes chunks of the specification of a prior art patent can be lifted bodily or incorporated by ref-
erence, as discussed in chapter 7, into the new patent application. This allows the application to be prepared with
less effort, and thus at a lower cost to the client.
Another advantage of a novelty search is that prior art patents reveal to the practitioner terminology typic-
ally used in the art and how much detail needs to be put in the patent application. The prior art patents provide
an indication of the level of skill in the art and allow the practitioner to determine how much disclosure is
needed to enable those of ordinary skill in the art to practice an invention. Thus, having prior art patents allows
the practitioner to ascertain early how much information needs to be included in the application to comply with
the requirements of 35 U.S.C. § 112.
Another advantage of having prior art patents available is that ideas for claim structure, scope of claims, and
different types of claims other practitioners have used in the art are made available. Why re-invent the wheel
when excellent guidance in preparing claims for an invention can be obtained from prior art patents?
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Jeffrey G. Sheldon

*4-5 § 4.3.3 Commercial Reasons for Conducting a Novelty Search
There are sound commercial reasons why a client would want a novelty search. Often the commercial poten-
tial of a product depends upon whether or not a patent can be obtained. For many products, it makes no sense for
the client to enter the market if the exclusivity provided by a United *4-6 States patent cannot be achieved. The
ability to prevent knockoffs can be a key factor in the commercial viability of a particular product. In these situ-
ations, the client needs an early indication of the chances of obtaining a United States patent. If a substantial
capital investment is involved, the client may even go beyond a novelty search and request a patentability study.
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Jeffrey G. Sheldon

*4-6 § 4.3.4 Avoid Festo
A reason to conduct a thorough novelty search is to avoid the holding of Festo. [FN1] According to Festo,
when there is prosecution history estoppel relating to a claim element such as by narrowing the claim element to
avoid prior art, the doctrine of equivalents is not available for that claim element. By performing a thorough pri-
or art search, it may be possible to draft the claims so that no amendment is needed during prosecution. This is
very difficult to accomplish when the prior art is unknown when the claims are drafted.
[FN1]. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 56 U.S.P.Q.2d 1865 (Fed. Cir.
2000).
END OF DOCUMENT


Jeffrey G. Sheldon

*4-6 § 4.3.5 Foreign Filing Decisions
Many searches are useful in determining whether or not to file international applications. The cost of inter-
national applications is very high, and in some countries, such as Japan, it can approach the cost of the initial
United States filing. Foreign filings usually need to be effected within one year of the United States filing date
to obtain the benefit of the Paris Convention and other treaties. Often, no search report is received from the
United States Patent Office sufficiently early to be helpful in determining whether or not to file internationally.
Accordingly, in view of the cost of foreign filing, it makes eminent sense to conduct a novelty search before
making the *4-7 decision of whether or not to file international applications. It makes very little sense to spend
$10,000 to $20,000 on international applications only to learn that an anticipatory reference was sitting in the
files of the United States Patent Office.
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Jeffrey G. Sheldon

*4-7 § 4.4 Why Not to Order a Novelty Search
Although there are many good reasons for ordering a novelty search, as discussed in the preceding section,
there are many situations in which a novelty search is not ordered. Before recommending to a client whether or
not to conduct a novelty search, those situations need to be considered. The situations include the following:
1. The client can afford only either a novelty search or a patent application. The patent application
should be filed without first conducting a novelty search. It makes little sense to order a novelty search for a
client that cannot afford both a novelty search and a patent application. If the novelty search comes out fa-
vorable, and the client cannot afford the patent application because money was spent on the novelty search,
it was very foolish to order the novelty search.
2. Frequently there is insufficient time to order a novelty search before filing a patent application. There
are many times that a patent application has to be prepared very quickly. For example, if the client is about
to release the product and needs "patent pending" on the product to deter potential competitors from copying
the product, the application must be filed quickly. Other situations include when a statutory bar under 35
U.S.C. § 102(b) is running. Another situation in which an application needs to be filed promptly is when the
client is ready to publish a paper about the invention, or about to release the product, and there is interest in
international filing. Many foreign countries, *4-8 including Japan and Germany, are "absolute novelty"
countries. If a paper is published about the invention before the United States patent application is filed,
then, in absolute novelty countries, it would be impossible to obtain a patent.
When there is limited time available for conducting a novelty search, many practitioners have the nov-
elty search conducted and the patent application prepared "in parallel," i.e., at the same time. If the results of
the novelty search are available before the application is completed, then it is possible to finetune the ap-
plication based on the results of the novelty search. Even if a United States application has been filed, the
results of the novelty search may indicate that the preparation of a continuation-in-part application is
needed, or that changes are needed in the United States application before it is filed internationally. Thus,
even when there is insufficient time to complete a novelty search before filing the United States application,
it may be valuable to complete a novelty search afterwards in view of the advantages discussed in the pre-
ceding section.
3. Another reason for not conducting a novelty search is that there is nothing to be learned by it. In
some technologies, there is nothing available in the published literature, because the technology is so new,
or the technology has a tradition of secrecy and nonpublication.
Another time when nothing can be learned by the novelty search is when the inventor is very knowledgeable
in the field and is doing research at the cutting edge of the technology. These situations often arise in dealing
with university researchers who are the leaders in their field. However, even with researchers, the author has of-
ten been able to develop a "surprise" reference as a result of a novelty search.
PLIREF-PATAPP s 4.4

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Jeffrey G. Sheldon

*4-9 § 4.5 Procedure for Ordering a Novelty Search
Ordering a novelty search is a straightforward procedure. Once the searcher is chosen, all that needs to be
done is provide the searcher with sufficient information to investigate the patentability of the features that are
most likely patentable, along with guidance as to the budget.
PLIREF-PATAPP s 4.5
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Jeffrey G. Sheldon

§ 4.5 Procedure for Ordering a Novelty Search
*4-9 § 4.5.1 Selecting the Searcher
Selection of an appropriate searcher is often problematic. The best guidance can be obtained from other
practitioners who have had success with particular searchers. Choosing an incompetent searcher, or a searcher
not competent in a particular technology, is foolhardy. Not only can the cost of the search be wasted, but a false
sense of security can be the result.
When picking a searcher, be certain that the searcher is competent in the particular technology. Searchers
specialize in particular areas, such as electrical, biotechnology, chemical, metallurgical, electrical, computer,
and mechanical.
More than one searcher may be used. A first searcher can be used for the files of the Patent Office, a second
searcher for computerized literature searches, and a third searcher for foreign patents.
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Jeffrey G. Sheldon

*4-9 § 4.5.2 Information to Include in the Search Request
In the search request, provide information sufficient that an adequate search can be conducted. Generally,
the more information the better. If drawings or photographs of the invention are available, they should be
provided. The search request should identify those features of the invention that the inventor believes may be
patentable. It is also helpful to identify the advantages of the invention.
*4-10 The budget should be specified to the searchers. Most searchers have standard charges, and if a stand-
ard search at the standard charge is to be done, all that needs to be stated in the search request letter is to conduct
the "usual" novelty search.
If any patents or prior art are available, they can be provided to the searcher. Having a relevant patent can
be of great assistance to the searcher, since it can help identify the classes that should be searched.
If the search is to extend beyond the files of the Patent Office, the searcher needs to be told that.
The searcher should be encouraged to consult with the examiner in a particular art. Competent searchers of-
ten do this on their own. The examiners are the best source of information for identifying the classes in which a
search should be conducted.
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Jeffrey G. Sheldon

*4-10 § 4.5.3 The Scope of the Search
Invariably the search includes a review of United States patents, usually manual. The typical novelty search
is conducted only in the files of the United States Patent Office. The searcher identifies the classes in which the
invention is classified using the Manual of Classification provided by the Patent Office. Then, all the patents in
a particular class are pulled and reviewed. This is easy to do in Washington, since all the patents in a given class
are kept together in a "shoe." [FN2] The searcher, pulling the shoe, reviews the patents in the search room of the
United States Patent Office, and identifies those patents that are particularly relevant in order to provide them to
the practitioner requesting the search.
In some technologies, a manual search of the files in the United States Patent Office is inadequate, or the
search would be better conducted by a computer using an appropriate *4-11 database. A search limited to the
files of the United States Patent Office is often inadequate in such fast-moving technologies as biotechnology,
computer software, and the like. In those circumstances, often the searcher is authorized and requested to com-
plement the search in the Patent Office with a literature search. Further, in some technologies, the leaders are not
American researchers and foreign patents can be a better search source.
Searches of patents are not limited to manual searches. More patents are becoming available on computer
databases, including the full text of the patent. United States patents are also available on compact discs. Thus,
in some instances, rather than conducting a manual search, a computer search can be used. Computer searches
are particularly useful when drawings are not important in conducting the search. Computerized databases gen-
erally do not include drawings. Computerized searches can be valuable where certain key words can be
searched, such as in the chemical arts or chemical process arts. Most literature searches are also conducted
through use of a computer.
Thus, depending on the invention, manual, computer, or combined searches can be done, and patent literat-
ure, other literature, or both can be searched. It all depends upon the particular technology and the budget. Be-
fore ordering a search, these considerations should be discussed with the inventor. The inventor can provide a
budget, and answer the question as to what literature would have valuable information. Also, the inventor can
provide key words for conducting a computer search, if such a search is appropriate.
[FN2]. So called because in the early days of the Patent Office, shoe boxes were used for holding patents.
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Jeffrey G. Sheldon

*4-11 § 4.5.4 The Cost of the Search
The amount of effort afforded to the novelty search is primarily a factor of the cost of preparing a patent ap-
plication. It makes little sense to spend $5,000 on a search when an application can be filed for $3,000. In 1992
dollars, the total cost for a novelty search is usually less than $1,000, including the *4-12 searcher fees, which
typically are between $150 and $500, depending upon the complexity of the search, the technology involved, the
quality of the searcher, and the searcher's overhead.
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Jeffrey G. Sheldon

*4-12 § 4.5.5 Example of a Search Request Letter
A typical request letter is provided as Exhibit 4-1, and the following annotations apply to the exhibit.
(a) The word "usual" is interpreted by most searchers to mean that the search will be conducted at the
standard charge, and only the files of the United States Patent Office will be examined. If something beyond
United States patents needs to be examined, the searcher needs to be told.
(b) A drawing is enclosed, which is of great assistance. Truly a picture is worth a thousand words to the
searcher.
(c) A United States patent is enclosed to assist the searcher in identifying the classes to search.
(d) The novel features are identified, so the searcher knows what to look for.
(e) It is beneficial to include in the letter an expected deadline. Otherwise, the search request can re-
peatedly continue to be moved to the bottom of the searcher's stack.
(f) Explicitly allow the searcher to come back and ask for further authorization. Often, because of the
complexity of the technology or the fact that the search needs to cover many classes, the searcher cannot do
an effective search within the "usual" guidelines. Allow the searcher to have the option of asking for further
authorization.
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Jeffrey G. Sheldon

*4-13 § 4.6 Limitations of a Novelty Search
Novelty searches have significant limitations. Usually they are limited to the files of the United States Pat-
ent Office from which patents can often be missing. In addition, searchers are known to miss key references or
search the wrong classes. Searchers are not "perfect," and a "perfect" search is not financially warranted. If a
search approaching perfect is needed, then what should be ordered is a validity study, not a novelty search.
It is extremely important that the client be advised of the limitations of a novelty search. Unreasonable ex-
pectations should not be encouraged.
Exhibit 4-2 is a sample of a standard notice that can be provided to clients, setting forth the limitations of
novelty searches. It is recommended that this form be provided to the client at the time the novelty search is
ordered. The client should know exactly what is being paid for, including the limitations on the search.
The notice regarding limitations does not have to be a separate form. It can be included in the letter con-
firming that a search has been requested, or in the search report itself.
PLIREF-PATAPP s 4.6
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Jeffrey G. Sheldon

*4-13 § 4.7 Reporting the Results of the Novelty Search
In reporting the results of the novelty search to the client, the following subjects need to be covered:
1. The subject matter of the search.
2. The references developed by the search.
3. A brief discussion of the more pertinent references.
4. For an unsophisticated client, a brief discussion of novelty and the "nonobviousness" requirements.
*4-14 5. The conclusion, if the conclusion is positive (as discussed below, it is not advisable to present
negative conclusions in writing).
6. A reminder of the limitations of the novelty search.
The author believes that if a conclusion is reached that the invention is not patentable, that should not be ex-
pressed in writing. There are many reasons for this. The principal reason is that the practitioner may be wrong,
and the letter about nonpatentability can be discovered during litigation of a patent that issues on the invention.
Such a letter could have a devastating effect on a jury or judge. Anything that is written relating to a patent ap-
plication should be written with the assumption that it will be discovered by an adversary during litigation. It is
foolhardy to rely on the attorney-client privilege or the work-product privilege which, in many circumstances,
may be held to be inapplicable or waived in patent litigation.
Another reason for not providing a negative opinion is that there may be features of the invention that are
not appreciated by the practitioner, which features are patentable. The practitioner may have misinterpreted a
reference, or read too much into it. Often, the inventor, not the practitioner, is in the best position to determine
what makes the invention unique compared to the prior art developed by the search.
Thus, for these reasons, if it appears that the results are negative, the results should be reported without ex-
pressing an opinion, and the inventor should be requested to review the references and call and discuss the res-
ults.
When discussing the references, consider that the references will need to be discussed in an information dis-
closure statement (see chapter 8). Any discrepancy between the analysis of a reference in an opinion letter and
the analysis provided to the Patent Office in an information disclosure statement can give rise to probing cross-
examination during litigation. Therefore, in describing the references, care must *4-15 be exercised, and it
should be assumed that whatever is stated about the references in the report to the client will also be stated to the
Patent Office.
Exhibits 4-3 and 4-4 are sample letters reporting search results that were favorable and unfavorable, respect-
ively.

PLIREF-PATAPP s 4.7
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Jeffrey G. Sheldon

*4EX-1 Exhibit 4-1: Letter Ordering Novelty Search
Mr. T. Searcher
Re: Novelty Search re "Portable Widget" Our File No. 1234.56
Dear Mr. Searcher:

(a) [FNa1] Please conduct the usual novelty search for the above-identified invention.
(b) The subject matter is shown in the attached drawings. The widget shown in the attached drawings is
useful for scanning inventory in the supermarket. Unlike prior art scanners, which are represented by the en-
closed United States Patent
(c) No. 5,000,000, the portable scanner is extremely lightweight and portable. This was done by repla-
cing conventional part A with part B, which is believed to be novel. In addition, conventional parts F, G,
and H were combined into a
(d) single, new part. Further, instead of using material X, our client has gone to material Y for the hous-
ing. This material has never been used for forming such a complex shape before.
(e) We need the search results within three weeks. If for some reason, you cannot meet this deadline,
please let me know.
(f) If further authorization is needed, please contact me in advance.
[FNa1]. Annotations--see § 4.5.5 in text.

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Jeffrey G. Sheldon

*4EX-3 Exhibit 4-2: Notice to Clients Regarding Patent Novelty Searches
Novelty searches for patents have limitations that should be considered in using the results of a search. The
limitations include the following:
1. A search only covers issued United States patents, unless indicated otherwise in the search report. Thus,
foreign patents, United States patent applications that have not issued as a patent, periodical articles, and com-
mercial activities are not developed during a novelty search.
2. United States patents are divided into classes. A searcher searches in the classes that the searcher believes
most closely relate to the art of the invention. However, searchers are not perfect and sometimes may not search
a class which may contain relevant art.
3. Patents may be missing from the search files. Recent studies have found that from 10 to 20 percent of the
patents in some classes are missing. Thus, a relevant patent may be missed because it was missing from the file.
4. The search conducted was a novelty search and not an infringement search. An infringement search is
conducted to determine whether making, using, or selling an invention would infringe a United States patent. An
infringement search is more comprehensive and more expensive than a novelty search.
5. The enclosed opinion is an informed opinion regarding the patentability of your invention. The patentab-
ility of an invention is a difficult legal question, and reasonable minds can differ. It is possible that an examiner,
a judge, or a competitor may reach a different conclusion.

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Jeffrey G. Sheldon

*4EX-5 Exhibit 4-3: Letter Reporting Novelty Search Results Favorable
Mr. T. Client
Re: Patent Novelty Search re XYZ Our File No. 0000.00
Dear Mr. Client:
In accordance with your request, we had a novelty search conducted directed to your XYZ for airplanes. It is our un-
derstanding that the XYZ prevents hijacking.
Our search developed the following patents, a single copy of each of which is enclosed:
United States Patent No. Inventor

------------------------ --------
1,910,473 ABC
3,758,999 DEF
3,780,835 GHI
3,804,725 JKL
3,911,790 MNO
3,915,111 PQR
None of the patents shows your invention. For example, the GHI patent discloses a .... The DEF patent shows an ....
Neither of these systems is tied in with ..., and none provides for ....
Another interesting patent developed is the MNO patent. This patent discloses a ....
In order to obtain a patent, it is necessary that your invention be nonobvious. For an invention to be nonobvious, it is
necessary to meet the standards of 35 U.S.C. § 103, which states in pertinent part:
*4EX-6 A patent may not be obtained ... if the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made
to a person having ordinary skill in the art to which said subject matter pertains.
Based on the results of the search, we see no reason why you cannot get a patent. However, I wish to remind you of
the limitations of the search. I previously gave you a notice regarding this. Also, a patent is only worth something if there
are potential customers for the invention. Before investing in a patent application, which would cost about $
_______________ for your invention, you may wish to investigate the market potential of the invention.

Sincerely yours,

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Jeffrey G. Sheldon

*4EX-7 Exhibit 4-4: Letter Reporting Novelty Search Results Negative
Mr. T. Inventor
Re: Patent Novelty Search re: Harvester Our File No. 0000.00
Dear Mr. Inventor:
In accordance with your request, we conducted a novelty search for your harvester. The search was directed to a mo-
torized harvester ... provided with a head or nozzle which ....
The search developed the following United States patents, a single copy of each of which is enclosed:
United States Patent No. Inventor

------------------------ ----------
2,807,759 Inventor A
3,499,039 Inventor B
3,502,816 Inventor C
3,653,436 Inventor D
3,789,403 Inventor E
4,568,428 Inventor F
4,733,798 Inventor G
4,808,789 Inventor H
Inventor G Patent No. 4,733,798 discloses .... Element A of this patent, however, is not attached to ....
Patents 2,807,759; 3,499,039; and 3,653,436 also show ....
Patents 3,502,816; 3,789,403; 4,568,422; and 4,808,789 are cited of general interest to show additional .... None has
...; however, patent 3,502,816 discloses ....
*4EX-8 In order to obtain a patent, it is necessary that your invention be "nonobvious." The standard for this is set
forth in 35 U.S.C. § 103, which states in pertinent part:
A patent may not be obtained ... if the differences between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been obvious at the time the invention was made to a per-
son having ordinary skill in the art to which said subject matter pertains.
I am concerned that in attempting to obtain a patent, the Patent Office may take the position that it would be obvious

to modify the Inventor G Patent No. 4,733,798 devices or the Inventor B Patent No. 3,499,039 device by providing an
element A movable relative to element B as shown in United States Patent No. 3,502,816. The Patent Office may take the
position that to make such a combination would be "obvious" and you are not entitled to a patent.
Please review these references, consider my concerns, and call me to discuss the possibility of obtaining a patent and
proceeding with a patent application.
Sincerely yours,

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Jeffrey G. Sheldon

Chapter 5: Drawings
Drawings can be an important substantive aspect of a patent application. For most patent applications, draw-
ings prove the adage that "a picture is worth a thousand words." Many complex concepts or inventions are diffi-
cult, if not impossible, to understand without drawings. The most informative section of many electrical and
mechanical patents can be the drawings depicting circuit diagrams or mechanical structures. Also, drawings
form the sole disclosure in design patents.
In addition to providing valuable information, drawings serve other useful functions in patent applications.
Drawings can also be used to define the scope of original disclosure and of the claims. When the drawings of the
original application contain features that are not described in the text, the drawings can be relied upon to form
the basis of subsequently expanded claims without loss of the original filing date. [FN1] Drawings can also be
used in subsequent litigation to *5-4 interpret the meaning of ambiguous claims. [FN2] Consequently, it is im-
portant to prepare the drawings carefully, and not to consider them a mere afterthought.
[FN1]. In re Wolfensperger, 302 F.2d 950, 133 U.S.P.Q. 537 (C.C.P.A. 1962); In re Berkman, 209 U.S.P.Q. 45
(C.C.P.A. 1981).
[FN2]. Maclaren v. B-I-W Group, Inc., 535 F.2d 1367, 190 U.S.P.Q. 513 (2d Cir.), cert. denied , 429 U.S. 1001
(1976).
PLIREF-PATAPP s 5.1
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Jeffrey G. Sheldon

Chapter 5: Drawings
§ 5.1 Introduction
*5-4 § 5.1.1 When Drawings Are Required
Drawings must be furnished with the patent application where necessary to understand the invention sought
to be patented. [FN3] Drawings are necessary for most inventions that claim a machine, device, or article of
manufacture. The Patent Office inspects applications that are submitted without drawings to determine whether
the invention can be understood without drawings. If there is doubt as to whether a drawing is required, the pat-
ent application is forwarded to the examining group to resolve the question. If the examiner finds that a drawing
is required, then a drawing must be filed before the application is deemed complete, and a filing date will not be
awarded until proper drawings are received. [FN4] Whether a drawing is required is a question within the discre-
tion of the Patent Office. [FN5]
Some classes of invention often do not require drawings, such as process or method applications. Similarly,
composition-of-matter applications are generally accepted without drawings. Examples of inventions that gener-
ally do not require drawings are:
1. Coating or impregnating a conventional article, such as a sheet of paper or cloth;
2. Making an article from a particular material or composition, unless significant details of structure or
arrangement of the article are involved in the claims;
*5-5 3. A laminate of specific materials, unless the invention involves a detailed structure or arrange-
ment of the laminated sheets, other than the mere order of the sheets; and
4. The sole distinguishing feature of the invention is the presence of a particular material, such as a new
hydraulic system, whose sole distinguishing feature is the use of a particular hydraulic fluid within the sys-
tem. [FN6]
All these examples have one thing in common: the written description can adequately and completely dis-
close the invention without drawings.
An application claiming a process is generally accepted without drawings. [FN7] However, in some cases a
drawing is required. For example, if an unconventional apparatus is required to practice a claimed process, the
application must adequately disclose the apparatus, and an adequate disclosure may require drawings of the ap-
paratus. Moreover, whenever the specification of a process application describes and refers to a drawing, the
drawing must, of course, be provided. [FN8]
There is a distinction between applications that require drawings to understand the invention, and applica-
tions in which the nature of the invention merely admits of an illustration by a drawing, without a drawing's be-
ing necessary to understand the subject matter claimed. [FN9] In the former case, no filing date is awarded
without a drawing. In the latter case, a filing date is awarded, but the examiner may request additional illustra-
tions of the invention. When such a request *5-6 is made, the applicant has two months from the date of notice
to submit the additional illustrations. [FN10] When submitting additional illustrations, the specification needs to

be amended to include a description of those drawings.
It is advisable to include drawings of the invention with the initial application if there is any doubt as to
whether they are required. The main reason for this is that if the drawings are "essential," no filing date is awar-
ded until the drawings are filed. Moreover, even if the drawings are not essential, drawings submitted after the
filing date of the application are subject to two limitations. First, they cannot be used to overcome any insuffi-
ciency of the specification due to lack of an enabling disclosure. [FN11] Second, they cannot be used to supple-
ment the original disclosure for the purpose of interpreting the scope of any claim. [FN12]
Including drawings in the patent application also provides other advantages to the applicant. For one thing, a
detailed drawing makes it easier for the applicant to describe the invention. More importantly, the Patent Office
allows subsequent amendment of claims to include subject matter that has been fully disclosed in the original
application. Drawings can be used to satisfy that full disclosure requirement. [FN13] Consequently, the draw-
ings can be later used to change the scope of the claims, should such a need arise, or to include a limitation in a
claim without "new matter" problems. [FN14]
Future drawings of a design patent can even be enabling for a subsequent utility application. Drawings can
also benefit the patentee after the patent is issued. Drawings allow the public to better understand the scope of
the claimed invention, *5-7 since it is easier for the layperson to understand drawings than the complex structure
and language of the claims and specifications. Further, if the patent is infringed, it is easier to persuade a judge
or jury that the claims cover the infringing article if the article resembles the drawings of the issued patent. In
addition, the court can rely on the drawings to interpret or understand the scope of ambiguous claims. [FN15]
One final note of importance that is related to the substance of drawings. The drawings cannot be relied
upon to define the invention; that is the purpose of the claims. If the claim language is clear and unambiguous, it
cannot be limited or distorted by reference to the drawings. [FN16] No invention can be saved by features that
appear only in the figures and are not mentioned in the text. [FN17] Although drawings can be used to interpret
or understand ambiguous claims, [FN18] it is dangerous to rely on the drawings to define the scope of the inven-
tion.
[FN3]. 35 U.S.C. § 113.
[FN4]. M.P.E.P. § 608.02.
[FN5]. Jack Winter, Inc. v. Koratron Co., 375 F. Supp. 1, 181 U.S.P.Q. 353 (N.D. Cal. 1974).
[FN6]. M.P.E.P. § 601.01(f).
[FN7]. In re Meyers, 738 Off. Gaz. Pat. Office 947, 120 U.S.P.Q. 225 (Comm'r Pat. 1958).
[FN8]. Id.
[FN9]. 37 C.F.R. § 1.81.
[FN10]. 37 C.F.R. § 1.81(c).
[FN11]. 35 U.S.C. § 113.
[FN12]. Id.

[FN13]. In re Wolfensperger, 302 F.2d 950, 133 U.S.P.Q. 537 (C.C.P.A. 1962).
[FN14]. H.K. Porter Co. v. Gates Rubber Co., 187 U.S.P.Q. 692 (D. Colo. 1975).
[FN15]. Maclaren v. B-I-W Group, Inc., 535 F.2d 1367, 190 U.S.P.Q. 513 (2d Cir. 1976).
[FN16]. Id.
[FN17]. Foxboro Co. v. Taylor Instruments Co., 157 F.2d 226, 232 (2d Cir. 1946), cert. denied, 329 U.S. 800
(1947).
[FN18]. Maclaren v. B-I-W Group, Inc., 535 F.2d 1367, 190 U.S.P.Q. 513 (2d Cir. 1976).
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
§ 5.1 Introduction
*5-7 § 5.1.2 When to Order Drawings
Drawings should be ordered very early in the process of preparing the application. Patent drawings are gen-
erally prepared by professional patent illustrators familiar with the strict formal requirements of the Patent Of-
fice. Most good and experienced illustrators are busy and can require a long lead time to prepare the drawings.
Consequently, when an early filing date is essential, the drawings should be ordered very early, even before be-
ginning the draft of the specification.
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Jeffrey G. Sheldon

Chapter 5: Drawings
§ 5.1 Introduction
*5-8 § 5.1.3 Informal Versus Formal Drawings
Drawings are classified as informal and formal. Informal drawings do not meet the formal standards im-
posed by the Patent Office for an issued patent but are acceptable for examination purposes. Drawings may be
informal because they are not on the proper-size sheets, the quality of the lines is poor, the required margins are
not provided, and for other reasons.
It is common practice for patent applicants to submit informal drawings with the application, because they
are less expensive to prepare than formal drawings. Thus, if the application is never allowed, the cost of prepar-
ing formal drawings is avoided. Moreover, informal drawings take less time to prepare than formal drawings.
Thus, they are preferred when preparation of formal drawings can hold up the filing of an application.
Informal drawings must at the minimum be readable, reproducible, and permanent. Rough sketches are ac-
cepted as informal drawings so long as they are readable and reproducible. [FN19] Pencil drawings are not ac-
ceptable because they do not constitute a permanent record. [FN20] However, photocopies of pencil drawings
are routinely accepted by the Patent Office.
[FN19]. M.P.E.P. § 608.02(b).
[FN20]. Ex parte Velander, 1927 Dec. Comm'r Pat. 91.
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Jeffrey G. Sheldon

Chapter 5: Drawings
§ 5.2 Contents of the Drawings
*5-8 § 5.2.1 What Should Be Included in the Drawings
In determining the contents of the drawings, it is important to remember that the essential purposes of the
drawings is to facilitate comprehension of the invention and assist in *5-9 providing an enabling disclosure. It is
much easier to visualize certain inventions using drawings. Often, it is next to impossible to understand unusual
concepts or complex features of an invention without a drawing. Consequently, it is important to reveal all the
important features of the invention in the drawings to satisfy the goal of providing an enabling disclosure.
Under the rules of the Patent Office, the drawings must contain every feature of the invention that is
claimed. [FN21] For example, if a dependent claim specifies that certain "valve means" is "a diaphragm valve,"
the drawings should show a diaphragm valve. However, the drawings do not have to graphically depict every
conceivable element of the invention so long as they detail the essential features. [FN22] A guiding principle is
to include all relevant and novel features of the invention.
Starting about 2002, the Patent Office began to direct more attention to the requirement that the drawings
must contain all features of the invention that are claimed. The PTO has been taking the approach that every
noun that appears in the claims should be reflected in the drawings. Accordingly, to avoid the expense of amend-
ing the application by adding features to the drawings and the corresponding description of the specification, it
is better to initially cross-check the claims against the drawings by engaging in a "circle the noun" activity. This
involves confirming that each noun in the claim also appears in the drawings. Also, this will avoid potential
problems with new matter either in the Patent Office or during litigation, which can arise if it is necessary to add
features to the drawings during prosecution.
In addition to the claimed elements of the invention, generally include any structural details of sufficient im-
portance to be described in the disclosure. [FN23] These include portions of *5-10 the invention that are not
claimed but are described and shown to understand how the invention integrates into some other larger machine
or process. For example, a patent application for a new waterbed frame would generally include the mattress in
the drawing. When the invention is an improvement of an old machine, separate drawings usually are used to
show (1) the improvement by itself and (2) the integration of the improved structure and the old machine.
[FN24] This allows the public to distinguish between the claimed and existing inventions, and yet understand
the improvement in the context of the original invention.
[FN21]. 37 C.F.R. § 1.83(a).
[FN22]. Hamington Mfg. Co. v. White, 177 U.S.P.Q. 289 (5th Cir. 1973).
[FN23]. M.P.E.P. § 608.02(d).
[FN24]. 37 C.F.R. § 1.83(b).

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Jeffrey G. Sheldon

Chapter 5: Drawings
*5-10 § 5.2.2 What Can Be Excluded from the Drawings
The drawings do not need to show all the conventional features of the invention. [FN25] Conventional fea-
tures such as valves, motors, and electrical components may be illustrated in the form of graphic drawing sym-
bols or labeled representations. However, even conventional features must be shown in the drawings when their
detailed illustration is essential for a proper understanding of the invention.
Drawings illustrating the prior art are generally not used and can be canceled by the examiner, unless they
are needed to understand the applicant's invention. [FN26] If such a need arises, those illustrations may be re-
tained so long as they are designated by an appropriate legend, such as "Prior Art."
[FN25]. M.P.E.P. § 608.02(d).
[FN26]. Ex parte Elliot, 1904 Dec. Comm'r Pat. 103, 109 Off. Gaz. Pat. Office 1337.
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Jeffrey G. Sheldon

Chapter 5: Drawings
*5-11 § 5.2.3 Example of Drawings Showing Claimed Features
An example of drawings illustrating all the claimed aspects of an invention is shown by Exhibit 5-1. The
broadest apparatus claim of the patent reads:
A tool for cleaning a grill having a plurality of parallel, spaced-apart wires comprising:
(a) a handle; and
(b) a head attached to the handle, the head being generally circular and having at least two substan-
tially identical recesses in its periphery, each recess being sized to receive a grill wire with the head
closely engaging the grill wire for cleaning the grill wire by moving the tool along the wire, the recesses
being spaced apart from each other so that two wires can be simultaneously fit into a respective recess
for simultaneously cleaning two wires, the head and handle being integral and manufactured as one
piece and the tool being planar.
In Exhibit 5-1, Figure 1 shows a front view of the grill cleaner showing all the essential features of the in-
vention that are specified in the claims. Variations presented in narrower claims relating to the number and loca-
tion of the peripheral recesses are also shown in the drawings.
The patent also claims a method for cleaning grills that reads as follows:
A method for cleaning a grill comprising a plurality of parallel wires, the method comprising the steps
of:
(a) selecting a tool comprising . . . [in general, the tool of cleaning]; and
(b) positioning the tool so that one of the wires of the grill is positioned in one of the recesses and
an adjacent wire of the grill is positioned in another recess; and
*5-12 (c) moving the tool along the wires with the head closely engaging the wires for cleaning the
wires.
Accordingly, all three figures illustrate some aspect of the method of using the tool in addition to disclosing
features of the tool. Figure 1 shows the tool being used to clean a single wire, while Figures 2 and 3 show the
tool being used to simultaneously clean two wires of the grill. These figures also show that the tool can be used
equally effectively by both left-handed people (Figure 2) and right-handed people (Figure 3). Even if a method
claim was not included, these drawings would have been included to illustrate the manner of using the invention.
The individual wires of a grill are shown in addition to the tool. Although a grill is not claimed in the patent,
it is necessary to show these wires to be able to explain how the tool works. The grill is an external structure
presented in the drawings in order to show the integration between the invention and the structure.
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Jeffrey G. Sheldon

Chapter 5: Drawings
*5-12 § 5.3 Drawing the Invention
Preparation of the drawings is generally done by a skilled patent draftsman. The patent practitioner gener-
ally identifies what is to be shown in the drawings and how it is to be shown. This process begins with the patent
attorney's creating a mental image of what the inventor wishes to patent. Next, that image is conveyed to the
draftsman. One way to do that is to send the draftsman a model or prototype of the invention, together with a
brief description of the important features of the invention. This allows the draftsman to view the whole inven-
tion, without trying to imagine what the invention looks like from a written description. However, if no proto-
type is available, a photograph or blueprints of the invention can serve just as well. The patent practitioner may
also send the draftsman rough sketches of desired views. *5-13 Where the type of materials used in the inven-
tion needs to be conveyed by the drawings, the information provided to the draftsmen should include the materi-
als used, such as by writing "plastic" or "metal" on the sketches.
The next step is to select the views and schematics of the invention to be included so that the drawings com-
pletely and precisely show the invention. The drawings can contain as many figures as necessary to show the in-
vention. These figures can be in the form of plan, elevation, section, or perspective views of the invention or in
the form of flow charts and schematics. [FN27] Detailed views of portions of the invention, on a larger scale,
can also be used when necessary to disclose critical aspects of the invention. [FN28] Generally, the number of
drawings depends on the complexity of the invention. As the complexity increases, the number of drawings ne-
cessary to completely show the invention also increases.
When there is doubt as to whether to include a particular drawing, it is better to include it. The lack of an es-
sential drawing bars acceptance of the patent application, but an excess number of drawings does not adversely
affect the filing date. If repetitive drawings are provided, at worst the examiner requests these drawings to be ex-
cluded and all reference to the drawings omitted from the application.
It is recommended that a draft of the "Description of the Drawings" section of the application be prepared at
this time and that it be provided to the draftsman. This procedure avoids any confusion on the part of the drafts-
man as to exactly what drawings are needed and avoids the problem of draftsmen unnecessarily preparing ex-
cessive and expensive drawings. This approach also avoids the problem of a draftsman's not including an im-
portant view. It also prevents sloppy work by the patent practitioner, forcing an early analysis of exactly what
will be shown by the drawings.
*5-14 The following discussion summarizes the various types of views, flow charts, and schematics that are
available and their proper functions. When selecting the views that will be shown, it is helpful to mentally dis-
mantle each side of the object to identify the views that are necessary to completely disclose the invention.
While it is sometimes necessary to show several of these views, many simple or axially symmetrical objects are
sufficiently disclosed in only one or two views.

The drawings of a device for lifting and inverting cylindrical containers are used to illustrate some of the
views described in this section. These drawings are shown in Exhibit 5-2. The device is described in the patent
abstract as:
A lifting device is provided for lifting and inverting home-delivered bottled water containers. The
device comprises a semi-cylindrical frame and two handles. The handles are disposed on opposite sides of
the frame and extend outwardly from the frame such that the longitudinal axes of the handles are substan-
tially coincident with a straight line which, when the device is in use, extends through the center of gravity
of the bottle.
[FN27]. 37 C.F.R. § 1.84(i).
[FN28]. Id.
PLIREF-PATAPP s 5.3
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
§ 5.3 Drawing the Invention
*5-14 § 5.3.1 Perspective Views
The first drawing of an invention is often a three-dimensional perspective representation (also called a
pictorial or isometric view) of the entire claimed invention. The perspective view of the invention allows the
reader of the patent to quickly visualize the whole invention. It acts as a visual summary of the invention, and in
this capacity it is often selected by the Patent Office to be placed on the first page of the issued patent. Perspect-
ive views are much easier to understand than projected views and serve as a basis for interpreting the form and
relationship of the subsequent projected views.
The perspective view should be oriented to provide the maximum possible information about the invention.
The article should be positioned so that at least three surfaces of the *5-15 object are visible in the drawing. It is
also important to orient the invention so that the portions of the invention that are relevant are visible.
Figure 1 of Exhibit 5-2 shows a perspective view of the lifting device, illustrated with a cutaway water
bottle secured inside the device. The view is executed so that the semicylindrical cavity of the device, the recess
for securing the container in that cavity, and the location of the handles are all clearly visible. This orientation
allows the belt attachment used to secure the water bottle to the lifting device to be illustrated. Also apparent
from this view is that the centerline of the axis of the handles passes through the center of gravity of the bottle,
an important aspect of the invention.
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-15 § 5.3.2 Front, Side, and Top Views
In addition to the perspective views, most inventions generally require additional views of the top, bottom,
or sides of the invention. Each of these views is basically an outline of the object as viewed from different direc-
tions. The top and bottom views are sometimes referred to as "plan" views, while the side views are referred to
as "elevation" views. These words appear to originate from the historical use of these drawings by architects to
describe the structure of buildings. The view from the top of the building (corresponding to the floor "plan") be-
came the "top plan" view; the side views, associated with the elevation of the building off the ground, became
the "side elevation" views. Although not necessary, these words are still used to describe patent drawings.
The front elevation view is the reference point around which the other views are identified. The selection of
the front view is determined by the shape and structure of the invention. Generally the view that shows the most
important aspect or characteristic of the invention is called the front view. If all the views are equally critical,
then it is logical to *5-16 select a view that gives the greatest amount of information about the invention, such as
a view along its longest dimension.
Once the front view is selected, the top plan view and the bottom plan view are easily determined. Usually a
drawing of either one of these views is sufficient, since the latter is generally a mirror image of the former. In
that case, whichever view shows more relevant information is included. Once the top and front views are de-
termined, the side views or side elevation views are simply the views on the left or right side of the object. In-
ventions that have complicated surface details are best represented by including both the left and right views.
The views that are selected for the drawing do not have to be presented in any preordained manner. In en-
gineering drawings, the front, side, and top views are drawn arranged in a manner that shows the relationship of
each of the views to each other (the top view is always placed at the top of the front view, and the side view at
the side of the front view). However, the Patent Office does not require that formal arrangement, and usually
there is insufficient space in patent drawings for that arrangement.
Figures 2 and 3 of Exhibit 5-2 are side and top views, respectively, of the lifting device of Figure 1. These
views were selected to illustrate important features of the invention. For example, Figure 2 shows that the rigid
support extends slightly more than halfway beyond the horizontal center of the bottle. That is, linear distance L4
is slightly greater than the linear distance L3. That makes the seating of the bottle more stable during lifting and
inverting.
Figures 2 and 3 illustrate that the handles are substantially at the center of gravity in the preferred embodi-
ment for effective rotation of the bottle when it is being inverted. Figure 3 shows that the longitudinal axes of
the handles are colinear with a straight line (26) that passes through approximately the center of gravity of the
water bottle. Figure 2 also shows *5-17 that the center of gravity of the water bottle is disposed within a hori-

zontal plane a distance L2 above the horizontal support from base 13 and extends through the bottle in such a
way that equal weights of liquid are disposed above and below the horizontal plane 27.
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-17 § 5.3.3 Sectional Views
Sectional views are views of an object that reveal its inner construction by passing a cutting plane through
the object. These views help clarify complex objects that consist of several components or parts. Sometimes, the
location of a sectional view is revealed by a cutting plane line, as described in section 5.5.1.2 below.
There are several types of sectional views. In a full section, the sectional view passes through the entire ob-
ject along its largest dimension. This type of sectional view is used when it is necessary to show a large number
of internal details of the invention.
An offset section is similar to a full section except that instead of being a straight unbroken line, the cutting
plane line is broken or offset in order to reveal inner details that are not in line with each other. The offset sec-
tion is most useful when the novelty of the invention is not in a single plane. It is especially useful when it is ne-
cessary to show the relationship between two or more internal components of the invention that are at different
planes within the invention.
A partial or broken-out section is useful to reveal a portion of the inside of an object. This form of sectional
view is used most commonly when it is necessary to show the structural relationship between the external and
internal components of the invention. It can also be used when it is not necessary to show the whole internal sec-
tion of the invention. Figure 1 of Exhibit 5-3 shows a front perspective view of a simulated neon sign that is par-
tially broken away.
*5-18 Three different partial sectional views are used to illustrate the combination pen and handcuff key
device of Exhibit 5-4. The device is a "combination writing instrument and handcuff activating device compris-
ing an elongated housing having a writing element and handcuff locking element axially movable therein." Fig-
ures 1 and 2 show partially broken-away perspective views of the device with the writing element and handcuff
activator, respectively, in operative positions. These figures establish the structural relationship between the in-
ternal elements and the external surface of the device.
A partial longitudinal sectional view of the device is shown as Figure 3 of Exhibit 5-4. The longitudinal sec-
tion of Figure 3 was taken along the largest dimension of the device to show a large number of internal details
within the invention. That view was used to explain the operating mechanism of the device. Both the writing ele-
ment (14) and the handcuff lock element of the device (16) are shown in perspective in all three figures of Ex-
hibit 5-4. That was done to make the sectional views simpler and easier to understand. A sectional view showing
the cross-section of every element within device 10 would have been confusing.
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-18 § 5.3.4 Exploded Views
Exploded views are used to show the structural relationship between components. They are most useful to
show the way in which parts fit together in the assembled whole. An exploded view can make it easier to under-
stand complex mechanical inventions. Exhibit 5-5 illustrates two exploded views of a magnetically suspended
device for displaying photographs. The exploded view shows the hidden magnets as well as the structure of the
cube. When drawing an exploded view, the separated parts of the same figure may be embraced by a bracket (for
an example of the form of such a bracket, see Figure 6 of Exhibit 5-12), dashed connecting lines, or arrows.
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-19 § 5.3.5 Graphs and Charts
Graphs and charts can be used to characterize and illustrate the novelty of an invention. Graphs can be used
to show the superior properties of the claimed invention relative to the properties of prior art devices. These
properties may include measurements of mechanical strength, elastic modulus, density, absorption of some char-
acteristic wavelength, and the like. Exhibit 5-6 shows a plot of unreacted carbon remaining in catalytic carbon-
aceous material that is used to produce hydrogen in a hydrogen generating process versus the number of times
the carbonaceous material was cycled in the process.
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-19 § 5.3.6 Flowcharts and Schematics
Flowcharts or flow sheets can be used [FN29] to show the flow of a process through sequential steps. The
flow sheet of Exhibit 5-7 shows the steps involved in a process of manufacturing hydrogen from fuel gases.
Flowcharts are also used to illustrate the sequential computational steps used in a computer program, as shown
in Exhibit 5-8.
Schematics, such as diagrammatic views of a process and electrical circuit diagrams, are another useful
form of drawings. [FN30] These schematics use such standardized illustrative symbols as those commonly used
in electrical and chemical engineering, which are approved by the Patent Office, as discussed below. Two ex-
amples of these schematics are shown in Exhibits 5-9 and 5- 10. Exhibit 5-9 shows a diagram for the process of
adding copper ions to cheese. The valve and piping symbols are commonly used in the chemical industry. Ex-
hibit 5-10 shows electrical circuits for an engine spark plug control apparatus.
*5-20 These types of drawings are most useful if the drawing itself is fully annotated such as shown by Ex-
hibit 5-7. However, it is proper practice to rely on the written specification to resemble what is schematically
represented by the drawing as shown by Exhibit 5-9.
[FN29]. 37 C.F.R. § 1.81(b).
[FN30]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-20 § 5.3.7 Complex Chemical Structures
Drawings of complex chemical structures can also be included in a patent application. They provide the
simplest and perhaps the best method of designating organic compounds. They are of particular importance
when claiming chemical structures and processes. Generally, these drawings are built directly into the specifica-
tion rather than as separate drawings. These drawings are of the form shown in Exhibit 5-11. Chemical nomen-
clature and structural formulae are generally based on the rules promulgated by the IUPAC (International Union
of Pure and Applied Chemistry), which are published in the CRC Handbook of Chemistry and Physics, CRC
Press, Boca Raton, Florida.
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-20 § 5.3.8 Illustrating the Use of the Invention
Drawings can also be used to illustrate the use of a machine or device. These illustrations are generally
provided when the method of using the invention is difficult to understand or if the method of using the device is
claimed. For example, in Exhibit 5-12, the use of the water bottle lifting device is illustrated (additional draw-
ings of the device are shown in Exhibit 5-2). Figures 4A and 4B illustrate the use of the device in lifting the wa-
ter bottle for installation in a water dispenser. Two persons can lift the bottle (20) with the lifting device (10) by
gripping the horizontal handles (14 and 16) on either side of the bottle (20) and standing to an upright position.
The device is then inverted and installed in the water dispenser as shown in Figure 5. Figure 6 of Exhibit 5-12 il-
lustrates removal of the device from the water bottle *5-21 after the bottle has been installed. Removal is
achieved by loosening the securing means (18) and pulling the device (10) from the bottle (note the brackets
between the two parts of this figure).
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-21 § 5.4 Formal Requirements
The Patent Office has established formal requirements that must be met for a drawing to be acceptable.
These formal requirements used to be strictly enforced. A new standard for patent application drawings has re-
cently been set forth by the Patent Office. Although the "technical" standards of 37 C.F.R. § 1.84 remain un-
changed, as a practical matter, all the Patent Office now wants are drawings of sufficient quality to be used to
create a patent application publication. As the PTO stated in the Federal Register: "Since the patent application
publication will be a prior art document, the Office must consider the usability of the patent application publica-
tion as a prior art document when determining what drawing quality is needed to create the patent application
publication." [FN31] The main test now is whether the drawing is suitable for reproduction. [FN31.1]
While the examiner judges the sufficiency of the contents or disclosure in the drawings, the Patent Office
chief draftsman judges the sufficiency of the formal requirements of the drawing. If the formal requirements are
met, the Patent Office chief draftsman will approve the drawings. If the original drawings do not satisfy the
formal requirements, they are deemed informal, and the draftsman indicates the informalities and whether they
can be corrected or whether new drawings are required. The applicant is then informed of the chief draftman's
findings and notified that the drawings are admitted only for examination purposes.
*5-22 The requirements for formal drawings are found in 37 C.F.R. § 1.84 and described in detail in
M.P.E.P. § 608.02. The essential elements of these requirements are listed below. They include the type and size
of paper to be used, the size of margins, the type of drawing ink, and the arrangement of the views on the draw-
ing paper.
[FN31]. 65 Fed. Reg. 57,024 (Sept. 20, 2000).
[FN31.1]. 37 C.F.R. § 1.85(a).
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
§ 5.4 Formal Requirements
*5-22 § 5.4.1 Paper Type, Size, and Margins
All drawings must be made on paper that is flexible, strong, white, smooth, nonshiny, and durable. The sur-
face of the paper should be of a quality that allows easy erasure and correction with india ink. The Patent Office
suggests two-ply or three-ply bristol board as the preferred medium. The paper used for the drawings must be
one of the following sizes: 8 1/2 x 11 inches (21.6 x 27.9 centimeters), or 21.0 x 29.7 centimeters (DIN size A4).
[FN32] Because that last size corresponds to international standards, it should be used if there is any possibility
that foreign applications using the drawings will be filed.
It is important to strictly adhere to the margin requirements; otherwise, the draftsman will reject the draw-
ings. Each sheet must include a top margin of at least 2.5 centimeters, a left side margin of 2.5 centimeters, a
right side margin of 1.5 centimeters, and a bottom margin of 1.0 centimeters. [FN33] In arranging the views on
the drawing sheet, enough room needs to be allowed for the prescribed margins, so that the drawings do not
overlap into the margins.
[FN32]. 37 C.F.R. § 1.84(f).
[FN33]. 37 C.F.R. § 1.84(g).
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-22 § 5.4.2 Drawing Ink and Erasure
All drawings must be drawn with india ink or its equivalent in quality. [FN34] The lines and letters in all
drawings should *5-23 be uniformly thick and well defined to allow adequate reproduction. [FN35] India ink
erasure is used to correct any of the lines on the drawings. One of the reasons why bristol board is used is that it
allows easy correction with erasers. [FN36] Generally it is safer to initially draw in pencil to allow easy correc-
tion. Computer-drawn illustrations can also be easily corrected. However, it can be more time-consuming to in-
put the drawing into the computer graphics program than it is to redo a hand drawing.
[FN34]. 37 C.F.R. § 1.84(a).
[FN35]. 37 C.F.R. § 1.84(a)(1).
[FN36]. M.P.E.P. § 608.02.
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-23 § 5.4.3 Scale
The components or parts of the invention must be drawn in proportion to each other. However, it is not ne-
cessary to scale the drawing to any fixed scale, as long as the components of the invention are proportionately
sized. Since they are not drawn to scale, patent drawings are regarded as mere schematics, and aspects of the
drawings such as spacing and length are open to normal engineering interpretation. [FN37]
The scale of the drawing should be large enough to allow the whole drawing sheet to be reduced by two-
thirds without blurring the features of the drawing. [FN38] That requirement is imposed because the Patent Of-
fice reduces the size of the drawings during photographic reproduction. Each individual view should also be
drawn large enough to show details of the invention without crowding lines in the drawing. [FN39]
[FN37]. Ashow Ltd. v. Morgan Constr. Co., 213 U.S.P.Q. 671 (D.S.C. 1982).
[FN38]. 37 C.F.R. § 1.84(k).
[FN39]. 37 C.F.R. § 1.84(h).
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-24 § 5.4.4 Arrangement of Views
The arrangement or layout of the figures on a drawing page should follow a logical sequence. Usually a
pictorial representation of the entire invention is the first figure. That is followed by other, more detailed pictori-
al or sectional views. In general, the arrangement of the figures should follow the structure of the claims, from
the more general figures to the more detailed views. When possible, a reference view and its derivative sectional
view should be placed adjacent to one another.
In arranging the figures, the drawings cannot overlap. If a drawing is too large to be contained in one sheet,
it may be broken up and drawn over several sheets of paper that can be put together to understand the complete
invention. [FN40]
The preferred mode of orienting each view within the drawing is along the length of the sheet so that they
can be read with the sheet held in an upright position. [FN41] In other words, the shorter side of the sheet is used
as the top of the drawing, with all the views on a sheet standing in the same direction. However, if the preferred
size of the drawing is longer than the width of the sheet, the drawing may be shown in landscape orientation,
that is, with the top of the drawing and the top margin on the right of the sheet. All views on a sheet must have
the same orientation. [FN42]
[FN40]. 37 C.F.R. § 1.84(h)(2).
[FN41]. 37 C.F.R. § 1.84(i).
[FN42]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-24 § 5.4.5 Lines, Letters, and Reference Numerals
Every line and letter must be durable, black, sufficiently dense and dark, and uniformly thick and well
defined. [FN43] The lines should be sufficiently thick to permit adequate reproduction. [FN44]
*5-25 When hatching or shading a region of the drawing, fine or crowded lines must be avoided. All hatch-
ing patterns should be made by oblique, parallel lines, sufficiently spaced apart to enable the lines to be distin-
guished without difficulty. [FN45] Each line within the hatched region should be clear and distinct.
A draftsman can choose any style of lettering so long as the letters and figures are clear and distinct. The
reference numerals on the drawings should measure at least one-eighth of an inch in height and should be placed
on bare areas of the drawing sheet so that they are clearly visible. [FN46] When necessary, blank spaces should
be left on shaded and hatched areas for applying the numerals.
Each of the drawings should be consecutively numbered in the order in which it appears. [FN47] However,
the same drawing number with the addition of consecutive alphabetic letters to identify similar views of differ-
ent versions of an invention can be used to identify different configurations of the same version of an invention.
(An illustrative example is Exhibit 5-12, in which the two drawings shown are numbered Figures 4A and 4B.)
Each element and subelement of the drawing also is identified by reference numbers. These numbers are
used in the written disclosure to refer to features of the drawings. The same part of the invention appearing in
more than one view must always be designated by the same number, and the same number should not be used to
designate different parts. [FN48] Reference numbers should be placed in the drawing so as not to interfere with
the drawing comprehension [FN49] and must not be used in association with brackets or inverted commas, or
*5-26 enclosed within outlines, for example, encircled. [FN50] Dimensions of the invention are not normally
given on the drawing itself, but may be disclosed in the specification.
It is recommended that the first number used for an element in the drawings be higher than the last number
used for a drawing to avoid confusing reference numbers and drawing numbers. For example, if the application
contains eight drawings, the first element can be numbered as 9 or 10.
Also, when different versions of an invention are described, consider using different series of reference
numbers for each version. For example, 100, 102, 104 . . . for version 1; 200, 202, 204 . . . for version 2, and so
on. That same technique is useful for organizing process flow sheets where each unit operation is given its own
number series. For example, reactor elements can be given the 100 series, a distillation column the 200 series,
and condensers the 300 series. That makes it much easier to follow the flow sheet and description, and also
avoids duplication of numbers in the drawings.
When drawing sectional views of the invention, the plane upon which a sectional view is taken is indicated

by a broken line on a reference perspective, plan, or elevation view. The ends of that broken line are numbered
with numbers corresponding to the figure number of the sectional view.
[FN43]. 37 C.F.R. § 1.84(l).
[FN44]. Id.
[FN45]. 37 C.F.R. § 1.84(l) (1993); see also 37 C.F.R. § 1.84(m).
[FN46]. 37 C.F.R. § 1.84(p)(3).
[FN47]. 37 C.F.R. § 1.84(t) (1993); see also 37 C.F.R. § 1.84(n).
[FN48]. Id.
[FN49]. 37 C.F.R. § 1.84(p)(3).
[FN50]. 37 C.F.R. § 1.84(p)(1).
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-26 § 5.4.6 Identification of Drawings
Identifying idicia, if provided, should include the application number, the title of the invention, and the in-
ventor's name and docket number (if any), if no application number has been assigned. This information is to be
placed on the front of each sheet of drawings and centered within the top margin. [FN51]
[FN51]. 37 C.F.R. § 1.84(c).
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-27 § 5.5 Illustrative Styles and Symbols
The Patent Office requires illustrative drawings and not engineering drawings. This distinction is an import-
ant one, as the style and content of illustrative drawings are substantially different from the style and content of
blueprints or engineering drawings. Illustrative drawings are required, because it is much easier to understand an
illustration of the invention than an engineering drawing. This section outlines the elements of style involved in
the art of illustration. Guidelines for patent illustrations are defined by the Patent Office in a publication titled
Guide to Patent Draftsmen. Exhibits 5-15 through 5-22 are reproduced from that publication.
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
§ 5.5 Illustrative Styles and Symbols
*5-27 § 5.5.1 Types and Forms of Lines
Various types of lines are commonly used in patent drawings, as illustrated in Exhibits 5-13 and 5-14. Ex-
hibit 5-13 illustrates the form of object lines, cutting plane lines, projection lines, hidden lines, and lead lines.
Exhibit 5-14 shows how the various lines are used to illustrate a combination fork and spoon utensil.
§ 5.5.1.1 Object Line
An object line is a heavy, continuous line used to represent the outline or overall shape of an object, as
shown in Exhibit 5-13. It is used to indicate a change in direction of the surface or the intersection of two sur-
faces. Every edge or surface that is visible from a certain view of an object is included in that view by means of
an object line. In the perspective view of Figure 1 of Exhibit 5-14, object lines are used to outline the shape of
the utensil.
*5-28 § 5.5.1.2 Cutting Plane Line
A cutting plane line reveals the location of a sectional view through the object. This line is generally drawn
in the form of a single long line and a short dash located at the position of the cutting plane, as shown in Exhibit
5-13. A reference numeral identifying the number of the figure corresponding to the cutting plane is drawn at the
base of this line. An arrowhead must be drawn indicating the direction in which the section is to be seen. Lines
4-4, 5-5 and 6-6 are cutting plane lines shown in the drawing of Figure 3 of Exhibit 5- 14; these lines identify
the location of corresponding sectional drawings that are shown in Figures 4, 5, and 6 of Exhibit 5-14.
§ 5.5.1.3 Projection Line
A projection line comprises an alternate sequence of long and short dashes. This line is used to show ex-
ploded views of parts that fit together to form the complete invention. The line shows the structural arrangement
of the individual parts, by aligning or guiding together corners of the individual parts. Figure 1 of Exhibit 5-14
shows an exploded view of the combination fork and spoon invention with each component of the assembly
aligned by projection lines b-b in Figure 1.
§ 5.5.1.4 Hidden Line
A hidden line is used to represent surfaces or edges that are hidden from view. This line is generally in the
form of a series of short dashes, as shown in Exhibit 5-13. Hidden edges and surfaces are not generally shown in
patent illustrations. However, these lines can be used when it is necessary to show an essential hidden feature of
the invention, or to show the structural relationship between visible and hidden portions of the invention. The
structural relationship between the hidden and visible parts is difficult to understand *5-29 in the invention of
Exhibit 5-14. Consequently, hidden lines such as c-c and d-d are used in the illustrative figures.

§ 5.5.1.5 Lead Line
A single solid lead line should be used to connect a reference numeral to a component within a drawing.
The lead line should be short. Lead lines for hidden portions of the drawing should be in the same form as that
of the hidden line, that is, a series of short dashes, as shown in Exhibit 5-13 and in line e-e of Figure 8, Exhibit
5-14. An arrowhead is placed at the end of the lead line only when the reference numeral refers to the entire sub-
ject of the drawing or a segregable portion of that subject, such as with numeral 10 of Exhibit 5-14.
The lead line touches the outline of an object when it is used to refer to a separate and distinct portion of the
object, such as the lead line of reference numeral 12, which identifies the handle of the utensil in Exhibit 5-14.
However, when the reference numeral refers to a portion of the invention that cannot exist independently of the
whole object shown in the drawing, the lead line ends at the surface of the object without touching the outline of
the object, such as that connecting reference number 56 with the surface of the spoon in Figure 1 of Exhibit
5-14.
§ 5.5.1.6 Center Line
Center lines are not generally used unless they are needed to depict some relevant aspect of the drawing.
Center lines made of alternate long and short dashes are used in engineering drawings to depict all radii or to de-
pict the center of geometrical shapes. An example of a center line is shown by line 26 of Figure 3 of Exhibit 5-2.
Unless necessary, the presence of these lines in the patent illustrations is sufficient cause for the examiner to re-
ject a drawing.
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-30 § 5.5.2 Shading
Generally, patent illustrations are shaded to appear as if an imaginary light source originates from the upper-
left-hand corner at an angle of forty-five degrees. [FN52] This is accomplished by rendering the lines that are
close to the upper-left corner fine or thinner than the lines that are further away from the upper-left corner.
However, this rule does not apply to perspective views. In perspective views, the thickness of lines represents
distance. Thicker shading lines are used to show portions of an object that are close to the viewer, and fine lines
to show distant features.
Shading lines are drawn in specific patterns depending on the shape or geometry of the object. Thus, cyl-
indrical objects are shaded with lines parallel to their length, while spherical objects have circular shading lines,
as shown in Exhibit 5-15. Convex and concave surfaces are distinguished by the location of the shading lines on
their surfaces, as shown in the ball and socket illustrations of Figure 5-19. Convex surfaces are represented with
circular shading lines at the lower right-hand corner of the object. Concave surfaces are represented with circu-
lar shading lines at the upper-left-hand surface of the object.
The amount of shading depends on the size of the object. The larger the article, the more shading used. A
cylinder or sphere with a large diameter should contain numerous shading lines. However, a single heavy shad-
ing line is sufficient for small pipes, rods, and shafts. When more than one shading line is used on cylindrical
surfaces, the shading is blended from the second line. The final outer line is always a thinner line to accentuate
the edge of the object.
*5-31 Mirrored or shiny surfaces are illustrated by oblique shading lines, as shown in Exhibit 5-16. In this
type of shading, the heaviest lines are placed closest to the light source, unlike the other forms of shading. All
shade lines are oblique to the mirrored surface to distinguish them from the vertical shading lines of opaque ob-
jects.
Inclined surfaces are distinguished from flat surfaces by drawing shading lines, as shown in Exhibit 5-17.
The outer line is always a light line. This gives a slanting effect to the surface as the heavy line is placed on the
edge of the upper plane. The surface shading is blended from that heavy line, giving the desired appearance.
[FN52]. 37 C.F.R. § 1.84(m).
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-31 § 5.5.3 Hatching Patterns
Hatching patterns are used to represent the type of materials used, when the type of material is a feature of
the invention. Patent Office sanctioned patterns are shown in Exhibit 5-18. [FN53] The hatching pattern for
wood is used sparingly on parts of wood in section, because excessive wood graining blurs the drawing. [FN54]
Fabric is illustrated by irregular freehand shading to bring out the proper effect. Individual colors can also be
represented by a unique hatching pattern. That is necessary because the Patent Office does not generally allow
the use of colored drawings. [FN55]
[FN53]. M.P.E.P. § 608.02.
[FN54]. Id.
[FN55]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-31 § 5.5.4 Mechanical Components
There are several accepted forms of representation for illustrating threads and gears, shown in Exhibits 5-19
through 5-21. A simple pattern of lines is used to portray threads on small bolts and openings. Larger bolts or
openings require a more detailed thread drawing, which shows the *5-32 outline of each individual thread. Solid
black shading lines are used to illustrate the threads themselves.
Each type of gear or gear assembly also has distinct illustrative forms. In illustrating gears, particular care
needs to be given to the correct spacing between the gear teeth and also to the weight of the shade lines. The
conventional methods of showing a spur gear, a helical gear, and a worm gear in mesh are shown in Exhibit
5-21.
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-32 § 5.5.5 Illustrative Symbols and Labeled Representations
Graphical drawing symbols approved by the Patent Office can be used to represent conventional elements.
[FN56] The Patent Office has approved the symbols contained in certain publications. [FN57] These publica-
tions are useful guides in selecting appropriate symbols. For example, the approved publication for electrical and
electronic symbols is titled: Y 32.2--1970 Graphic Symbols for Electrical and Electronics Diagrams. Similar
publications exist for fluid power dynamics, process flow symbols, valves and pipe fittings, and other such ap-
paratus. These publications are available from the American National Standards Institute, Inc. [FN58]
Generally, all American National Standards for drafting symbols are approved symbols. Commonly used
graphic symbols for conventional electrical and mechanical elements are shown in Exhibit 5-22. Other standard
or commonly used symbols are also acceptable provided they are clearly understood and are adequately identi-
fied and described in the specification. [FN59] Symbols and labeled representations that are *5-33 similar and
create confusion with other symbols commonly used in the Patent Office are not acceptable. [FN60]
The symbols for electrical circuit components can be modified as follows. An arrow through an electrical
circuit element indicates that the element is variable, such as a variable resistance. [FN61] A dotted line connec-
tion of these arrows indicates ganging (that is, a mechanical link) between the two elements. For an inherent
property of a component, such as the resistance of a wire or the equivalent resistance of a more complex device,
the circuit can be shown by drawing the symbol (a resistor, in this example) in dotted lines on or near the com-
ponent. In lieu of a symbol, a labeled representation can be used to represent a conventional element, a combina-
tion of elements, or a circuit. [FN62] These include appropriately labeled rectangles, squares, and circles. For
example, a motor or a valve can be represented by a circle with the word "motor" or "valve" as shown in Exhibit
5-22. Exhibit 5-7 shows labeled representations of a process flowchart.
[FN56]. 37 C.F.R. § 1.84(n).
[FN57]. M.P.E.P. § 608.02
[FN58]. 11 West 42 Street, New York, New York 10036.
[FN59]. M.P.E.P. § 608.02.
[FN60]. Id.
[FN61]. Guide for Patent Draftsmen, Document PAT-012.1-7502, U.S. Dept. of Commerce, Patent and Trade-
mark Office, U.S. Govt. Printing Office, Washington, D.C. 20402 (1989).
[FN62]. 37 C.F.R. § 1.84(n).

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-33 § 5.6 Special Forms of Illustration
There are several forms for illustrating an invention that are not normally acceptable by the Patent Office.
These include the categories of colored drawings, photographs, and models and exhibits. The Patent Office will
only accept such articles under special circumstances.
PLIREF-PATAPP s 5.6
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Jeffrey G. Sheldon

Chapter 5: Drawings
§ 5.6 Special Forms of Illustration
*5-34 § 5.6.1 Black-and-White Photographs
Photographs are not normally considered to be proper drawings. [FN63] They are considered informal draw-
ings and are accepted for the purpose of establishing a filing date, provided they are replaced by a formal draw-
ing within two months of the date of notice from the Patent Office. [FN64] Photolithographs of photographs are
never acceptable.
The Patent Office accepts photographs in utility and design patent applications as formal drawings only if
photographs are the only practical medium for illustrating the claimed invention. Thus, if the subject matter of
the application admits of illustration by a drawing, the examiner may require a drawing in place of the photo-
graph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the
printed patent. Exemplary of objects of which the Patent Office accepts photographs in utility patent applica-
tions are electrophoresis gels, blots, histological tissue cross sections, animals, plants, in vivo imaging, thin lay-
er chromatography plates, and crystalline structures. The Patent Office may accept photographs in design patent
applications to show ornamental effects. [FN65]
Exhibit 5-23 shows a transmission electron micrograph of a fibrous carbon chain described in an issued pat-
ent. A photograph was allowed in this patent because it would be difficult to draw the shape of the fibrous chain.
[FN63]. M.P.E.P. § 608.02.
[FN64]. Id.
[FN65]. 37 C.F.R. § 1.84(b).
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Jeffrey G. Sheldon

Chapter 5: Drawings
*5-34 § 5.6.2 Colored Drawings and Photographs
Colored drawings and colored photographs are generally not accepted in view of the substantial administrat-
ive and economic burden associated with printing a utility patent with colored drawings. [FN66] Neither the ex-
aminer nor the draftsman *5-35 has the authority to permit colored drawings in utility or design applications.
They can be used only if a special petition is filed requesting acceptance of the colored drawings under 37
C.F.R. § 1.84. [FN67] Such a petition must include the appropriate fee set forth in section 1.17(h), and three sets
of color drawings. The specification must contain the following language as the first paragraph in the brief de-
scription of the drawing:
The file of this patent contains at least one drawing executed in color. Copies of this patent with color
drawing(s) will be provided be the Patent and Trademark Office upon request and payment of the necessary
fee.
The petition is granted only if the Patent Office determines that color drawings are necessary, that is, are the
only practical medium by which to disclose the invention.
[FN66]. M.P.E.P. § 608.02.
[FN67]. 37 C.F.R. § 1.84(a)(2).
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-35 § 5.6.3 Computer Programming Lists
A computer program listing can be submitted as a drawing, but only if it is contained in 300 lines or less
with each line being seventy-two characters or fewer. [FN67.1] More information about submitting computer
program listings can be found in § 12.5.2.
[FN67.1]. 37 C.F.R. § 1.96(b).
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5-35 § 5.7 Mailing
Drawings should be mailed either flat and protected by a sheet of heavy board or rolled for transmission in a
mailing tube. The examiner can request a new drawing if the drawings are folded, creased, or mutilated. [FN68]
*5-36 The drawings must be mailed with the patent application. If drawings are mentioned in the specifica-
tion, but not included with the application, the application is deemed incomplete, and rejected. That results in
loss of an early filing date. However, an applicant can petition to have the application accepted without the
drawings if the figures are not necessary to understand the subject matter sought to be patented. [FN69]
[FN68]. M.P.E.P. § 608.02.
[FN69]. M.P.E.P. § 608.02.
PLIREF-PATAPP s 5.7
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-1 Exhibit 5-1: Front Views of a Grill Cleaner

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Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-3 Exhibit 5-2: Device for Lifting and Inverting Cylindrical Containers

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-5 Exhibit 5-3: Partially Broken Away Front Perspective View

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-7 Exhibit 5-4: Three Partial Sectional Views

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-9 Exhibit 5-5: Exploded Views

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-11 Exhibit 5-6: Plot of Unreacted Carbon

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-13 Exhibit 5-7: Flow Sheet

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-15 Exhibit 5-8: Flowchart

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-17 Exhibit 5-9: Schematic: Procedure for the Metered Addition of Copper Ions in Cheese Production
United States Patent [19] [11] Patent Number: 5,003,869

Fabricius [45] Date of Patent: Apr. 2, 1991
-------------------------------------------------------------
*5EX-18 [54] PROCEDURE FOR THE METERED ADDITION OF COPPER IONS IN CHEESE PRODUCTION
[75] Inventor: Claus Fabricius, Alleröd, Denmark
[73] Assignee: Mator AG, Inwil, Switzerland
[21] Appl. No.: 575,647
[22] Filed: Aug. 31, 1990
Related U.S. Application Data

[62] Division of Ser. No. 365,548, Jun. 13, 1989.
[30] Foreign Application Priority Data
Jun. 14, 1988 [CH]

Switzerland ......................................................... 2277/88
5
[51] Int. Cl. .............. A23C 19/00; A23C 19/05; A23C 19/068; A01J 25/00
[52] U.S. Cl........................... 99/453; 99/452; 99/460; 99/466; 366/290
[58] Field of Search ............ 99/452, 453, 460, 466, 99/516, 534, 536, 451;
366/101, 290, 291; 426/40, 42, 74, 582
Primary Examiner-Timothy F. Simone
Attorney, Agent, or Firm-Wenderoth, Lind & Ponack
[57] ABSTRACT

For the metered addition of copper ions in cheese production in a stainless steel kettle
(a) CO is introduced into the added water,
2
(b) copper ions are produced electrolytically in the added water by means of electrodes immersed in the added
water,
(c) the enzymes necessary for the cheese production are added to the added water containing CO and copper
2
ions and
(d) the added water containing CO , copper ions and enzymes is added to the raw milk for the cheese produc-
2
tion.
An apparatus for carrying out this procedure is characterized by

(a) an electrolyzing tank (10) having an anode (11), a cathode (12) and a vent (13),
(b) means (1, 2, 3, 4, 6) for feeding added water into the electrolyzing tank (10),
(c) means (5, 7, 8, 9) for the metered addition of CO to the added water,
2
(d) a mixing tank (16) having a mixing device (17),
(e) means (14) for draining the added water from the electrolyzing tank (10) into the mixing tank (16),
(f) means (15) for adding enzymes to the mixing tank (16),
(g) a milk kettle (19) having a mixing device (20) and
(h) means (18) for draining the added water from the mixing tank (16) into the milk kettle (18).

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-19 Exhibit 5-10: Schematic: Engine Spark Control Apparatus
United States Patent [19] [11] Patent Number: 5,003,946

Minks [45] Date of Patent: Apr. 2, 1991
-------------------------------------------------------------
*5EX-20 [54] ENGINE SPARK CONTROL APPARATUS
[76] Inventor: Floyd M. Minks, 2700 Partin

Settlement Rd., Kissimmee, Fla.
32743
[21] Appl. No.: 337,014
[22] Filed: Apr. 12, 1989
Related U.S. Application Data

[60] Division of Ser. No. 226,298, Jul. 7, 1988, Pat. No. 4,821,702, which is a continuation of Ser. No. 112,100,
Oct. 22, 1987, Pat. No. 4,774,924.
5
[51] Int. Cl. ................................................... F02P 5/155
[52] U.S. Cl......................................... 123/335; 123/618; 123/651
[58] Field of Search ..... 123/334, 335, 416, 418, 123/599, 602, 606, 617, 618,
625, 630, 648, 649, 651, 652
[56] References Cited
U.S. PATENT DOCUMENTS
3,566,188 2/1971 Minks .............. 123/599 X

3,802,400 4/1974 Minks ................ 123/335

4,402,298 9/1983 Morita ............. 123/618 X

4,404,952 9/1983 Fujimoto et al...... 123/618 X
4,411,245 10/1983 Tanaka et al........ 123/618 X
4,491,122 1/1985 Piteo ............ 123/149 C X
4,528,970 7/1985 Fujimoto et al...... 123/618 X
4,608,953 9/1986 Benvenuti ............ 123/335
4,625,689 12/1986 Komurasaki ........... 123/335
4,644,927 2/1987 Okuda .............. 123/618 X
4,664,080 5/1987 Minks ................ 123/335
4,697,560 10/1987 Umehara .............. 123/335
4,699,115 10/1987 Terada et al........ 123/335 X
4,776,311 10/1988 Venieres et al........ 123/335
Primary Examiner-Willis R. Wolfe
Attorney. Agent. or Firm-Duckworth, Allen, Dyer & Doppelt
[57] ABSTRACT
This disclosure relates to apparatus for operating a combustion engine by controlling the spark ignition voltage to
said engine. Said control is created by the application of two opposing currents to the input of an amplifying device
which is used to selectively shunt a constant current source away from the control electrode of a second amplifying
device connected to control the formation of said ignition voltage.

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-21 Exhibit 5-11: Complex Chemical Structures

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-23 Exhibit 5-12: Use of an Invention

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-25 Exhibit 5-13

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-27 Exhibit 5-14: Use of Lines

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-29 Exhibit 5-15: Circular Shading Lines

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Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-31 Exhibit 5-16: Oblique Shading Lines

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-33 Exhibit 5-17: Shading Lines for Inclined Surfaces vs Flat Surfaces

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-35 Exhibit 5-18: Sanctioned Hatching Patterns

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-41 Exhibit 5-21: Worm Gear in Mesh

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-43 Exhibit 5-22: Symbols for Conventional Electrical and Mechanical Elements

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 5: Drawings
*5EX-47 Exhibit 5-23: Transmission Electron Micrograph of Fibrous Carbon Chain

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 6: Preparing the Claims
This chapter explains the basic principles of claim drafting. However, knowledge of the basic principles
alone is insufficient for writing good claims, just as knowledge of the rules of playing poker does not make one
a good poker player. Therefore, the chapter also includes an extensive discussion of the strategy of claim draft-
ing.
Also provided in this chapter is a "Checklist of Possible Claim Deficiencies," Exhibit 6-13. This is a valu-
able checklist that should be used whenever writing claims.
PLIREF-PATAPP s 6.1
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Jeffrey G. Sheldon

§ 6.1 Introduction
*6-6 § 6.1.1 Purpose of the Claims
The claims are the most important part of the patent application. In an issued patent, the purpose of the
claims is to define the novel and nonobvious invention protected by the patent. In a patent application, as it is
being prepared, the claims have the same primary purpose. But they also have other important purposes. They
are the "template" for the rest of the specification. They provide a convenient basis for discussions with the in-
ventor and others. They will become the principal medium of communication with the Patent and Trademark Of-
fice. The claims determine the examining group in the Office, the area of the examiner's search, the probability
of a restriction requirement (an objection that more than one invention has been claimed), and the ease or diffi-
culty of prosecution generally. They are likely to perform the same function in the prosecution of corresponding
foreign applications.
END OF DOCUMENT


Jeffrey G. Sheldon

§ 6.1 Introduction
*6-6 § 6.1.2 Basic Principles of Claim Drafting
In order to fulfill these purposes, each of the claims must have a well-defined meaning, and the claims must
be based on a thoughtful analysis of the inventor's discoveries in view of the known prior art. Further, the claims
should reflect an imaginative forecast of how others might use the inventor's discoveries and what other prior
art, not yet known, might exist.
Claim drafting is an art that can be learned by study, application, and experience. This chapter provides a
systematic approach to the study of claim drafting.
The first step in claim drafting is to understand the invention. The next is to understand the prior art. Some-
where in the no-man's-land between the two lies the boundary that will be created by each claim. Where should
the boundary be drawn? If the boundary is drawn very close to the inventor's actual work, the resulting narrow
claim is more likely to be *6-7 valid, but it is also likely that the claim will be too narrow to exclude competitors
who make use of the same discoveries. If the boundary is drawn very close to the prior art, the resulting broad
claim will be difficult and expensive to obtain and defend, but if it is valid, it will exclude competitors. Claim
drafting always requires a judgment between those two extremes, especially in drafting the independent claims.
The judgment is based not only on the combined skills of the inventor (and other technical and commercial ad-
visers) and the patent practitioner, but also on the budget available.
END OF DOCUMENT


Jeffrey G. Sheldon

§ 6.1 Introduction
*6-7 § 6.1.3 Start with the Claims
The order in which to draft the elements of a patent application is an area of debate among many practition-
ers. Some practitioners first write the description of the invention and then write the claims; others insist on
writing a complete set of claims before writing the description of the invention. In reality, most practitioners
merge the two techniques. Those who claim they start with the description of the invention generally have a
good idea of what will be in the claims even if the claims have not been committed to paper. Practitioners, such
as the author, who prefer to start with the claims, usually revise the claims and add claims after drafting the re-
mainder of the specification. It is generally recommended that the drafting of a patent application begin with the
claims. That is why this chapter, which deals with claim drafting, appears in this book before chapter 7, which
describes how to write the specification.
There are several good reasons for beginning with the claims, including:
1. The claims are really the "punchline" of the story narrated in the specification. Most authors agree
that it is much easier to write stories knowing the ending than to make up the ending as the story is written.
*6-8 2. Once the claims are written, the remainder of the application becomes relatively simple to draft,
as detailed in the next chapter. The "Summary of the Invention" and "Abstract" sections of the specification
closely follow the form and content of the claims. The claims also form an outline for the "Description of
the Invention" section. Starting with the claims is particularly recommended when a new practitioner is be-
ing taught how to write a patent application. The author's experience is that once the independent claims and
at least some of the dependent claims have been prepared, reviewed, and approved, it is much less likely
that time will be wasted in preparing the rest of the application.
3. Having the claims prepared before writing the remainder of the specification helps ensure that proper
and consistent terminology is used throughout the specification. Also, writing the claims early avoids unne-
cessary revisions of the specification. The language used to describe a particular element of the invention
should be consistent between the specification and the claims. For example, if the term "evaporating" is
used in the claims and the term "heating" in the specification, it would be necessary to change the specifica-
tion to replace "heating" with "evaporating." If the claims were drafted first, this problem would not arise.
4. Writing the claims early also helps make certain that all the correct drawings have been ordered. As
discussed in chapter 5, a patent application for a mechanical invention usually must contain drawings show-
ing the claimed subject matter. Preparing the claims early makes it possible to ensure that all necessary
drawings have been ordered.
5. Starting with the claims is an excellent way to teach a new practitioner how to write the patent ap-
plication. When the author works with aspiring practitioners, *6-9 the aspiring practitioner is not turned
loose on the specification (except for examples) until at least the broadest claim and some dependent claims
have been drafted. This approach has proven efficient in the training of new practitioners.

END OF DOCUMENT


Jeffrey G. Sheldon

*6-9 § 6.2 Statutory Requirements for the Claims
For claim-drafting purposes, the principal statutory requirements for the claims are set out in 35 U.S.C. §§
112, 102, and 103, but many other patent statutes bear directly on the claims.
PLIREF-PATAPP s 6.2
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Jeffrey G. Sheldon

§ 6.2 Statutory Requirements for the Claims
*6-9 § 6.2.1 35 U.S.C. § 112
Section 112 of 35 U.S.C. requires inter alia that "[t]he specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention"
(emphasis added). The purpose of this statute is to ensure that the public can understand the forbidden territory
of the claims. Each claim must be sufficiently precise for those working in the relevant field to know whether
any practically useful process, device, etc., is or is not within the scope of the claim. The definiteness require-
ment "is met only when [the claims] clearly distinguish what is claimed from what went before in the art and
clearly circumscribed what is foreclosed from future enterprise." [FN1] The test applied by the Federal Circuit is
whether those skilled in the art would understand the scope of the claim when the claim is read in light of the
rest of the specification. [FN1.1]
*6-10 However, the definiteness requirement does not require absolute clarity. Only claims "not amenable
to construction" or "insolubly ambiguous" are indefinite. A claim can be given a reasonable meaning even
though the claim presents a difficult issue of claim construction, and even though the construction may be one
over which reasonable persons will disagree. [FN1.2]
Formal or omnibus claims, such as those used for design and plant patents, that is, "I claim my invention
substantially as shown and described," are not permitted because they do not define the invention with sufficient
particularity. [FN1.3]
Claims that define part or all of the invention as being "shown in the drawings" or "as described in the spe-
cification" do not comply with this statute, because different people will have different opinions as to what is "as
shown" or "substantially as shown" in the drawings or the specification. Perhaps because of this, examiners are
often reluctant to allow claims that make any reference to the drawings or the description. There are situations,
however, in which a reference to an appropriate drawing is the best (or even the only satisfactory) way of defin-
ing the invention in the claims. [FN2] An example of a claim that is allowed to refer to a drawing is a claim for
an alloy in which the proportions of one ingredient can be varied within limits prescribed by the proportions of
other ingredients. For such an invention it is far easier to describe the range of claimed compositions in a dia-
gram (such as a phase diagram) than by words. Thus, the following claim was allowed: "with said manganese
content restricted to amounts beneath the curve in the accompanying diagram." [FN3] Similarly, references to a
microphotograph of metallurgical grain structures may also be allowed. [FN4]
*6-11 However, the claims cannot refer to drawings merely because this is convenient. [FN5] Thus, a claim
to an electrical method--"The method set forth in figure 15 [a block diagram] of retrieving words from a content-
addressed memory"--was held improper. [FN6]
It is impermissible to have a single claim cover both an apparatus and a method of use of that apparatus be-

cause a manufacturer of the claimed apparatus would not know from the claim whether it might be liable for
contributory infringement, as a result of a user of the apparatus later performing the claimed method of using the
apparatus. [FN6.1]
It is also important to note that 35 U.S.C. § 112 requires that the claims point out what the "applicant" re-
gards as "his" invention. Thus, the claims should specify what the inventor regards as the invention and not what
an examiner regards as the invention. [FN6.2]
The claims must include all elements of the invention. In other words, the claims cannot be broader than the
disclosed invention by omitting a required element of the invention. [FN7]
It is necessary that claims provide an objective standard to allow the public to determine the scope of the
claimed invention. Thus, a term such as "aesthetically pleasing" that depends solely on the unrestrained, subject-
ive opinion of a *6-12 particular individual purportedly practicing the invention is indefinite. [FN7.1]
The claims do not need to recite the theory behind the invention. In fact, doing so when the theory turns out
to be wrong can result in invalid claims for lack of utility or nonenabling disclosure. [FN7.2]
If a claim includes a measure of a parameter and there is more than one method to measure that parameter,
where the different methods of measurement achieve different results, the claim can be invalid for indefiniteness
under 35 U.S.C. § 112. [FN7.3] However, if values encompassed by the claim language can be calculated or
measured, so that the claim is not "insolubly ambiguous," the claim is not invalid for indefiniteness. [FN7.4]
[FN1]. United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942).
[FN1.1]. Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684, 57 U.S.P.Q.2d 1293 (Fed. Cir. 2001)
(the term "compare" in the claims is indefinite because special meaning asserted for the term not defined in the
specification); Exxon Res. & Eng'g Co. v. United States, 265 F.3d 1371, 60 U.S.P.Q.2d 1272 (Fed. Cir. 2001).
[FN1.2]. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005).
[FN1.3]. See M.P.E.P. § 1302.04(b).
[FN2]. Ex parte Squires, 133 U.S.P.Q. 598 (Pat. Off. Bd. App. 1961).
[FN3]. In re Tanczyn, 97 U.S.P.Q. 150 (C.C.P.A. 1953).
[FN4]. Ex parte Squires, 133 U.S.P.Q. 598 (Pat. Off. Bd. App. 1961).
[FN5]. Ex parte Lewin, 154 U.S.P.Q. 487 (Pat. Off. Bd. App. 1966).
[FN6]. Id.
[FN6.1]. IPIXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005).
[FN6.2]. However, an inventor's understanding of the invention is irrelevant once a patent issues with regard to
the definiteness of the claims. Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 55 U.S.P.Q.2d 1279 (Fed. Cir.
2000).
[FN7]. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 45 U.S.P.Q.2d 1498 (Fed. Cir. 1998) (since an ob-

ject of the invention was to place controls on a console, a claim without that limitation was invalid); see also Re-
ifin v. Microsoft Corp., 214 F.3d 1342, 54 U.S.P.Q.2d 1915 (Fed. Cir. 2000) (discussion of "omitted element"
test).
[FN7.1]. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005).
[FN7.2]. EMI Group N. Am., Inc. v. Cypress Semiconductor Corp., 60 U.S.P.Q.2d 1423 (Fed. Cir. 2001).
[FN7.3]. Honeywell Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332 (Fed. Cir. 2004).
[FN7.4]. Marley Mouldings, Ltd. v. Mikron Indus., Inc., 417 F.3d 1356 (Fed. Cir. 2005).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-12 § 6.2.2 35 U.S.C. §§ 102 and 103
Sections 102 and 103 of 35 U.S.C. set out the conditions for patentability with regard to novelty and nonob-
viousness, respectively. For the claims to be allowed by the Patent Office and to survive litigation, the require-
ments of 35 U.S.C. §§ 102 and 103 must be satisfied. In summary, 35 U.S.C. § 102 requires that the invention
be different from the "prior art," and 35 U.S.C. § 103 requires that the differences must have been unobvious to
a person of ordinary skill in the art when the invention was made. These sections do not refer to "the claims" at
all, but rather to "the invention." But "the invention" means the area defined by the claims or, more accurately,
by each of the claims considered in turn.
*6-13 For purposes of obviousness, but not novelty, 35 U.S.C. § 103 eliminates certain prior art from the
obviousness determination. In particular, a biotechnological process using or resulting in a novel and unobvious
composition of matter is also considered unobvious if:
(1) claims to the composition of matter are contained in either the same application or patent or a separ-
ate application having the same effective filing date; and
(2) the composition of matter, and the process at the time it was invented, are owned by the same per-
son or subject to obligation of assignment to the same person. [FN7.5]
The term "biotechnological process" is relatively narrow, as defined in 35 U.S.C. § 103(b)(3).
In another section of 35 U.S.C. § 103, subject matter that normally qualifies as prior art under 35 U.S.C. §
102(e), (f), and (g) is excluded, when the claimed subject matter, and the subject matter that would ordinarily
qualify as prior art, are owned by the same person or subject to obligation of assignment to the same person at
the time of invention. [FN7.6]
The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) amended 35 U.S.C. §
103 to provide that subject matter developed by another person shall be treated as owned by the same person or
subject to an obligation of assignment to the same person for purposes of determining obviousness if three con-
ditions are met: (1) the claimed invention was made by or on behalf of parties to a joint research agreement that
was in effect on or before the date the claimed invention was made; (2) the claimed invention was made as a res-
ult of activities undertaken within the scope of the joint research agreement; and (3) the application for patent
for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agree-
ment. A "joint research agreement" can be a written *6-14 contract, grant, or cooperative agreement for purposes
of performance of experimental, developmental, or research work in the field of the claimed invention. It is not
necessary that the subject matter actually be owned by the same person if the subject matter was developed as
part of a "joint research agreement. [FN7.7]
A problem that can arise in chemical biotechnology patent applications is one of inherency and thus lack of

novelty. If a product sought to be patented occurs naturally, or is inherently present in the prior art, a claim dir-
ected to the compound may not be novel under 35 U.S.C. § 102. [FN7.8] For example, if a prior art patent dis-
closes in an enabling manner the production of a particular compound, even if a person of ordinary skill in the
art does not recognize the inherent disclosure, the compound is inherently anticipated under 35 U.S.C. § 102.
[FN7.9]
[FN7.5]. 35 U.S.C. § 103(b).
[FN7.6]. 35 U.S.C. § 103(c); 37 C.F.R. § 1.104(c)(4).
[FN7.7]. 35 U.S.C. § 103(c)(3).
[FN7.8]. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2003).
[FN7.9]. SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331 (Fed. Cir. 2005).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-14 § 6.2.3 35 U.S.C. § 101
Section 101 of 35 U.S.C. states:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title.
The statutory provision has in it five separate requirements for patentability:
1. The invention has to be the right type of subject matter, that is, a "process, machine, manufac-
ture, or composition of matter, or . . . improvement thereof, and not fall within any judicially created
exceptions" (see *6-15 § 12.2). It is impermissible to have a single claim that covers both an apparatus
and a method of use of that apparatus. [FN7.10]
2. The invention has to be useful, that is, the utility requirement, which is discussed in detail in §
7.1.2.
3. The invention has to be new, that is, novel as set forth in 35 U.S.C. § 102.
4. The person that can claim the patent has to be the one who "invents or discovers" the invention, a
requirement that is also statutorily set forth in 35 U.S.C. § 102(f).
5. The inventor is entitled to only one patent, because the statute says "a patent" per invention; this
also has been interpreted to limit each patent to one invention.
Under 35 U.S.C. § 121:

If two or more independent and distinct inventions are claimed in one application, the Commissioner
may require the application to be restricted to one of the inventions.
When this occurs, the inventions restricted out of the application can be the subject matter of a divisional
application, which has an effective priority date of the original application (35 U.S.C. § 121).
Traditionally, a restriction requirement and the necessity for filing a divisional application have not been a
problem, because the term of the patent issuing on the divisional application was seventeen years from date of
issuance. However, under revisions to the patent law, effective June 8, 1995, patents will have a term of twenty
years from the effective filing date.
Accordingly, when preparing the claims for a patent application, serious consideration must be given as to
whether the *6-16 claims are directed to one or more than one invention. If it appears that the claims as drafted
are directed to more than one invention, the client should be consulted as to the advantages and disadvantages of
filing only one application or multiple applications. An advantage of a single application is usually lower costs,
particularly if a restriction requirement is not received, and thus issue and maintenance fees need to be paid only
on a single patent. A disadvantage of not dividing up the claims into separate applications is that if a restriction
requirement is received and is proper, the patent that issues on the divisional application will not have the max-

imum possible term.
Exactly what are "independent and distinct inventions" is murky at best. For example, the Patent Office in-
terprets the word "and" in "independent and distinct" to mean "or." In the Manual of Patent Examining Proced-
ure, M.P.E.P. section 801 et seq., the Patent Office presents its interpretations of restriction and election-
of-species requirements.
The following are warning signs of situations where the Patent Office is likely to give a restriction require-
ment:
1. Claims directed to different statutory classes, such as a product and a method of making the
product, or a product and a method of using the product, or an apparatus and a method of using the ap-
paratus.
2. An application where the broadest independent claims are of overlapping scope, that is, there is
not a single broadest claim.
3. There are multiple patentable features of an invention, such as a machine with various compon-
ents, all of which are patentable in their own right, or a process where there are various steps, each of
which is patentable in its own right.
4. A chemical case where there are a large number of species.
*6-17 5. Almost any biotechnology invention, where there are multiple ways of claiming the same
invention.
Accordingly, whenever encountering one of these situations, be alert to the fact that there may be a restric-
tion requirement, which could adversely affect the effective term of the patent issued on certain of the patentable
features.
[FN7.10]. IPIXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-17 § 6.3 Claim Form and Language
The claim form and language are highly stylized to emphasize precision and clarity. This section describes
the basic claim form and meaning of claim language. Preferred arrangement and numbering schemes for the
claims are also discussed.
Each claim is a single sentence generally in the form:

Preamble
Transition
Body
For example:
A wagon [preamble] comprising [transition]:

(a) a platform;
(b) two axles attached to the platform; and [body]
(c) wheels on each axle.
The examples in Exhibit 6-1 present claims in which the preamble, transition, and body are labeled. Writing
the preamble is explained in § 6.3.3; transition phrases are described in § 6.3.4; and drafting the body of the
claim is described in § 6.3.5.
PLIREF-PATAPP s 6.3
END OF DOCUMENT


Jeffrey G. Sheldon

§ 6.3 Claim Form and Language
*6-18 § 6.3.1 Claims Are Placed After the Specification
The claims are placed after the specification. [FN8] Although an application with the claims preceding the
specification will be examined, the Patent Office prefers the claims to follow the specification. [FN9] The
claims must start on a separate page.
[FN8]. 35 U.S.C. § 112.
[FN9]. See M.P.E.P. § 601.
END OF DOCUMENT


Jeffrey G. Sheldon

*6-18 § 6.3.2 Single Sentence
Rule: Every claim is a single sentence.
Each claim is a single sentence, starting with "I (or We) claim:", "What is claimed is:", or the equivalent,
and ending with a period. The language "What is claimed is:" appears immediately before the first claim and is
not repeated.
It is recommended that the language "What is claimed is:" be used rather than language that uses a pronoun
such as "I" or "We." This is because it may be necessary to change the inventorship during prosecution of the ap-
plication from a sole inventor to multiple inventors or vice versa. If "We" or "I" is used in the claims, it may be
necessary to amend the claims when changing inventorship.
A claim composed of two or more sentences, such as a claim with more than a single period, is improper.
The claim must end with a period, and there is only one period (".") in a claim. [FN10] Also, capital letters are
used only at the beginning of the claim and to define standard capitalized forms (such as ° C) in the body of the
claim.
The first word (the first word after "what is claimed is") of every claim is capitalized.
[FN10]. M.P.E.P. § 608.01(m).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-19 § 6.3.3 Preamble
Rule: Every claim has a preamble.
§ 6.3.3.1 Purpose and Form of Preamble
The preamble is a short introductory statement that precedes the body of every claim. The preamble of an
independent claim can
(1) summarize the type of invention,
(2) identify the relationship between the invention and the prior art,
(3) describe how the invention operates upon some external article, and
(4) define the purpose of the invention.
As discussed in § 6.4, the preamble of a dependent claim is different from the preamble of an independent claim,
and usually refers only to the "parent" independent claim.
The preamble can, but does not have to, identify the statutory class of the invention (that is, process, ma-
chine, article of manufacture, or composition of matter). For example, the preamble can be "a machine for mak-
ing felt," or "a method for making felt." Words such as "apparatus," "device," or "circuit" can be used as altern-
ative expressions for the class of machines. The statutory class can also be implied from the common or generic
name for the invention. For example, "a binary computer for calculating . . .," "a self-propelled lawn sprinkler,"
and "a carburetor" refer to claims for machines, while "a fertilizer composition" identifies a composition-
of-matter claim.
The broader the preamble, the less helpful it is, although the preamble can be very broad, for example, no
more than "A process," "An apparatus," or "A composition." The preamble usually includes the intended func-
tion of the invention. The function can be stated directly (for example, "A process for purifying water," "A
device for striking nails," or *6-20 "A composition for promoting the conversion of water to hydrogen"), or in-
directly through the choice of a noun having a recognized functional content (for example, "A distillation," "A
hand hammer," or "A catalyst").
Examples of preambles are:

• A composition . . .
• A composition for fertilizing soil . . .
• Apparatus . . .
• Apparatus for transferring fertilizer from a first conveyor belt to a second conveyor belt running
parallel to the first belt but in an opposite direction . . .
• A device for fertilizing soil . . .

• A method . . .
• A method for fertilizing soil . . .
• A circuit for detecting discontinuities in the insulation of an insulated wire . . .
When an application contains claims to different classes of invention, the preambles of the different types of
claims will, of course, be different. When there are different independent claims to the same class of invention,
the use of different preambles is often helpful (for example, "A heater," "A composite heating device," "A heat-
ing assembly").
When the preamble opens with one noun (for example, "process" or "apparatus") and goes on to use one or
more other nouns, it is often helpful, even if not grammatically necessary, to repeat the first noun at the end of
the preamble. For example, in "Apparatus for shaking articles to dislodge impurities comprising . . .," it is un-
clear whether "comprising" refers to the "apparatus" or the "impurities." It is better, therefore, to write "Apparat-
us for shaking articles to dislodge impurities, the apparatus comprising . . ." This technique is demonstrated by
the preamble of the claim of Exhibit 6- 1(a). The word "apparatus" is repeated in the preamble of the claim of
Exhibit 6-1(a) so that it is clear that the word "comprising" relates to the "apparatus," and not to the "articles."
That avoids a rejection for indefinite or ambiguous language. *6-21 Although the repetition is not necessary, it
is a good practice to follow, so that ambiguities are avoided in more complicated preambles.
The preamble in a dependent claim is a very short version of the preamble in the independent claim from
which it is dependent. The differences between dependent and independent claims are discussed in § 6.4.1.
§ 6.3.3.2 Does the Preamble Limit the Claim Scope?
Rule: If a limitation in the preamble of the claim is intended to limit the scope of the claim, the limita-
tion should be repeated in the body of the claim.
Rule: If the limitation in the preamble is not intended to limit the scope of the claim, the limitation
should be deleted from the preamble.
It is important to write the preamble sufficiently broadly so that the preamble does not limit the scope of the
claim, unless the practitioner intends to limit the claim. An issue that often arises in litigation or during prosecu-
tion of an application is whether the limitations that appear in the preamble are actually limitations in the claims.
[FN11] The terms appearing in a preamble may be deemed limitations of a claim when they give *6-22 meaning
to the claim and properly define the invention. [FN12] For example, the "optical wave guide" language in the
preamble below was held to limit the scope of the claim so that the claim was not anticipated by a prior art pat-
ent that disclosed a doped silica core and a sheath of silica, but did not recite the "optical wave guide" limitation:
[FN13]
1. An optical wave guide comprising:
(a) A cladding layer formed of a material selected from the group consisting of pure fused
silica and fused silica to which a dopant material on at least an elemental basis has been added, and
(b) a core formed of fused silica to which a dopant material . . .
The court held that when the patent was read as a whole in light of the specification, the "optical wave
guide" language limited the claim to those select core and cladding combinations that would function as an op-
tical wave guide and not merely any core/cladding combination. [FN14] Similarly, "Apparatus for shaking art-
icles to dislodge impurities" would by implication exclude all inventions that shake articles for other purposes,
such as to distribute heat or to blend a mixture more effectively.

*6-23 The form of a Jepson claim itself indicates the inventor's intention to use the preamble to define
structural elements of the claimed invention. [FN15]
However, if the preamble merely states a purpose or intended use of the invention, and the remainder of the
claim completely defines the invention, the preamble does not limit the scope of the claim. [FN16] In Marston v.
J.C. Penney, the invention comprised a waterproof, flexible structure used for cushions, mattresses, and life pre-
servers that was made of plastic tubing sealed at regular intervals to form pockets of air. The preamble read "a
buoyant, flexible filler pad comprising a plurality of strip portions arranged in naturally disposed relation. . . ."
The alleged defendant's infringing article was a chaise longue with a webbing surface fabricated from a similar
plastic tube structure. The court found that the preamble did not limit the claim to structures that were buoyant
because the preamble merely stated an intended use and the remainder of the claim completely defined the in-
vention.
The Patent Office will try to review a patent in its entirety in order to determine whether the inventors inten-
ded such language to represent an additional structure limitation or mere introductory language. The Patent Of-
fice is likely to give the broadest reasonable interpretation consistent with the rest of the disclosure without read-
ing limitations from *6-24 the specification into the terms of the preamble. [FN17] The Patent Office does not
give the preamble the effect of a limitation unless it breathes life and meaning into the claim. In order to limit
the claim, according to the Patent Office, the preamble must be essential to point out the invention defined by
the claims. [FN18]
The Federal Circuit has provided guideposts as to a preamble's effect on claim scope: [FN18.1]
(1) Jepson claiming generally indicates intent to use the preamble to define the claimed invention,
thereby limiting claim scope.
(2) Dependence on a particular disputed preamble phrase for antecedent basis may limit claim
scope because it indicates a reliance on both the preamble and claim body to define the claimed inven-
tion.
(3) When the preamble is essential to understand limitations or terms in the claim body, the pre-
amble limits claim scope.
(4) When the preamble recites additional structure or steps underscored as important by the spe-
cification, the preamble may operate as a claim limitation. [FN18.2]
(5) Clear reliance on the preamble during prosecution to distinguish the claimed invention from the
prior art transforms the preamble into a claim limitation *6-25 because such reliance indicates use of
the preamble to define, in part, the claimed invention. [FN18.3]
(6) A preamble generally is not limiting when the claim body describes a structurally complete in-
vention such that deletion of the preamble phrase does not affect the structure or steps of the claimed
invention.
(7) Preamble language merely extolling benefits or features of the claimed invention does not limit
the claim scope without clear reliance on those benefits or features as patentably significant.
(8) Preambles describing the use of an invention generally do not limit the claims because the pat-
entability of apparatus or composition claims depends on the claimed structure, not on the use or pur-
pose of that structure.
(9) Statements of intended use or asserted benefits in the preamble may, in rare instances, limit ap-
paratus claims, but only if the applicant clearly and unmistakably relied on those uses or benefits to dis-
tinguish prior art.
(10) The preamble is a claim limitation if it recites a central structure or steps, or if necessary to
give life, meaning, and vitality to a claim. [FN18.4]

(11) A preamble is a claim limitation when the body of the claim derives antecedent basis from the
preamble. [FN18.5]
To avoid ambiguity, it is recommended that any limitation that appears in the preamble that is intended to
be a limitation on the subject matter of the claim be included in the body of the claim itself. For example, a
claim directed to a fiber optic wave guide could be as follows:
*6-26 3. An optical wave guide comprising:
(a) a cladding layer formed of fused silica to which a dopant material on at least an elemental
basis has been added, and
(b) a core formed of fused silica to which a dopant material . . . such that the combination of
the core and cladding acts as an optical wave guide.
This claim makes it clear that limitation in the preamble is intended to limit the subject matter of the claim.
Contrarily, if a limitation in the preamble is not intended to limit the scope of the claim, eliminate the limit-
ation. If it is absolutely necessary to recite "nonlimiting" language in the preamble for clarity, then consider use
of language such as "suitable for." [FN19] For example:
1. A structure suitable for use as an optical wave guide, the structure comprising: . . .
[FN11]. Kropa v. Robie, 187 F.2d 150 (C.C.P.A. 1951); Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246
F.3d 1368, 58 U.S.P.Q.2d 1508 (Fed. Cir. 2001); Apple Computer, Inc. v. Articulate Sys., Inc., 234 F.3d 14, 57
U.S.P.Q.2d 1057 (Fed. Cir. 2000). See Anthony R. McFarlane, A Question of Claim Interpretation: When Does
a Preamble Limit the Scope of the Claim?, J. PAT. & TRADEMARK OFF. SOC'Y, Sept. 20, 2003, at 693.
[FN12]. Gen. Elec. Co. v. Nintendo Co., 179 F.3d 1350, 50 U.S.P.Q.2d 1910 (Fed. Cir. 1999); Pitney Bowes v.
Hewlett-Packard Co., 182 F.3d 1298, 51 U.S.P.Q.2d 1161 (Fed. Cir. 1999); Rowe v. Dror, 112 F.3d 473, 42
U.S.P.Q.2d (Fed. Cir. 1997) ("Balloon angioplasty catheter" in preamble is structural limitation due to Jepson
form of claim); In re Paulsen, 30 F.3d 1475, 31 U.S.P.Q.2d 1671 (Fed. Cir. 1994) ("computer" is a necessary
limitation to the claims because it "breathes life and meaning into the claims"); Loctite Corp. v. Ultraseal Ltd.,
781 F.2d 861, 228 U.S.P.Q. 90 (Fed. Cir. 1985); Perkin Elmer Corp. v. Computervision Corp., 221 U.S.P.Q. 669
(Fed. Cir. 1984); Polly-Am. v. GSE Line & Tech., Inc., 383 F.3d 1303 (Fed. Cir. 2004).
[FN13]. Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615, 34 U.S.P.Q.2d 1816 (Fed. Cir.
1995); DeGeorge v. Bernier, 768 F.2d 1318, 226 U.S.P.Q. 758 (Fed. Cir. 1985); Corning Glass Works v. Sum-
itomo Elec. U.S.A., 868 F.2d 1251, 9 U.S.P.Q.2d 1962 (Fed. Cir. 1989).
[FN14]. Id.
[FN15]. Rowe v. Dror, 112 F.3d 473, 42 U.S.P.Q.2d 1550 (Fed. Cir. 1997); Epcon Gas Sys., Inc. v. Bauer Com-
pressors, Inc., 279 F.3d 1022 (Fed. Cir. 2002); see § 6.4.3 regarding Jepson claim format.
[FN16]. Marston v. J.C. Penney Co., 353 F.2d 976, 148 U.S.P.Q. 25 (4th Cir. 1965), cert. denied, 385 U.S. 974
(1966); Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 58 U.S.P.Q.2d 1508 (Fed. Cir.
2001); Apple Computer, Inc. v. Articulate Sys., Inc., 234 F.3d 14, 57 U.S.P.Q.2d 1057 (Fed. Cir. 2000);
Boehringer Ingleheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 65 U.S.P.Q.2d 1961 (Fed. Cir.
2003); Intirtool, Ltd. v. Texar Corp., 369 F.3d 1289 (Fed. Cir. 2004).
[FN17]. Gustausson v. Valenti, Bd. Pat. App. & Inter., No.101, 925 (June 10, 1993). The board concluded that
"hermetically enclosed" should not be narrowly construed as requiring an airtight seal, and a foam block may be

considered to be a "hermetic" enclosure.
[FN18]. M.P.E.P. § 2111.02.
[FN18.1]. Catalina Mktg. Int'l v. Coolsavings.com, 289 F.3d 801 (Fed. Cir. 2002).
[FN18.2]. Poly-Am., LP v. GSE Line & Tech., Inc., 383 F.3d 1303 (Fed. Cir. 2004).
[FN18.3]. Metabolyte Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354 (Fed. Cir. 2004).
[FN18.4]. Poly-Am., LP v. GSE Line & Tech., Inc., 383 F.3d 1303 (Fed. Cir. 2004).
[FN18.5]. Bicon Inc. v. Straumann Co., 441 F.3d 945 (Fed. Cir. 2006).
[FN19]. The author knows of no decision that has held that the language "suitable for" actually avoids limiting
the scope of the claim.
END OF DOCUMENT


Jeffrey G. Sheldon

*6-26 § 6.3.4 Transitions: From Preamble to the Body and from Elements to Subelements
Claims that recite a combination of elements require a transitional phrase between the preamble and the
body of the claim. The term "transition" or "transitional phrase" is used to denote a word or words that introduce
a further recitation of claimed features. Nearly all claims have a transition between the preamble and the re-
mainder of the claim. These transitional phrases denote varying degrees of breadth of the scope of the claim.
[FN20] Some transitions are "open"; others are "closed"; yet others are partially closed. A transition is said to be
"open" if its effect is to say that the recited features must be present, but that other features may also be present.
A transition is said to be "closed" if its effect is to say that the *6-27 recited features must be present, but no oth-
er features can be present.
The following discussion as to the meaning of transitional phrases applies whether the transitional phrase is
being used to go from the preamble to the body of the claim or from an element to a subelement. The discussion
is consistent with the interpretation the Patent Office uses. [FN21]
§ 6.3.4.1 "Comprising" and Equivalents
The transitional phrases "comprising," "which comprises," "including," [FN22] "containing," [FN22.1] and
"characterized by" [FN23] are construed to mean that the named elements are essential but that the claim in-
cludes additional elements that are not specifically recited in the claim. [FN24] These transitional words are
used whenever the prior art permits because they create an "open" (as opposed to a "closed") claim. It is best to
use only "comprising" or its grammatical equivalent because its meaning is well settled. With regard to the
dangers of using "including," see § 6.5.17.
Open claims encompass elements that are not specifically recited in the claim. For example, a claim that
reads, "the combination comprising A + B" also covers the combination "A + B + C + D . . ." Thus, a claim to "a
chair comprising a seat and three legs fastened to the seat" is infringed by a chair that has additional elements
(for example, a back and a fourth leg). [FN24.1] Similarly a claim element "comprising . . . an *6-28 elimination
apparatus" is not limited to only one elimination source, but also covers a product that has two elimination
sources. [FN24.2]
§ 6.3.4.2 "Consisting of"
Closed transitions such as "consisting," "consisting of," and "constituting" are the most restrictive transition-
al words--excluding substantially all unrecited elements from the combination. [FN25] These words are used
only if the prior art necessitates use of a limiting expression, as when the prior art recites the elements of the
claim at issue plus additional elements. In addition, Markush groups must be introduced by closed transitions
(see § 6.4.4 below).

Closed transitions constitute an absolute restriction when used for mechanical combination or process
claims. In a mechanical claim, closed transitions signify that the claim covers only the recited elements and none
other. [FN26] Similarly, process claims use closed transitions to indicate that the process consists of only the re-
cited steps. However, in a composition-of-matter claim, closed claims are infringed by a composition that in-
cludes trace amounts of additional ingredients that are normally present as impurities. [FN27]
"Consisting of" language has also been interpreted to require the presence of the specified elements so that
replacing one of the elements with another that does not achieve all the *6-29 desired functions is not an in-
fringement under the doctrine of equivalents. [FN28]
The use of closed language in an independent claim precludes a subsequent dependent claim from adding
elements to those listed in the closed parent claim.
However, the term "consisting of" does not limit a claim as to aspects unrelated to the invention. [FN28.1]
§ 6.3.4.3 "Consisting Essentially of"
Partially closed transitions such as "consisting essentially of" have a scope between the scope of "compris-
ing" and that of "consisting." Hybrid phrases such as "consisting prevailingly but not essentially of . . ." [FN29]
are also considered partially closed.
In general, partially closed transitions exclude "additional unspecified ingredients that would affect the ba-
sic and novel characteristics of the product defined in the balance of the claim." [FN30] In other words, these
phrases encompass unrecited elements only if these elements are not essential to define the novel and nonobvi-
ous aspects of the invention claimed. However, in Ziegler v. Phillips Petroleum Co., [FN31] the Fifth *6-30 Cir-
cuit held that "consisting essentially of" permitted material additions as long as the ingredients recited in the
claim were present in the infringing composition and those ingredients constituted the "real invention."
Partially closed terminology is used primarily in process and composition-of-matter claims because that ter-
minology allows the claim to exclude prior art that recites the elements of the claim plus additional elements.
For example, if the invention comprises the ingredients A, B, and C and the prior art reveals the ingredients A,
B, C, and D, the invention can be claimed as "consisting of" or "consisting essentially of" A, B, and C. This lan-
guage excludes element D, and does not read on the prior art. However, if ingredient E can be added to the
claimed composition without adverse effects on its purpose, X, the applicant cannot use the language "consisting
of A + B + C," because an infringer could avoid infringement merely by adding the element E. Contrarily, in-
fringement of a claim that uses the partially closed transition "consisting essentially of A + B + C" is not avoided
by adding nonessential elements to "A + B + C."
§ 6.3.4.4 "Composed of" and "Having"
The terms "composed of" [FN32] and "having" [FN32.1] are interpreted in light of the specification to de-
termine whether open or closed claim language is intended. Thus "composed of" has been interpreted to mean
"consisting essentially of" [FN32.2] and "having" has been interpreted to be "at least partially open." [FN32.3]
*6-31 § 6.3.4.5 Nonuse of "Step of" in the Transition
It has been conventional to use the transition "step of" in method claims. One reason to do this was to make
it easier to write dependent claims, by referring to the element in the independent claim as "step of. . . ." There is
a risk, however, that some court may interpret "step of" as the same as "step for" under paragraph six of 35

U.S.C. § 112, thereby unduly limiting the scope of the claim. [FN32.4] There are two techniques to avoid the
problem. First, the specification can include a disclaimer that "step of" does not mean "step for." (See section
7.5.10.3.7 for such a disclaimer.) Second, the claims can be written without the use of the word "step," using in-
stead a synonym such as "act." For example:
1. The method of converting chemical A to chemical B comprising the acts (steps) of:
(a) melting chemical A; and
(b) combining melted chemical A with chemical C.
With this language, it is easy to prepare dependent claims by referring to the "act of" or "step of." For ex-
ample, if the preferred version of the process involves melting chemical A by combining it with boiling water,
then a dependent claim can read as follows:
2. The method of claim 1 wherein the act of (or step of) melting comprises combining chemical A with
boiling water.
*6-32 § 6.3.4.6 Examples of Use of Transitions
The following are examples of claims in which the transitions are italicized. These claims illustrate how the
choice of transition changes the scope of the claims. [FN32.5]
(a) 1. A bicycle seat which comprises
(i) an elastically deformable seat support which comprises springs comprising an elastomer,
(ii) a flexible seat cover which is supported by the seat support, and
(iii) a rigid support to which the seat support is attached and which is spaced apart from the
seat cover.
2. A seat according to claim 1 wherein the seat support consists of springs comprising elastomer.
3. A seat according to claim 1 wherein the seat support comprises springs consisting of elastomer.
4. A seat according to claim 1 wherein the seat support consists of springs consisting of elastomer.
5. A seat according to claim 1 wherein the rigid support consists of a metal.
6. A seat according to claim 5 which consists of the deformable seat support, the seat cover, and the
rigid metal support.
7. A seat according to claim 1 which consists of the deformable seat support, the seat cover, and the
rigid support.
8. A seat according to claim 1 which consists of the deformable seat support, the seat cover, and at
least one rigid support.
The varying scope of these claims is shown by the following three bicycle seats:
*6-33 (i) a bicycle seat wherein all of the springs consist of a metal core surrounded by a jacket of elast-
omer--covered by claims 1, 2, and 5-8.
(ii) a bicycle seat wherein some of the springs consist of the elastomer and other springs consist of a
metal--covered by claims 1, 3, and 5-8.
(iii) a bicycle seat wherein the seat includes two rigid supports, one consisting of a metal and the other
consisting of a polymer--covered by claims 1-5 and 8.
[FN20]. Ex parte Davis, 80 U.S.P.Q. 445 (Pat. Off. Bd. App. 1950).
[FN21]. M.P.E.P. § 2111.03.
[FN22]. In re Certain Slide Fastener Stringers, 216 U.S.P.Q. 907 (I.T.C. 1981).

[FN22.1]. Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369 (Fed. Cir. 2004).
[FN23]. M.P.E.P. § 2111.03.
[FN24]. Medichem v. Rolabo, 353 F.3d 928 (Fed. Cir. 2003); Moleculon Res. Corp. v. CBS, Inc., 793 F.2d
1261, 229 U.S.P.Q. 805 (Fed. Cir. 1986); In re Crish, 393 F.3d 1253 (Fed Cir. 2004).
[FN24.1]. Invitrogen Corp. v. Biocrest Mfg. L.P., 327 F.3d 1364, 66 U.S.P.Q.2d 1631 (Fed. Cir. 2003)
("comprising . . . the . . . steps . . . growing . . . at a temperature of . . . [A to B . . .]" is infringed by a process
that also includes a step of growing outside the claimed temperature range).
[FN24.2]. Scanner Techs. Corp. v. ICOS Vision Sys. Corp. N.V., 365 F.3d 1299 (Fed. Cir. 2004).
[FN25]. Am. Original Corp. v. Jenkins Food Corp., 696 F.2d 1053, 216 U.S.P.Q. 945 (4th Cir. 1982), aff'd, 774
F.2d 459, 227 U.S.P.Q. 299 (Fed. Cir. 1985); Norian Corp. v. Stryker Corp., 363 F.3d 1321 (Fed. Cir. 2005).
[FN26]. In re Certain Slide Fastener Stringers, 216 U.S.P.Q. 907 (I.T.C. 1981).
[FN27]. In re Grasselli, 713 F.2d 731, 218 U.S.P.Q. 769 (Fed. Cir. 1983).
[FN28]. Vehicular Tech. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1084, 54 U.S.P.Q.2d 1841 (Fed. Cir. 2000)
("consisting of two springs" not infringed by a structure with a single spring and a plug stuck in one end of the
spring).
[FN28.1]. Norian Corp. v. Stryker Corp., 363 F.3d 1321 (Fed. Cir. 2004) (a claim directed to "a kit . . . consist-
ing of . . . [certain chemicals] . . ." did not exclude from it a kit that also included a spatula); Conoco, Inc. v. En-
ergy & Envtl., Inc., 460 F.3d 1349 79 U.S.P.Q.2d 1801 (Fed. Cir. 2006).
[FN29]. AK Steel Corp. v. Sollac, 344 F.3d 1234, 68 U.S.P.Q.2d 1280 (Fed. Cir. 2003); Natta, et al. U.S. Patent
No. 3,112,301.
[FN30]. In re Garnero, 412 F.2d 276, 162 U.S.P.Q. 221 (C.C.P.A. 1966); Water Techs. Corp. v. Calco Ltd., 850
F.2d 660, 7 U.S.P.Q. 1097 (Fed. Cir. 1988).
[FN31]. Ziegler v. Phillips Petroleum Co., 483 F.2d 858, 177 U.S.P.Q. 481 (5th Cir. 1973), cert. denied, 414
U.S. 1079, 180 U.S.P.Q. 1 (1973).
[FN32]. AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 57 U.S.P.Q.2d 1776 (Fed. Cir. 2001); M.P.E.P. §
2111.03.
[FN32.1]. Crystal Semiconductor Corp. v. Tritech Microelectronics Int'l, Inc., 246 F.3d 1336, 57 U.S.P.Q.2d
1953 (Fed. Cir. 2001).
[FN32.2]. AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 57 U.S.P.Q.2d 1776 (Fed. Cir. 2001).
[FN32.3]. Crystal Semiconductor Corp. v. Tritech Microelectronics Int'l, Inc., 246 F.3d 1336, 57 U.S.P.Q.2d
1953 (Fed. Cir. 2001).
[FN32.4]. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 381 F.3d 1371 (Fed. Cir. 2004) (the district court
determined that "the method comprises the steps of" implicates 35 U.S.C. § 112, ¶ 6; Federal Circuit reversed

since claiming a step by itself, or even a series of steps, does not implicate section 112, paragraph 6).
[FN32.5]. In re Crish, 393 F.3d 1253 (Fed Cir. 2004).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-33 § 6.3.5 Body of Claim
The body of a claim is written in the form of a narrative sentence that follows the preamble and the transitional
phrases. The body of a claim consists of (1) a recitation of the elements of the invention, and (2) a description of how
these elements structurally, physically, or functionally cooperate with each other to make up the invention.
For example, in the claim for a shaker presented in Exhibit 6-1(a), the body of the claim comprises all that follows
"which comprises." The description of the elements of the claim and the cooperative language is limited to a technical
description without surplus or laudatory statements.
In rare cases, the invention is only a single element. In those cases, the body of the claim merely describes that single
element. For example:
1. A process for treating the surface of a polyethylene article to increase its receptivity to printing ink, the
process comprising the step of: exposing the surface of the article to a saturated solution of sodium dichromate
and concentrated sulfuric acid.
§ 6.3.5.1 Defining the Elements
The elements are either the main structural components of an apparatus, article, or machine; the steps of a process; or
*6-34 the ingredients of a composition of matter. In the claim of Exhibit 6-1(a), the elements of the shaker device consist
of the container, base, legs, and oscillating means.
There are four important things to tell about each element:

1. What is its name?
2. Does it have any distinctive features that distinguish it from other elements within the same class?
3. How does the element cooperate with the other elements of the claim?
4. What is the function of the element?
§ 6.3.5.1.1 Introducing the Elements
When an element is introduced for the first time, it is generally preceded by an indefinite article ("a" or "an"). There
are two exceptions to this rule. First, plural elements can be introduced in the plural form or by a numerical adjective
without any introductory article, as in "containers" or "two containers." Second, means clauses can be introduced without
preceding articles, such as "means for heating."
The exact scope to be given to a means clause is unsettled. The Federal Circuit has held that means clauses are lim-
ited to the corresponding structure, materials, or acts described in the specification and equivalents thereof. [FN33]
However, the Patent Office in determining patentability of a means clause will interpret "means" to include any or all
means for performing the specified functions and will not limit "means" to those taught in the specification and their

equivalents. [FN34] Thus, means clauses are interpreted broadly as to patentability, and it is difficult to obtain allowance
from the Patent Office, and at the same time, they are narrowly interpreted during litigation. This paradoxical state of af-
fairs needs to be resolved.
*6-35 When a previously introduced element is referred to later in the claim, the element is preceded by a definite
article ("the") or its equivalent ("such" or "such as"); for example, "the container" or "the two containers" or "such con-
tainer." The word "said" can be used in place of "the." However, it is recommended that use of "said" be avoided as be-
ing too legalistic. The claims may need to be interpreted by a jury or judge, and it is best to avoid stilted or legalistic lan-
guage.
§ 6.3.5.1.2 Single Clause
For clarity, the description of each element should be presented as a single clause. Each clause within the claim
should be set apart by punctuation, such as commas or semicolons, even if the claim contains only two elements, to assist
in understanding the claims. Semicolons should be used to set off clauses whenever one or more of the clauses contains
internal punctuation. Parentheses and hyphens can be used to set apart clauses, but are ordinarily not necessary. Each ele-
ment of the claim can be labeled as "(a)," "(b)," "(c)," etc., to assist in interpreting the claims.
For claims having multiple elements it is preferred that the claims be punctuated and organized so that sets and sub-
sets of elements are easily recognized. A preferred format is as follows:
1. A machine comprising:
(a) a base comprising:
(i) a top; and

(ii) a bottom;
(b) a support system on the top of the base, the support system comprising:
(i) element 1;
(ii) element 2; and
(iii) element 3; and
(c) a golf ball catcher supported by element 1 of the support system.
*6-36 The claims of Exhibits 6-1, 6-5, 6-9, and 6-11 follow this format.
It is best not to introduce a new element in the middle of a clause that describes another element. In other words, it is
better to recite each element and its subelements in a separate clause. For example, the claim "a container which is con-
nected pivotally to a plurality of parallel legs" is of undesirable form because it recites two elements (the container and
the legs) within a single clause. Similarly, it is improper to write, "a lever having a forked end pivoted on a pin mounted
between the furcations of the forked end." Since the pin is not part of the lever but a separate mechanical element, it is
better to write the claim as:
(a) a lever having a forked end, the forked end comprising spaced-apart furcations; and
(b) a pivot pin mounted between the furcations.
More than one element can be introduced within a single clause when the latter elements are subelements of the main
element claim. Subelements should be introduced by a transition word that suggests that they are a portion of the first
named element, for example, "a container [first element] having [or including, comprising, etc.] a plurality of legs
[second element]."
§ 6.3.5.1.3 Structural Definitions

Each element should be assigned a descriptive name. Usually a variety of names is available. For example, the base
in the claim of Exhibit 6-1(a) could have been called "a support" or "a mounting plate"; the container might have been
designated "a box" or "a holder."
While the patentee can be his own lexicographer, no term may be given a meaning repugnant to its usual and com-
mon meaning. [FN35] Further, if a special meaning is given to a word or *6-37 phrase naming an element, the special
meaning should be defined in the specification, and if possible, the definition should be used in the claim itself. For ex-
ample, if the claims use the term "sol-gel," the specification can include the statement "as used in this description and in
the appended claims, the word 'sol-gel' means a polymeric solution that condenses to form a gel structure."
Names for elements must be chosen carefully because the name selected for an element can affect the breadth of the
claim. Broad claims can be drafted by using a more generic name for the article. If generic names are not available, a
name that describes the function or purpose of the element, such as "a rotary member" or "a holder," can also be used;
similarly, "means" clauses are also often used to describe an element broadly, for example, "means for fastening."
When naming elements of the invention that are similar (but not identical) in structure or function, an adjective can
be used to distinguish between the elements, such as "holding member" and "support member" or "a plate having first
and second opposed sides." When the elements are identical, it is better to use designations such as "first" or "second," as
in "a first rotating member" or "a plate having first and second opposed sides." An element can also be distinguished by
associating the element with another element, for example, "a base rotating member" or "a connector rotating member."
Once a name is assigned to a particular element, the same name should be consistently used to identify the same element;
do not give the same element different names in successive claims, unless to intentionally change the breadth of the
claim. Similarly, once a distinguishing adjective is used to identity a particular element, the same adjective should be
consistently used to describe that element.
The most difficult task, particularly for patent applications for complicated machines, is to name the various ele-
ments. To find a name, it is best to start with the inventor, because usually the inventor has a name for each element.
*6-38 However, that route may not be satisfactory because the inventor may use jargon, which is not adequate for a pat-
ent application. A thesaurus and a dictionary are indispensable tools for the practitioner and should be frequently referred
to when preparing the claims. A glossary of terms commonly used to name elements, as well as functional definitions for
many elements, is provided in chapter 7, Exhibit 7-1.
Avoid names that are inaccurate or antithetical to usual terminology. Names that are unacceptable include "doodad,"
"thingamajig," "gadget," and "thing."
Although it is proper to refer to elements as "first," "second," "third," etc., it is recommended, wherever possible, to
use more descriptive adjectives where available for claim clarity. For example, use of "left" and "right," or "upper" and
"lower" is more descriptive than "first" and "second." However, if use of a descriptive adjective unduly narrows the
claim, then it is better to use "first" and "second," that is, it is better to sacrifice a little clarity for breadth of claim cover-
age, at least in the broadest claim in the application.
§ 6.3.5.1.4 Functional Definitions
Functional language can also be used to define an element as opposed to merely describing the function of an already
defined element. Functional language defines elements in terms of what the element accomplishes rather than in terms of
what it is. Under 35 U.S.C. § 112, an element in a combination claim may be expressed as a means or step for performing
a specified function without the recital of structure, material, or acts to support the function. [FN36] Although functional
language is extremely broad, it is statutorily limited to encompass only the structure, material, or process steps described

in the specification and equivalent structures. [FN37] *6-39 Functional language can only be used in claims that recite a
combination of elements. [FN38]
§ 6.3.5.1.4.1 "Means For" and "Step For" Clauses
The use of "means for" and "step for" language in claims is explicitly authorized by 35 U.S.C. § 112. The exact ter-
minology provided by the statute, "means or step for performing a specified function," should be used, as in "means for
reciprocating the container." Language that is substantially similar to this language is generally accepted, for example,
"element for . . ." or "a mechanism for oscillating" or "a mechanical device for oscillating." However, any language that
is not sanctioned by the statute runs the risk of being rejected as overly broad. For example, "apparatus which shakes a
container" may be rejected as a narrative statement of the function of an undefined element while "apparatus for shaking
the container" would be acceptable.
Paragraph 6 of section 112 applies to method and process claim elements when steps plus function without an act are
present. Thus "step" refers to the generic description of elements of a process, implemented by "acts." [FN39]
A short and distinctive name should be used to refer to a previously introduced means clause. For example, the
means for reciprocating the container can be referred to later in the claim as "the reciprocating means" or "the container
reciprocating means" or "the means for reciprocating the container." It is better not to refer to means clauses as the "first
means" or "second means," etc., because it makes the claim difficult to follow.
Often an adjective is used before the word "means" to make it easier to write dependent claims. For example, instead
of using the language "means for reciprocating a container," *6-40 an acceptable term is "reciprocating means for recip-
rocating a container." The latter language allows a dependent claim to refer to the means clause by shorthand as the "re-
ciprocating means," rather than the more awkward language "means for reciprocating a container."
The "means for" language must be followed by reciting the function (step or operation) that the means performs,
such as "means for oscillating the container." The function performed by the means must be clear and definite; indefinite
language will be rejected. For example, a claim to a "wing means " was held improper because the function performed by
the "wing means" was unclear. [FN40]
A means clause can include within itself a secondary or subelement means clause. It is permissible to claim "means
for [performing function A], including means for [performing function B]," if B is a subelement of A, as in:
• Oscillating means for causing oscillations to be produced in the polyphase circuit having a frequency de-
pendent upon the tuning in the polyphase circuit, the oscillating means including means for producing the mag-
netic field between said anodes and cathode. [FN41]
Literal infringement of a means-plus-function claim requires that a structure not identified in the specification be
"equivalent" as that term is used in paragraph 6 of section 112. The Federal Circuit has held that such a structure must
have been in existence as of the filing date. However, subsequently developed structures can be "equivalent" under the
doctrine of equivalents. [FN42]
*6-41 There is a presumption that an element defined in terms of "means" is a "means for" clause under paragraph 6
of 35 U.S.C. § 112, [FN43] and that a clause without the "means for" language is not interpreted as a "means plus func-
tion" clause. [FN44] However, clauses without "means for" language have been treated as paragraph 6 of section 112
clauses where there was no structure identified in the clause, [FN45] and clauses with "means for" language have not
been interpreted as a means clause where the clause is predominantly structural. [FN46] However, to add further com-
plexity to the matter, the Federal Circuit has also held that a structural term in the *6-42 functional phrase does not al-
ways preclude application of section 112, paragraph 6. [FN47]

A factor in determining whether a claim limitation qualifies as a "step plus function" limitation is whether the meth-
od claim is "parallel" to, that is, has limitations similar to, an apparatus claim having a "means plus function" clause.
However, the absence of words in a claim indicating "step plus function" form, such as "step for," indicates that the claim
is not to be interpreted according to section 112. [FN47.1] A method claim limitation that lacks the term "step for" can-
not be construed as a step-plus-function limitation unless there is a showing that the limitation recites no act as distin-
guished from reciting a function. The difference between a function and an act is that a function says what an element ac-
complishes while an act corresponds to how the function is accomplished. [FN47.2]
A "means for" clause is construed to cover the corresponding structure and material described in the specification
and equivalents thereof. A "step for" clause is construed to cover the corresponding acts described in the specification
and *6-43 equivalents thereof. [FN48] Mean-plus-function language can include a structure described in the prior art sec-
tion of a patent. [FN49] A means-plus function claim element is interpreted to include disclosed structures that perform
the function, only if those structures are clearly linked or associated with the claim element. [FN49.1]
The Patent Office has established guidelines for examining "means for" clauses and determining whether a clause
should be evaluated under paragraph 6 of section 112. [FN50] Under these guidelines, a claim limitation is interpreted to
invoke paragraph 6 of section 112 if it meets the following three-prong analysis:
(1) the claim limitation uses the phrase "means for" or "step for";
(2) the "means for" or "step for" is modified by functional language; and
(3) the phrase "means for" or "step for" is not modified by structure, material, or acts for achieving the spe-
cified function.
With respect to the first prong of this analysis, a claim element that does not include the phrase "means for" or "step for"
is not considered to invoke section 112, paragraph 6. If an applicant wishes to have the claim limitation treated under
paragraph 6 of section 112, the applicant must either (1) amend the claim to include the phrase "means for" or "step for"
or (2) show that even though the phrase "means for" or "step for" is not used, the claim limitation is written *6-44 as a
function to be performed and does not provide any structure, material, or acts which would preclude application of para-
graph 6 of section 112.
A single structural element that performs more than one function can be recited in more than one means clause, each
means clause being directed to a distinct function of the element. For example, when a single element performs separate
functions (for example, a single element [a] advances a cutter and [b] limits the rate of travel of the cutter), the same ele-
ment can be claimed with two separate means clauses. [FN51] The element can be claimed as "means for advancing a
cutter" and as "means for limiting the rate of travel of the cutter."
This situation commonly occurs when a single motor is used to synchronously drive more than one element. Thus,
the rotating means and the reciprocating means of the claim of Exhibit 6-1(b) can be recited by separate means clauses
even if they are driven by the same motor and shaft.
The means clauses (or means-plus-function clauses) are to be interpreted narrowly by the Patent Office so that the
"means" clause encompasses only the structure disclosed in the specification and equivalents thereof. [FN52] Although
the Patent Office was reluctant to change the established practice since In re Lundberg [FN53] and In re Arbeit, [FN54]
the Federal Circuit requires that the narrow interpretation of the means clauses be used by the Patent Office. [FN55] Now
both the courts and the Patent Office must interpret "means" clauses limiting them to the structure described in the patent
specification and equivalents thereto.
*6-45 During prosecution, the examiner will be limited to structures disclosed in the application, thus making the in-
vention less obvious. But, because of the narrow interpretation, the scope of the protection granted is also limited to the
structure disclosed in the specification and equivalent thereto. Therefore, when using "means" clauses, ensure that broad

description of the structure incorporated into the "means" clause is given in the application. This can be accomplished by
giving an expansive definition of what structure is included. For example, the specification may describe "a fastening
means" to include threaded fasteners such as nuts and bolts, hook and pile fasteners, adhesives and epoxies, hooks, mag-
nets, rivets, soldering, welding, surface tension, and nailing.
Another technique for obtaining broad coverage is to avoid using means clauses, but instead, use generic structural
elements in claims. Examples of broadening a claim through use of generic structural language rather than means clauses
are the following:
Means Clause Generic Language
means for fastening a fastener
means for supporting a support
means for catalyzing a catalyst
means for heating a heater
To avoid having a court or the PTO improperly interpret a claim element under paragraph 6 of section 112 where
that is not the intent of the applicant, language can be added to the closing to prevent this from occurring. See section
7.5.10.3.7 for such language.
§ 6.3.5.1.4.2 Functional Language
The distinction between means clauses and other forms of functional expressions is primarily a distinction of form
and not substance. While a means clause should use the "means *6-46 for" language, functional language can be presen-
ted in a variety of forms, such as:
1. providing [some operation]
2. creating [a physical property]
3. such that [the functional relationship is achieved]
4. whereby [an effect happens]
5. and thus [the desired end is achieved]
6. so that [a desired end results].
Functional statements should be placed either at the end of the description of the particular element after everything
necessary to support the functional clause has been set out, or at the end of the claim when all the elements of the claim
are necessary to support the functional expression. In general, a claim is easier to follow when the function of an element
is recited immediately after the element itself. Also, a claim is less likely to be considered overly broad when the func-
tions are set out one at a time rather than at the end of the claim.
§ 6.3.5.1.4.3 "Whereby" Clauses
"Whereby" and "thereby" clauses are proper only when they describe a function or result that necessarily follows
from a previously recited structure. [FN56] Unlike a means clause, the "whereby" clause has been judicially construed
not to define any structure. [FN57] Thus a "whereby" clause in a means plus function clause merely states the result of

the limitations in the means clause, and adds nothing of substance to the claim. [FN57.1]
Accordingly, a "whereby" clause must be preceded by some recitation of structure. Such clauses should only be
*6-47 used when the equivalent phrase "it follows from the foregoing that" can be used to replace the "whereby" clause.
For example, a proper "whereby" clause used in a shaking apparatus claim reads:
1. A container for articles, the container having apertured walls, the apertures of which are smaller in size
than the articles to be shaken, whereby the articles are retained in the container as they are shaken;
The function of the container (retaining the articles) necessarily follows from the recited structure. In contrast, "an
apertured container for the articles whereby the articles are retained in the container as they are shaken" is improper be-
cause it attempts to claim a desired result--retaining the articles in the apertured container--without reciting the structure
performing the function.
Whereby clauses can also be used in method claims, for example:

1. A method for measuring the electrical resistance of an unknown resistor R , the method comprising the
x
steps of:
. . . and varying the resistance of at least one of said known resistors so that the voltage detected across
terminals (A) and (B) falls to zero, whereby the resistance of the unknown resistor R is determined from
x
the equation:
R = R • R
x 1 2
-------
R
3
Whereby clauses can also be used to introduce the products formed from a process step; for example, "reacting A
and B under condition X, whereby the product C is formed."
*6-48 "Whereby" clauses should not be used to distinguish over the prior art. The Federal Circuit has held that a
"whereby" clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance
of the claim, and adds no weight in determining infringement. [FN58]
Stated another way, whereby clauses are given weight if they further define recited structure, [FN59] but they are not
given weight if they merely recite a necessary result achieved by claimed structure. [FN60] Another situation in which a
whereby clause is given weight is where it states a condition that is material to patentability. [FN60.1]
§ 6.3.5.2 Order of the Elements
The elements within the claim should be presented in a logical arrangement to make the claim easy to understand.
The two most common logical arrangements are the "functional" and the "structural" arrangements.
In the functional arrangement, elements are ordered to reflect their degree of "closeness" to the article or articles
upon which the invention operates. The shaker apparatus claim in Exhibit 6-1(a) is ordered in a functional arrangement
with the first element recited being the "container" that contacts the articles to be shaken. The claim then proceeds to de-
scribe the remaining elements in the order in which they contact the container.
A structural arrangement for a claim first recites the base (for mechanical inventions) or the source of power (for
electrical circuits), then recites the remaining elements, building *6-49 from the base. For example, the shaker apparatus

claim in Exhibit 6-1(a) can read:

1. Apparatus for shaking articles, the apparatus comprising:
(a) a base;
(b) a plurality of parallel legs having opposed ends, one end of each leg being connected pivotally to the
base;
(c) a container for the articles connected pivotally to the other ends of the legs, so that the legs support
the container for oscillating movement with respect to the base; and
(d) means for oscillating the container on the legs to shake the articles.
Structural arrangements are often preferred for motorized mechanical inventions and electrical circuits where it is
easier to describe the device starting from the motor, input power source, or output signal.
When describing elements where a large number of elements act simultaneously, an effective claim drafting proced-
ure is to start with any element that is in the proper functional or structural sequence, then describe the element or ele-
ments that act simultaneously, followed by the remaining elements in functional or structural order.
Recitation of the placement or connection of the first-named element is not needed. Thus the first-named element of
a claim is preferably an element having an easily described relationship with the other elements of the claim. For ex-
ample, the first-named element can be a "housing" (the other claim elements are "housed" in the housing), or a "base"
(the other claim elements are "supported" by the base).
Sometimes it is not possible to logically explain the cooperation of a new element with the other elements of the
claim when the new element is first introduced. It is possible to overcome this problem by first introducing the element
*6-50 in the claim, and later referring back to the earlier named element when describing its relationship with a later
named element. For example, two elements may cooperate with a third element. It would not be possible to describe the
cooperation of the three elements until all three elements had been introduced.
§ 6.3.5.3 Cooperation
The "cooperation" between elements should be described by specifying how the elements interact with each other to
form an operative device or process. Although there is no express statutory requirement for statements of cooperation,
[FN61] the statutory class of "machine" has been judicially construed to require that the claim recite an operative com-
bination of elements--not a mere aggregation of elements "like so many parts lying in a box. . . ." [FN62]
As a general rule, it is better to state too much connection and cooperation between elements (if the claim is not un-
duly narrowed) rather than chance rejection on grounds that the claim is drawn on a mere catalog of elements. [FN63]
For example, the following claim is objectionable as being merely a catalog of elements:
1. A machine for shaking articles, which comprises: a container, a base, a plurality of legs, and means for
isolating the container.
Although the claim contains a proper list of elements, it is defective because it fails to tie the elements together to
define a complete and operable combination.
A fine line distinguishes patentable combinations of elements from unpatentable aggregations of elements. For ex-
ample, a washing machine associated with a dial telephone is an *6-51 unpatentable aggregation because there is no actu-
al cooperation between the elements recited. On the other hand, a claim that reads: "An improved carburetor in combina-
tion with a gasoline engine" is a patentable combination because the carburetor cooperates with the engine. One judge
analogized an unpatentable aggregation to a track team and a patentable combination to a football team: [FN64]
[In the football team] one passes, one receives, another blocks, another runs, and still others hold the line. Elev-

en men are doing different things, each in his own way, and not always simultaneously; yet they are working toward
a common end, to advance the ball; and they co-act as a unit. I think of a track team as an aggregation; one runs, an-
other hurdles, another jumps, another throws. They all work for a common general good, to amass points for their
alma mater, but there is lacking the vital spark of cooperation or coordination. They work, not as one unit but as sev-
eral.
Recent cases hold that a claim should not be rejected merely because it recites an aggregation of elements. In Ex
parte Nolden, [FN65] the Patent Office Board of Appeals held that there is nothing about an aggregation claim per se that
requires rejection under the Patent Act. The necessary cooperation need not be a "direct mechanical interaction"; the ele-
ments can function independently "so long as the over-all result is patentable"--that is, is novel and nonobvious. [FN66]
Thus, a claim to a "combination" of a fireplace, damper, and novel means to indicate when the damper was closed was
upheld even though there was no direct cooperation between the fireplace and the invention. [FN67]
*6-52 Also, a claim is not aggregative merely because its elements do not function simultaneously. For example, a
typewriter is not an aggregation even though the keys work separately. [FN68] Further, it is not necessary to recite any
cooperation if elements do not actually cooperate with one another. Thus, it is not necessary to recite the cooperation
between the elements of a kit of unassembled parts. [FN69]
A useful test to determine if a claim adequately includes the cooperation between elements is to attempt to diagram
the claimed invention. For a mechanical claim, it should be possible to diagram the structure of the claimed invention, if
not the actual structural configuration of the invention--at least the functional relationship between the elements. For a
method claim, it should be possible to draw a flow chart from the claim language. If this is not possible, the claim may be
indefinite or only refer to a collection of elements.
Exhibit 6-2 shows schematics of proper and improper forms of cooperation. The elements of Exhibit 6-2(a) show
proper cooperation because each element is related to some other element. On the other hand, the cooperation between
the elements of Exhibit 6-2(b) is improper because elements D and E are left dangling with no apparent connection to the
other elements of the combination. One common analogy is to visualize the elements as islands and portions of elements
or subelements as peninsulas. Statements of cooperation form the bridges connecting the islands or the peninsulas to each
other.
Precision in choice of language in claims is important, particularly with regard to the relationship between various
elements. When choosing the words to describe the relationship between elements, it is recommended that frequent use
be made of the dictionary to make certain that the correct term is used and that it is sufficiently broad to cover all pat-
entable *6-53 and technically feasible versions of the invention. Consider, for example, the following words, all of which
have similar meanings, but which could very well be interpreted to differ in the scope of claim coverage that each
provides:
• proximate
• adjacent to
• contiguous
• adjoining
• overlapping
• near
• connected to
• secured to.
Exhibit 7-1 provides a glossary of terms, including terms of cooperation.

Cooperation may be expressed in either of three forms:
(1) structural cooperation,

(2) functional cooperation, and
(3) by relating the elements in terms of their order.
§ 6.3.5.3.1 Structural Cooperation
Structural cooperation is defined by stating the physical or mechanical connection between the elements. The physic-
al interaction of elements may be described by reciting:
1. The dynamic or static mechanical linkage between elements. For example, the cooperation between the
legs and base in the shaker apparatus claim is stated as "a plurality of parallel legs, each of which is connected
pivotally at one end of the base. . . ." Language such as "fixed to" or "secured to" expresses forms of static link-
age.
2. The relative positions of two or more elements, such as "fixed above" or "adjacent to";
*6-54 3. A third element that interfaces between two previously introduced elements, for example, "arm
connecting the support member to the rotating wheel."
Means clauses can either explicitly or implicitly define the connection between two elements. For example, the state-
ment "means for oscillating the container" implicitly requires some part of the means described to engage the container
so that the container can oscillate. [FN70] A structural connection can also be explicitly stated, as in "means engaging the
container for oscillating. . . ."
Statements of structural connection offer two advantages. First, they are relatively easy to draft. Secondly, the struc-
tural connection can be broadly defined when the precise form of structural connection is not essential to the patentabil-
ity of the invention. For example, phrases like "connected to" or "mounted on" are much broader than "fixed to" or
"bolted to."
Other examples of the structural connection statements include:

• A turntable on which the barrel is mounted;
• A rotary cam attached to one end of said shaft;
• A cam follower engaging the cam . . .,
• A capacitor electrically connected to the emitter of said transistor . . .; and
• A worm gear enmeshed with the drive gear.
Structural statements can also be used to relate the ingredients described in a composition-of-matter claim, for ex-
ample:
• Nickel in the presence of a catalyst
• Nickel mixed with copper
• Nickel alloyed with iron
• Nickel containing iron impurities
*6-55 § 6.3.5.3.2 Functional Cooperation
The cooperation between elements can also be expressed by describing how the element functions within the operat-
ive framework of the whole invention. [FN71] For example, in the shaker apparatus claim of Exhibit 6-1(a), the state-
ment that the legs are pivotally mounted "to support the container for oscillating movement" is a statement that expresses
the function of the pivoting mounts. Other functional statements in Exhibit 6-1(a) state the function of the container, "for
the articles," and the function of the oscillating means, "to shake the articles." Functional statements can be introduced

by expressions such as "so that," "for," and "in order to."
Statements of functional cooperation can be used in addition to statements of structural cooperation to make the
claim easier to understand. For example:
1. A turntable [element A] is mounted [structural connection] for rotation therewith [function];
2. Means for reciprocating the strand guide so that it moves [in a stated manner].
When there is no structural relationship between two elements, but purely a functional relationship, the elements can
be related merely by reciting that functional relationship. For example, a radio transmitter and receiver can cooperate re-
gardless of their relative locations--thus, there is no precise structural relationship between those elements. In that situ-
ation, cooperation is expressed solely in functional language. An element can also be recited by a generic name that im-
plicitly states its function; for example, the function of a load-bearing member that is called "a support" is implicit.
*6-56 Functional statements can be used for composition-of-matter claims. Such claims use functional statements
only to define some special functional interaction between the ingredients of the composition, for example, "addition of
sodium to act as a fluxing agent in the glass composition." Similarly, the function of a particular step or operation in a
process claim can be expressed as "heating the glass composition to form a molten liquid."
§ 6.3.5.3.3 Order of Steps
A claim that recites a sequence of operations, such as a process claim, should recite the order of the steps to define
the cooperation between each step, for example, "after the drying step" or "simultaneously with the mixing step." If the
order of steps does not matter, it is safest to explicitly say so in the claim, and to even further avoid ambiguity, include
dependent claims where the steps are expressed in different orders. [FN71.1]
§ 6.3.5.4 Claim Format
The claim should be formatted so that each element described in the claim is set apart, making it easier to understand
the structure of the claim. Either of several formats can be used: the single paragraph form, the subparagraph form, or the
tabular form. [FN72] In the single paragraph form, the elements are set apart by commas. This form is preferred for
simple claims with a small number of elements, such as a five-line claim with two or three elements.
The subparagraph or tabular claim--as used in the claim of Exhibit 6-1(a)-- is generally preferred because that form
makes a complex claim easier to follow for both the reader and the novice claim drafter. The first word of each element
*6-57 or clause of the claim is indented and additional indentations within clauses are used to further segregate subele-
ments. [FN73] A colon typically is inserted after the transitional phrase and semicolons can be used to separate elements.
In the outline format, identifying characters, such as (a), (b), and (c), are used to set out each element or clause. This
form adds little to claim comprehension when the subparagraph form is used. However, the letters help in referring back
to elements of previous claims, or in discussing the claim with an examiner in the Patent Office. For example, a depend-
ent claim might refer to performing an added step "after step (c)" of its parent claim.
§ 6.3.5.5 Reference Numbers
Reference numerals that identify elements in the specification and drawings can be used within the claim to refer to
that element. [FN74] The reference numerals should be enclosed within parentheses to avoid confusion with other num-
bers or characters. [FN75]
According to the Manual of Patent Examining Procedure (M.P.E.P.), the scope of the claim is not affected by the in-

clusion of reference numerals. [FN76] However, reference numerals are rarely used by practitioners in the United States
because of the fear that a court may limit the scope of the claim by holding that the claim encompasses only those em-
bodiments that are equivalent to the specific embodiment referred to by the reference numeral.
*6-58 § 6.3.5.6 Method Steps
A method claim recites a series of steps, usually recited in the verb gerund or "ing" form. This is an active form of a
verb; passive forms are not used. For example, "heating" is used, not "is heated."
The verb usually acts on something, such as an apparatus. Also the function or purpose for performing the step is de-
scribed.
There need not be any physical relationship between the steps of the method claim. For example, the steps of "heat-
ing" and "cooling" do not need to be done in the same apparatus or have any physical relationship to each other.
Method steps usually have a sequential relationship, where one step occurs before another or two steps occur simul-
taneously.
It is best to minimize structure limitations in the steps, at least in the broadest claim. Use of terms such as "reaction
zone" rather than "reaction chamber" and "heating area" rather than "heater" are preferred in method claims.
§ 6.3.5.7 Use of "First" and "Second"
Use of the terms "first" and "second" is a common patent law convention used to distinguish between repeating ele-
ments or limitations. Such language does not in of itself impose a spatial or temporal limitation into the claims. [FN76.1]
[FN33]. In re Bond, 910 F.2d 831, 15 U.S.P.Q.2d 1566 (Fed. Cir. 1990).
[FN34]. In re Bowles, 23 U.S.P.Q.2d 1015 (Bd. Pat. App. & Inter. 1991).
[FN35]. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 221 U.S.P.Q. 1025 (Fed. Cir. 1984).
[FN36]. 35 U.S.C. § 112.
[FN37]. Id.
[FN38]. Id.
[FN39]. O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 42 U.S.P.Q.2d 1777 (Fed. Cir. 1997); Serrano v. Telular Corp., 111
F.3d 1578, U.S.P.Q.2d 1538 (Fed. Cir. 1997).
[FN40]. Ex parte Klumb, 159 U.S.P.Q. 694 (Pat. Off. Bd. App. 1967).
[FN41]. U.S. Patent No. 1,971,193.
[FN42]. Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 50 U.S.P.Q.2d 1161 (Fed. Cir. 1999).
[FN43]. Unidynamics Corp. v. Automatic Prods. Int'l Ltd., 157 F.3d 1311, 48 U.S.P.Q.2d 1099 (Fed. Cir. 1998).
[FN44]. Greenberg v. Ethicon Endo-Surgery, 91 F.3d 1580, 39 U.S.P.Q.2d 1783 (Fed. Cir. 1996) ("detent mechanism" is
not "means plus function" clause); Personalized Media Commc'ns, L.L.C. v. ITC, 178 F.3d 1312 (Fed. Cir. 1999)

(unpublished) ("digital detector for . . ." does not invoke 35 U.S.C. § 112, ¶ 6"); Linear Tech. Corp. v. Impala Linear
Corp., 379 F.3d 1311, 72 U.S.P.Q.2d 1065 (Fed. Cir. 2004) ("circuit" has sufficient structure so it is not interpreted as a
means clause); Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004) (even though "connect-
or assembly" covers a broad class of structures, it is not a means plus function clause).
[FN45]. Mas-Hamilton Group, Inc. v. LaGard, Inc., 156 F.3d 1206, 48 U.S.P.Q.2d 1010 (Fed. Cir. 1998) ("lever moving
element" was properly construed as a means-plus-function element). Toro Co. v. Deere & Co., 355 F.3d 1313 (Fed. Cir.
2004) ("control mechanism" is subject to section 112, paragraph 6 even though other claims use the terminology "control
means").
[FN46]. Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 50 U.S.P.Q.2d 1429 (Fed. Cir. 1999) ("positioning means"
not means clause because of detailed recitation of structure); B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 43
U.S.P.Q.2d 1896 (Fed. Cir. 1997); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 44 U.S.P.Q.2d 1103 (Fed. Cir.
1997); Cole v. Kimberly-Clark Corp., 102 F.3d 524, 41 U.S.P.Q.2d 1001 (Fed. Cir. 1996) ("perforation means" not
"means plus function" element under § 112, ¶ 6, where structural details included in the claim); York Prods., Inc. v. Cent.
Tractor Farm & Family Ctr., 99 F.3d 1568, 40 U.S.P.Q.2d 1619 (Fed. Cir. 1996) ("means formed on the . . . and forming
load locks . . ." not a "means plus function" clause under § 112, ¶ 6); Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d
1360, U.S.P.Q.2d 1449 (Fed Cir. 2000) ("baffle means" not a means-plus-function claim, because the word "baffle" im-
parts structure); Phillips v. AWH Corp., 363 F.3d 1207 (Fed. Cir. 2005) ("means . . . for increasing . . . bearing capacity
comprising internal steel baffles . . ." not means clause because steel baffles refer to particular physical apparatus); see
William F. Lee, et al., Means Plus and Step Plus Function Claims: Do We Only Know Them When We See Them? J.
PAT. & TRADEMARK OFF. SOC'Y, Apr. 1998, at 251.
[FN47]. Unidynamics Corp. v. Automatic Prods. Int'l Ltd., 157 F.3d 1311, 48 U.S.P.Q.2d 1099 (Fed. Cir. 1998) ("spring
means" "tending to keep the door closed" is within § 112, ¶ 6).
[FN47.1]. Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 61 U.S.P.Q.2d 1470 (Fed. Cir. 2002).
[FN47.2]. Masco Corp. v. United States, 303 F.3d 1316; 64 U.S.P.Q.2d 1182 (Fed. Cir. 2002) ("step of . . . transmitting a
force . . ." not a step-plus-function limitation).
[FN48]. 35 U.S.C. § 112, ¶ 6.
[FN49]. IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 54 U.S.P.Q.2d 1129 (Fed. Cir. 2000).
[FN49.1]. Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 58 U.S.P.Q.2d 1607 (Fed. Cir. 2001)
("Means for connecting" does not include straight wire, hooks, or sutures that are capable of connecting when these ele-
ments were not linked or associated with the claimed function and helical windings were).
[FN50]. Supplemental Examination Guidelines for Determining the Applicability of 35 U.S.C. § 112, ¶ 6, 65 Fed. Reg.
38,510.
[FN51]. Reed v. Edwards, 101 F.2d 550, 40 U.S.P.Q. 620 (C.C.P.A. 1939).
[FN52]. In re Iwahashi, 888 F.2d 1370, 12 U.S.P.Q.2d 1908 (Fed. Cir. 1989).
[FN53]. In re Lindberg, 244 F.2d 543, 113 U.S.P.Q. 530 (C.C.P.A. 1957).
[FN54]. In re Arbeit, 206 F.2d 947, 99 U.S.P.Q. 123 (C.C.P.A. 1953).

[FN55]. In re Donaldson Co., 16 F.3d 1189, 29 U.S.P.Q.2d 1845 (Fed. Cir. 1994) (twelve judges of the Federal Circuit
expressly overruled any portion of Lundberg or Arbeit that may have been inconsistent).
[FN56]. In re Certain Pers. Computers, 224 U.S.P.Q. 270 (I.T.C. 1970).
[FN57]. In re Mason, 244 F.2d 733, 114 U.S.P.Q. 127 (C.C.P.A. 1957).
[FN57.1]. Lockheed Martin Corp. v. Space Sys./Loral, Inc. 249 F.3d 1314 (Fed. Cir. 2001); Netword, LLC v. Centraal
Corp., 242 F.3d 1347 (Fed. Cir. 2001).
[FN58]. Tex. Instruments, Inc. v. United States Int'l Trade Comm'n, 26 U.S.P.Q.2d 1018 (Fed. Cir. 1993).
[FN59]. Rajchman v. Herbert & Simpson, 312 F.2d 926, 136 U.S.P.Q. 465 (C.C.P.A. 1963).
[FN60]. In re Certain Pers. Computers, 224 U.S.P.Q. 270 (U.S. Int'l Trade Comm'n 1984).
[FN60.1]. Hoffer v. Microsoft Corp., 405 F.3d 1326 (Fed. Cir. 2005).
[FN61]. Ex parte Adams & Ferrari, 177 U.S.P.Q. 21 (Pat. Off. Bd. App. 1973).
[FN62]. Id.
[FN63]. M.P.E.P. § 2173.05(k).
[FN64]. Skinner Bros. Belting Co. v. Oil Well Improvements Co., 54 F.2d 896, 12 U.S.P.Q. 61 (10th Cir. 1931).
[FN65]. Ex parte Nolden, 149 U.S.P.Q. 378 (Pat. Off. Bd. App. 1965).
[FN66]. See In re Gustafson, 331 F.2d 905, 141 U.S.P.Q. 585 (C.C.P.A. 1964); Ancol Co. v. Uniroyal, Inc., 448 F.2d
872, 169 U.S.P.Q. 759 (2d Cir. 1971).
[FN67]. Ex parte Adams & Ferrari, 177 U.S.P.Q. 21 (Pat. Off. Bd. App. 1973).
[FN68]. M.P.E.P. § 2173.05(k).
[FN69]. In re Venezia, 530 F.2d 956, 189 U.S.P.Q. 149 (C.C.P.A. 1976).
[FN70]. 35 U.S.C. § 112.
[FN71]. See In re Swinehart, 439 F.2d 210, 169 U.S.P.Q. 226 (C.C.P.A. 1971).
[FN71.1]. See Altris, Inc. v. Symantec Corp., 318 F.3d 1363, 65 U.S.P.Q.2d 1865 (Fed. Cir. 2003) (order of steps a main
issue on appeal).
[FN72]. See M.P.E.P. § 608.01(m).
[FN73]. Id.
[FN74]. Id.
[FN75]. Id.

[FN76]. M.P.E.P. § 608.01(m).
[FN76.1]. 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365 (Fed. Cir. 2003).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-58 § 6.3.6 Arranging and Numbering the Claims
If there is only one claim, is not numbered. If there are multiple claims, they are numbered in sequence.
Utility patent applications almost always contain more than a single claim. The M.P.E.P. suggests a pre-
ferred ordering and numbering scheme that facilitates classification and *6-59 examination of the application.
Claims should be arranged in the most logical order proceeding from the broadest claim to the narrowest claim.
[FN77] An application that "slips in" an unusually broad claim towards the end of a large number of claims (for
example, as claim 18 out of 19 claims) may be rejected.
For example, a logical arrangement for a set of claims would read as follows:
What is claimed is:

1. A pencil having . . . [broadest claim]
2. A pencil as recited in claim 1, wherein . . . [more detail]
3. A pencil comprising . . . [the most detailed combination acceptable].
When separate species are claimed, the claims of like species should be grouped together, and claims of sep-
arate species should be separated. [FN78] For example, product and process claims should be separately
grouped. [FN79] However, that form of grouping may not be possible when the claims of several species origin-
ate from a single, broad generic claim.
The claims are also subject to strict numbering requirements. When several claims are submitted, the claims
must be numbered consecutively with Arabic numerals. [FN80] When the application contains a single claim,
such as in design and plant patents, it is not necessary to number the claim.
To facilitate examination, the number attached to each claim in the original application is preserved
throughout prosecution, even if claims are canceled or added. [FN81] Claims are not renumbered until the ap-
plication is ready to be issued. [FN82]
[FN77]. M.P.E.P. § 608.01(m).
[FN78]. Id.
[FN79]. Id.
[FN80]. 37 C.F.R. § 1.75(f).
[FN81]. 37 C.F.R. § 1.126.

[FN82]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

*6-60 § 6.4 Types of Claims
There are two basic types of claims: independent claims and dependent claims (including multiple depend-
ent claims). An independent claim stands alone and includes only the limitations recited in the claim itself; it is
not dependent upon any other claim to make it complete. A dependent claim, on the other hand, adds limitations
to some other claim incorporated into the dependent claim. Multiple dependent claims are dependent claims that
incorporate by reference any one of a number of claims. [FN83]
Specialized forms of claims, such as the Jepson claim, claims containing Markush language, and product-
by-process claims, are useful in special situations. The Jepson claim is used to claim an improvement to an ex-
isting device, process, or composition of matter. Markush language is used to claim alternative elements from a
group of related elements. Product-by-process claims are claims that cross the boundary between product and
process inventions.
[FN83]. 37 C.F.R. § 1.75(c).
PLIREF-PATAPP s 6.4
END OF DOCUMENT


Jeffrey G. Sheldon

§ 6.4 Types of Claims
*6-60 § 6.4.1 Dependent Claims
§ 6.4.1.1 Form of Dependent Claims
In general, the preamble of a dependent claim repeats the main portion of the preamble of its parent claim.
For example, if the parent claim begins with "A container for shaking articles," the preamble of the dependent
claim uses the language "The container for shaking articles of claim 1 . . .". Use of different introductory lan-
guage, such as "A device for containing articles to be shaken," can cause the dependent claim to appear to claim
a different invention and thus be indefinite. When the parent claim has a long preamble, the dependent claim can
recite a condensed preamble that briefly *6-61 states the general category of the invention, for example, "The
container of claim 1."
After reciting an introductory statement, the dependent claim must clearly indicate its dependency on the
parent claim, by such expressions as "as recited in claim 1," "of claim 1," "as specified in claim 1," or "as
defined in claim 1." The words used to establish dependency on the parent claim are a matter of choice, so long
as the dependency of the claim is clearly defined.
A dependent claim must limit the scope of the claim from which it depends, or else it is invalid under 35
U.S.C. § 112, paragraph 4. [FN83.1]
As with independent claims, open-ended transitions, such as "further comprising" or "including" or "further
including," are preferred for dependent claims that add elements. These words allow the claim to read on any
device that has elements in addition to those recited or incorporated in the claim. For example, suitable language
would read "a mechanical pencil including an eraser" or "a mechanical pencil comprising in addition an eraser."
When a dependent claim is used to modify or qualify a previously introduced element, the transitional
phrase "wherein" or "in which" is used to signify the relationship between the two claims. For example, suitable
language is "a mechanical pencil wherein the body is formed of plastic."
Dependent claims should be numbered and arranged to facilitate comprehension. A solitary dependent claim
that depends upon an independent claim can be placed anywhere in the claims section, as shown in Exhibits
6-3(a) and (b). However, a chain of sequential dependent claims, each of which is dependent upon a preceding
claim, should be claimed in a continuous sequence of claims before returning to an earlier claim in the sequence
to start another chain. Thus, Exhibit 6-3(c) is improper because claim 12 should *6-62 follow claim 10; it is im-
proper to allow an independent claim (claim 11) to break the sequence.
A proper form of sequential claims is shown in Exhibit 6-3(d). In this cluster of sequential claims, only
claims 1 and 17 are independent claims. Each sequence of dependent claims is run out in proper form. The first
sequential cluster chains claims 1 through 5, the second cluster chains claims 6 through 8, and so on.

§ 6.4.1.2 Content of Dependent Claims
A dependent claim must define the cooperation between each element recited within the claim, as well as
the cooperation of its elements with the elements of the parent claim. New elements that are added by the de-
pendent claim must cooperate with the elements of the parent claim.
Dependent claims are construed to include all the limitations of the "parent" claim. These limitations are
considered to be incorporated by reference into the dependent claim. [FN84] The dependent claim cannot omit
any element present in its parent claim. [FN85] For example, if the parent claim comprises elements A, B, and
C, a claim that incorporates only two elements, A and B, cannot be written in the form of a dependent claim; the
dependent claim form has to include all three elements.
A dependent claim can only add a new element to a claim or modify an already introduced element. It can-
not subtract an element of a claim or call for only part of a claim. For example, the following dependent claims
are improper.
2. The connector of the apparatus of claim 1 used in a sailboat (where the apparatus of claim 1 includes
elements in addition to the connector).
3. The apparatus of claim 1 without the connector.
*6-63 A claim dependent from an apparatus claim should not add only method limitations, that is, a function
performed by already introduced elements. Rather the function should be introduced with means language (that
is, "means for supporting") or a functional element (that is, "support").
§ 6.4.1.3 Use of Dependent Claims
Dependent claims are generally used when it is desirable to further limit the elements of a parent claim by
either (1) adding elements or (2) providing a more detailed description of a previously introduced element.
Elements, ingredients, or process steps can be added by using dependent claims. For example, a dependent
claim that adds a timing device to the shaker apparatus of Exhibit 6-1(a) reads:
2. A shaking apparatus as recited in claim 1, further comprising: means for detecting the passage of a
predetermined time interval.
Ingredients for a composition-of-matter claim and steps to a process claim can be added by a dependent
claim, such as:
3. The composition of claim 1, wherein nickel is added in the concentration of 5%.
A sequence of dependent claims can be used to claim additional elements or elaborate on the structure of an
element that was introduced in a prior dependent claim. For example, if dependent claim 2 adds an element, as
recited above, dependent claim 4 can recite:
4. The shaking apparatus of claim 2, further including: a temperature sensing device attached to the
container to monitor the temperature of the container.
Dependent claims can also be used to modify or qualify elements or to define their relationships with one
another. For example, the "means" element of the claim in Exhibit 6-1(a) *6-64 can be qualified by describing a
specific embodiment of the oscillation mechanism in greater detail, as follows:
5. A shaking apparatus as recited in claim 1, in which the oscillating means comprises:
(a) a motor;
(b) a rotary cam driven by the motor;

(c) a cam follower engaging the cam; and

(d) a link pivoted at one end to the cam follower and at its other end to the container, to permit os-
cillation of the container on the legs.
Elements can also be qualified in dependent claims by reciting preferred process conditions or concentra-
tions of ingredients. For example:
• A method of separation as recited in claim 2, wherein the separating step comprises: distilling the wa-
ter solution . . .
• The process recited in claim 5, wherein the step of heating comprises heating the solution to a temper-
ature of 80° to 90° C.
• The process of claim 5, wherein the solution also contains between 1 and 5% by weight of sodium
chloride.
• A zinc electroplating solution as recited in claim 11, wherein the pH-modifying substance is ammoni-
um hydroxide.
• A compound as recited in claim 12, wherein R is a methyl and X is chlorine.
Dependent claims can cross statutory classes, so long as the dependent claim includes all the limitations of
the parent claim. [FN86] For example, a dependent product-by-process claim can be used, such as "An article
produced in accordance with the method of claim 1."
[FN83.1]. Pfizer, Inc. v. Ranbaxy Labs, Ltd., 457 F.3d 1284 (Fed. Cir. 2006).
[FN84]. 35 U.S.C. § 112.
[FN85]. Ex parte Hansen, 99 U.S.P.Q. 319 (Pat. Off. Bd. App. 1953).
[FN86]. M.P.E.P. § 608.01(n).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-65 § 6.4.2 Multiple Dependent Claims
Multiple dependent claims incorporate by reference one of several alternative claims. [FN87] A multiple de-
pendent claim is merely a shorthand technique for writing a series of dependent claims. Multiple dependent
claims incorporate all the limitations of the particular claim in relation to which it is being considered. [FN88] A
multiple dependent claim cannot serve as a basis for any other multiple dependent claim. [FN89]
A multiple dependent claim must refer to its parent claims in alternative language. For example, acceptable
multiple dependent claim language includes: [FN90]
• A widget according to claim 3 or 4, further comprising:
• A widget as in any of the preceding claims, in which . . .
• A gadget as in either claim 1 or claim 2, further comprising:
• A gadget as in claim 2 or 3, further comprising:
• A gadget as in claim 1, 7, 12, or 15, further comprising:
A multiple dependent claim that does not refer to its parent claims in the alternative will be rejected. [FN91]
Examples of unacceptable claims read:
• A gadget according to claims 3 and 4, further comprising:
• A gadget according to claims 1-3, in which . . .
• A gadget as in claims 1 or 2 and 7 or 8, in which . . .
• A gadget as in the preceding claims, in which . . .
• A gadget as in claims 1-3 or 7-9, in which . . .
*6-66 All of the parent claims of a multiple dependent claim must precede the claim. Thus, a multiple de-
pendent claim cannot refer to claims that follow it. For example, a claim that reads "A gadget as in any of the
following claims, in which . . ." is unacceptable.
A multiple dependent claim cannot refer to more than one set of claims in the alternative. The language "a
gadget as in claim 1 or 4 made by the process of claim 5, 6, 7, or 8, in which . . ." is unacceptable because it
refers to both the gadget and the process claims in the alternative. [FN92] However, a claim that reads "A gadget
as in claim 1 or 4 made by the process of claim 5" is acceptable as there is only one multiple dependency in the
claim: either the combination of claims 1 and 5 or the combination of claims 4 and 5.
A multiple dependent claim cannot be the parent of another multiple dependent claim. [FN93] For example,
claim 5 is improper in the sequence of claims presented in Exhibit 6-4, because it is a multiple dependent claim
that depends upon another multiple dependent claim, namely claim 4. The improper claim 5 can be replaced by
proper claims 6 and 7.

Each alternative expressed in a multiple dependent claim is in theory treated as a separate claim by the ex-
aminer. Consequently, each alternative link of dependency is supposed to be independently examined for its pat-
entability and subject to rejection. Thus, if claim 3 is dependent upon both claim 1 and claim 2, the subject mat-
ter of claim 3 linked to claim 1 can be rejected, even if the subject matter of claim 3 linked to claim 2 is allowed.
A multiple dependent claim can depend from claims having different preambles, such as one parent claim
referring to "a system" and another parent claim referring to "an apparatus." In such a situation, the preamble
can state: "The invention of claim A or claim B. . . ."
[FN87]. 35 U.S.C. § 112.
[FN88]. Id.
[FN89]. Id.
[FN90]. M.P.E.P. § 608.01(n).
[FN91]. Id.
[FN92]. Id.
[FN93]. 37 C.F.R. § 1.75(c).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-67 § 6.4.3 Jepson Claims
Jepson-type claims, which are disfavored for reasons discussed below, are used to claim inventions that
consist of improvements over existing articles, processes, or compositions of matter. [FN94] A Jepson-type
claim should contain in order:
(1) a preamble that broadly describes all the conventional or known elements of the combination
claimed,
(2) a transition phrase, such as "wherein the improvement comprises" or "the combination of the old art-
icle, etc., of," and
(3) a description of the novel and nonobvious elements that constitute the new and improved portion of
the claimed combination, and their cooperation with the old elements. [FN95]
Generally, the language of a Jepson claim reads, "In an [existing combination] having [old elements A, B,
C], the improvement comprising . . ." It is not necessary to use the magic word "combination" or the transition
"improvement comprising" in the preamble. However, the preamble must recite the name of the invention and
identify the elements of the apparatus or process that are improved by the invention. [FN96] These elements are
considered part of the combination that is being claimed. [FN97] The onset of the body of the claim is denoted
by transition words such as "having," "including," and the like rather than the word "comprises," to avoid the
confusion that would otherwise result, for example, "an improved A comprising B and C, wherein the improve-
ment comprises D."
*6-68 A Jepson claim can be difficult to follow if it is long and contains several of's within the claim. In
these situations, an alternate form of the Jepson claim can be used, such as:
• In combination with an [A] of the type wherein [conventional elements B and C are provided for do-
ing something], the improvement which comprises: . . .
• An improved A of the type having a B and a C, wherein the improvement comprises . . .
• In a machine of the type having . . ., the improvement which comprises: . . .

• A machine having [old elements named], characterized in that . . .
A complete Jepson-type claim to an improved strand-collecting device, in which the invention comprises
the addition of the detector, cutter, and accumulator to a strand-collecting apparatus defined by the claim of Ex-
hibit 6-1(b), is presented in Exhibit 6-5.
The body of the Jepson-type claim is very similar to that of a dependent claim, except that the preamble of
the Jepson claim contains some of the elements that are normally recited in the parent of the dependent claim.
The Jepson-type claim can be used to claim improvements for processes and composition-of-matter claims,

as shown by Exhibits 6-6 and 6-7, respectively.
Although the Patent Office likes Jepson-type claims because they help the examiner focus on the allegedly
novel features of an invention, skilled practitioners usually avoid use of Jepson claims. One reason for that is
that the preamble can be construed as an admission that all the elements in the preamble are in the prior art. Fur-
thermore, the nonobviousness of many inventions resides in the use of a combination of the elements, rather
than the use of any specific element of the combination. For example, consider an invention comprising ele-
ments A, B, C, D, and E for which a first prior art reference teaches elements A + B + C and a second prior art
reference teaches elements C + D + E. A Jepson claim that *6-69 recites elements D + E as an improvement
over the combination of A + B + C is not completely accurate. Neither is a Jepson claim reciting elements A + B
as being an improvement over the combination of elements C + D + E.
The problem becomes even more complex because all the prior art is generally not available at the time of
claim drafting. It is risky to contend that all patentable features of an invention reside after the "improvement
comprising" clause without knowledge of all the prior art.
In addition, in a Jepson claim, the preamble is a limitation, and thus narrows the scope of the claim.
[FN97.1]
Accordingly, it is recommended that Jepson claims be generally avoided.
[FN94]. See Wells Mfg. Corp. v. Littlefuse, Inc., 547 F.2d 346, 192 U.S.P.Q. 256 (7th Cir. 1976).
[FN95]. 37 C.F.R. § 1.75(e).
[FN96]. Id.
[FN97]. M.P.E.P. § 608.01(m); Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997).
[FN97.1]. Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022 (Fed. Cir. 2002).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-69 § 6.4.4 Markush Groups
§ 6.4.4.1 Form of Markush Claims
Alternative language, such as "glass or plastic," is generally rejected because such language does not claim
the invention with sufficient particularity. Often, a generic phrase, such as "impervious transparent material,"
that encompasses the desired alternatives can be used to claim the alternatives. However, equivalent generic ex-
pressions may not be available. For example, if it is desirable to claim either chlorine or bromine, no simple gen-
eric expression distinguishes these two specified elements from the other five halogens. The Markush doctrine
developed as an exception to the traditional ban on alternative language. According to this doctrine a Markush-
type claim recites alternatives in the form of an artificial generic expression in the form "material selected from
the group consisting of A, B, and C." [FN98]
*6-70 A Markush group must use a closed transition, such as "consisting of," to limit the claim to encom-
pass only those alternatives recited in the claim. Members of the Markush group are separated by commas with
the final member preceded by a conjunction, such as "and" or "or." [FN99]
Shorthand Markush groups can be used. For example, instead of "wherein R is a material selected from the
group consisting of A, B, and C," the shorter phrase "wherein R is A, B, or C" is considered proper, [FN100] as
in "wherein the conductive material of the strip is copper, silver, or aluminum."
§ 6.4.4.2 Relationship Between the Alternatives
The members of the artificial group of elements that is claimed must bear some physical or chemical rela-
tionship to one another. A Markush group is improper if it identifies independent and distinct inventions, that is,
the members of the group are so unrelated that a prior art reference anticipating the claim with respect to one of
the members would not render the other members obvious. [FN101]
The degree of relationship required for the members of the Markush group depends upon the class of pat-
entable subject matter of the group members. A Markush grouping of materials or compounds is proper when
the materials grouped (1) have a common chemical and physical characteristic that justifies their inclusion in a
common group, and such inclusion is not repugnant to principles of scientific classification, [FN102] and (2)
have common functional utility related to structural features. [FN103] For example, "a resting surface selected
from the group consisting of a chair, a bench, and a *6-71 stool" is a proper grouping, because the members of
the group share a common utility and share structural features that are essential to their utility. [FN104] A
Markush group is proper if the members of the group have a common functional utility related to common, sub-
stantial features essential to that utility. [FN105]
However, disparate items such as air, earth, fire, and water are not sufficiently related members for a

Markush group. Similarly, in a claim for a process of treating cellulose acetate with an agent that is "selected
from a group consisting of neutral salts and cane sugar in the presence of water," the neutral salt and cane sugar
elements are not sufficiently related, because all they have in common is their ability to achieve the same result,
without commonality of any physical or chemical characteristics. [FN106]
Markush groups that recite alternative process steps or combinations of elements can meet a lower standard
of association. [FN107] The members of such a group must possess at least one common property that is primar-
ily responsible for their function, and the nature of the elements or the prior art must clearly indicate that all the
members of the group possess this property. [FN108] For example, "weakening the bond by a process selected
from the group consisting of heating, freezing, and pulling the pieces apart" is proper.
When a Markush expression is used to claim alternative portions of a chemical structure, the propriety of
the grouping is determined by considering the relationship of the whole compounds. The individual portions of
the chemical compound do not have to be related. [FN109] An exemplary claim containing two Markush groups
is presented in Exhibit 6-8.
*6-72 § 6.4.4.3 Uses of Markush Claims
Markush groups are used to define alternative chemical ingredients that can be used in a compound or com-
position, alternative steps in a process, or alternative choices for an article. For example, a Markush group can
be used to describe alternative materials that can be used in a product:
1. A resistor which comprises:
(a) a ceramic core;

(b) a coating of carbon on the core; and
(c) a strip of a conductive metal selected from the group consisting of copper, silver, and alu-
minum at each end of the core electrically contacting the carbon coating.
Markush expressions can also be used to define groups of related mechanical elements, [FN110] regardless
of their size or complexity. [FN111] For example, "a fastener selected from a group consisting of nails, rivets,
and screws." However, Markush groups are rarely used for mechanical elements because generic words that de-
scribe the elements of a group, such as fastener, provide a broader definition of alternatives. Means clauses may
also be used for combinations of elements.
A Markush group can also be used to define alternative ingredients used in a process:
1. A process for treating the surface of a polyethylene article to increase its receptivity to a printing
ink, which comprises:
exposing the surface of the article to a saturated solution of sodium dichromate in an acid se-
lected from the group consisting of concentrated sulfuric, nitric, and phosphoric acids.
*6-73 Markush groups can also be used to claim sequences of alternatives that diminish in scope, as long as
the claims are not unduly multiplied. [FN112] In these sequences, claims to subordinate groups that name the al-
ternatives with more specificity depend upon claims that recite broader groups. For example, if claim 1 recites a
broad class of conductive materials; claim 2 could read on a Markush group consisting of five conductive mater-
ials; claim 3, an even narrower class of three preferred materials, and so forth.
An advantage of using such a sequence of claims is that the narrower Markush claim may survive scrutiny
in the event that a broad claim is anticipated.

§ 6.4.4.4 Recommendations re Markush Claims
Markush groups should be used with extreme caution. Use of a Markush group can be interpreted as an ad-
mission that if any of the related species lacks novelty over prior art, then all of the species lack novelty.
[FN113]
If a claim is anticipated because one member of a Markush group is found in the prior art, cancellation of
that member from the Markush group can salvage the claim. The claim, after cancellation of that member, is no
longer anticipated. The claim is salvageable under 35 U.S.C. § 103 if the remaining species are not taught to be
equivalent in the prior art:
Actual equivalence is not enough to justify refusal of a patent on one member of a group when another
member is in the prior art. The Equivalence must be disclosed in the prior art or be obvious within the terms
of section 103. [FN114]
When a Markush group is used, it is recommended that claims reciting preferred versions of the invention
be included in the application. The reason for that is if the claim containing the Markush group is anticipated be-
cause one of *6-74 the species defined by the Markush group is rendered obvious by the prior art, the entire
claim may be invalid. By having a separate claim directed to the preferred version, the validity of that version
may be salvaged in litigation. Thus, if the preferred version of the invention of the claim of Exhibit 6-8 has R
being an ethyl group and X being fluorine, the following claims should be included in the application:
2. The compound of claim 1 wherein R is an ethyl.
3. The compound of claim 1 or 2 wherein X is fluorine.
Even better, the preferred version should be deleted from the claim of Exhibit 6-8 and written as a separate, in-
dependent claim.
If it is possible to use more than one member of the Markush group at the same time when practicing the in-
vention, the claim must explicitly say that, or else the claim will be interpreted as allowing only one member to
be used at a time. For example, the language
A Lewis acid inhibitor in an amount effective . . . selected from the group consisting of A, B, and
C. . . .
is interpreted as allowing only one of A, B, and C to achieve the "amount effective" and not two of the com-
pounds. [FN114.1] Accordingly, if it is possible to have combinations of the members of the Markush group in
the invention, the following language or an equivalent must be used:
A Lewis acid inhibitor in an amount effective . . . selected from the group consisting of A, B, C,
and combinations thereof . . .
If it is possible to have only one element of the group care must be used to avoid such language as "at least
one of A, B,C and D" since the Federal Circuit has interpreted such language to minimally require at least one
element from each of *6-75 the categories A, B, C, and D, and not one or more elements from one or more cat-
egories. [FN114.2]
To avoid this problem, instead of using "and", the applicant could have (i) used "or," (ii) "at least one of "A,
B, C or D," or (iii) "at least one of the group including A, B, C and D."
[FN98]. Ex parte Markush, 1925 Dec. Comm'r Pat. 126, 340 Off. Gaz. Pat. Office 839 (Comm'r Pat. 1924).
[FN99]. See M.P.E.P. § 2173.05(h).
[FN100]. Id.

[FN101]. M.P.E.P. § 803.02.
[FN102]. In re Schechter, 205 F.2d 185, 98 U.S.P.Q. 144 (C.C.P.A. 1953).
[FN103]. Ex parte Burke, 1934 Dec. Comm'r Pat. 5, 441 Off. Gaz. Pat. Office 509 (Comm'r Pat. 1934).
[FN104]. M.P.E.P. § 803.02.
[FN105]. In re Harnisch, 631 F.2d 716, 206 U.S.P.Q. 300 (C.C.P.A. 1980).
[FN106]. Ex parte Palmer, 7 U.S.P.Q. 11 (Comm'r Pat. 1930).
[FN108]. M.P.E.P. § 2173.05(h).
[FN109]. Ex parte Price, 150 U.S.P.Q. 467 (Pat. Off. Bd. App. 1965).
[FN110]. See Ex parte Head, 214 U.S.P.Q. 551 (Pat. Off. Bd. App. 1981); In re Gaubert, 524 F.2d 1222, 187
U.S.P.Q. 664 (C.C.P.A. 1975); In re Harnisch, 631 F.2d 716 (C.C.P.A. 1980).
[FN111]. M.P.E.P. § 2173.05(h).
[FN112]. Id.
[FN113]. M.P.E.P. § 803.02.
[FN114]. In re Ruff, 256 F.2d 590, 599, 118 U.S.P.Q. 340 (C.C.P.A. 1958).
[FN114.1]. Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 67 U.S.P.Q.2d 1191 (Fed. Cir. 2003).
[FN114.2]. Superguide Corp. v. DirectTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-75 § 6.4.5 Product-by-Process Claims
A product-by-process claim indirectly claims a product by reciting the process of fabricating the product. A
product-by-process claim is of the general form, "A [product or composition of matter] prepared by a process
comprising the steps of . . .". A product-by-process claim should preferably use the gerund form of a word (the
form of the word having characteristics of both a verb and a noun) to describe the process of forming the
product. As an example, a product-by-process claim for an electrical resistor formed by decomposing a hydro-
carbon gas to deposit a carbon coating on a ceramic core is presented in Exhibit 6-9.
Such terms as "etched," "welded," "interbonded by interfusion," and "condensation product" can be used as
adjectives to describe the physical characteristics of a product without changing the character of the claim into a
product-by-process claim. Although those words appear to be process limitations, they are considered limita-
tions on the structure of the invention, not words descriptive of a process. [FN115] For example, the following
claims were held not to be product-by-process claims:
• An acid phosphate of a condensation product of formaldehyde with a salt of a compound selected
from a group consisting of . . . [FN116]
*6-76 • A composite, porous, thermal insulation panel characterized by dimensional stability and struc-
tural strength consisting essentially of expanded perlite particles which are interbonded to one another by
interfusion between the surfaces of the perlite particles while in a pyroplastic state to form a porous perlite
panel. [FN117]
A product-by-process claim that claims a product that is substantially identical to or insignificantly different
from prior art products will be rejected as lacking novelty or for being obvious. [FN118] The tests of novelty
and nonobviousness are applied to the product itself and not to the process. Thus, "the addition of a process step
in a product claim, in which the product is not patentably distinguishable from the prior art cannot impart pat-
entability to the old product." [FN119]
The exact scope of product-by-process claims is uncertain. The Patent Office examines the claims as if the
process were not a defining limitation of the product, that is, a prior art product can anticipate the product or
render the product obvious even if the process is novel and nonobvious. However, the Federal Circuit has issued
conflicting decisions as to the scope of such a claim in infringement litigation. In a 1991 decision, the Federal
Circuit held that "the correct reading of product-by-process claims is that they are not limited to product pre-
pared by the process set forth in the claims." [FN120] Similarly, a product-by-process claim is anticipated by a
prior disclosure of the same product, even though the prior product was made by a different process. [FN120.1]
However, in a 1992 decision, a different three-judge panel of the Federal Circuit ruled that "process terms in
product-by-process *6-77 claims serve as limitations in determining infringement." [FN121] Therefore a
product-by-process claim has the worst of all worlds. It can be anticipated by a product made by a different pro-
cess, but is infringed only by a product made by the process specified in the claim.

Traditionally, product-by-process claims were allowed only if the patentable features of the product were in-
capable of being described in terms of the product's structure or properties and could be described only via a de-
scription of its process of manufacture. [FN122] Thus, under the traditional view, the product-by-process claim
of Exhibit 6-9 is used only if either (1) the prior art recited other methods of fabricating carbon-coated resistors
such as by lacquering, and the resistor claimed is distinguishable only because the carbon deposition process
was novel and nonobvious; or (2) if the precise nature of the mechanical or electrical differences between the
nature of the carbon coating and prior art coatings were either unknown or could not be described. The Patent
Office Board of Appeals changed this rule in Ex parte Hartmann. [FN123] Product-by-process claims are now
allowed in the same patent application that contains claims defining the subject matter in terms of structure or
properties. Thus, it is advisable to include both types of claims where appropriate.
Product-by-process claims may also be drafted in the form of a dependent claim as in:
5. A polyethylene article having a surface treated in accordance with the process of claim 4.
*6-78 Product-by-process claims of varying scope can be included in a single patent application. [FN124]
[FN115]. In re Garnero, 412 F.2d 276, 162 U.S.P.Q. 221 (C.C.P.A. 1969).
[FN116]. In re Steppan, 394 F.2d 1013, 156 U.S.P.Q. 143 (C.C.P.A. 1967).
[FN117]. In re Garnero, 412 F.2d 276, 162 U.S.P.Q. 221 (C.C.P.A. 1969).
[FN118]. M.P.E.P. § 2113.
[FN119]. In re Bilkington, 411 F.2d 1345, 162 U.S.P.Q. 145 (C.C.P.A. 1969).
[FN120]. Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 18 U.S.P.Q.2d 1001 (Fed. Cir.
1991).
[FN120.1]. SmithKline Beecham Corp. v. Apotex Corp., 453 F.3d 1346 (Fed. Cir. 2006).
[FN121]. Atl. Thermoplastics Co. v. Faytex Corp., 970 F.2d 834, 23 U.S.P.Q.2d 1481 (Fed. Cir. 1992), reh'g en
banc denied, 975 F.2d 1289, 23 U.S.P.Q.2d 1138 (Fed. Cir. 1992). A district court has suggested that Atlantic
states the controlling law. Tropix, Inc. v. Lumigen, Inc., 825 F. Supp. 7 (D. Mass. 1993).
[FN122]. See In re Moeller, 117 F.2d 565, 48 U.S.P.Q. 542 (C.C.P.A. 1941).
[FN123]. Ex parte Hartmann, 186 U.S.P.Q. 366 (1975).
[FN124]. M.P.E.P. § 2173.05(p) (citing Ex parte Pantzer & Feier, 176 U.S.P.Q. 141 (Pat. Off. Bd. App. 1972)).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-78 § 6.4.6 New-Use Claims
Under 35 U.S.C. § 101, a new use of a known process, machine, manufacture, composition of matter, or ma-
terial is patentable subject matter. For example, although a glass with a composition (sodium oxide 60%, silica
20%, and phosphorous oxide 20%) is known in the prior art for making window glass, a claim directed to the
method of using the same glass as a glass-to-metal sealant is not anticipated. Although a claim to the glass com-
position by itself would be anticipated by the prior art composition, the new use of the glass composition in a
glass-to-metal sealing process is patentable. A suitable claim would be:
• A method for joining metal and glass components, comprising the steps of:
(a) joining the metal and glass pieces together;
(b) heating the metal and glass components to an elevated temperature; and
(c) contacting the metal and glass pieces with a glass-to-metal sealant composition comprising:
40 to 70% by weight sodium,
10 to 30% by weight silica, and
15 to 25% by weight phosphorous.
There are conflicting decisions as to whether an otherwise obvious process is patentable because either or
both (1) a specific starting material or (2) the product obtained from the process is novel and nonobvious.
[FN125] In Ex parte MacAdams, [FN126] a method of molding a novel plastic composition by *6-79 a known
process was held patentable. However, the use of a nonobvious starting material does not render every process
unobvious. [FN127] A new process may still be obvious even when considered "as a whole," notwithstanding
that specific starting materials or resulting products, or both, are not found in the prior art. [FN128] Otherwise,
even simple steps such as dissolving or heating, when performed on a new compound, would result in a pat-
entable process.
[FN125]. In re Durden, 763 F.2d 1406, 226 U.S.P.Q. 359 (Fed. Cir. 1985).
[FN126]. Ex parte MacAdams, 206 U.S.P.Q. 445 (Pat. Off. Bd. App. 1978).
[FN127]. In re Kanter, 399 F.2d 249, 158 U.S.P.Q. 331 (C.C.P.A. 1968); In re Neugebauer, 330 F.2d 353, 141
U.S.P.Q. 225 (C.C.P.A. 1964).
[FN128]. In re Durden, 763 F.2d 1406, 226 U.S.P.Q. 359 (Fed. Cir. 1985).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-79 § 6.5 Strategy of Claim Drafting
The fundamental rules for drafting claims were presented in the sections above. Mastery of these funda-
mental rules will allow preparation of claims that pass muster with the Patent Office. However, there is much
more to claim drafting than merely preparing technically acceptable claims. It is important to prepare claims that
will survive litigation with their validity intact. It is also important to prepare claims so infringement cannot be
avoided without giving up the benefits of the claimed invention.
This section of this chapter discusses the strategy of claim drafting. In other words, this section discusses
how to effectively and efficiently prepare claims that will survive litigation.
PLIREF-PATAPP s 6.5
END OF DOCUMENT


Jeffrey G. Sheldon

§ 6.5 Strategy of Claim Drafting
*6-79 § 6.5.1 Obtaining Broad Coverage
The claims should be drafted to encompass all possible embodiments of the inventive concept that are de-
scribed in the specification, without reading on prior art. Any embodiment of an invention disclosed in the spe-
cification but not *6-80 claimed is dedicated to the public and cannot be recovered by use of the doctrine of
equivalents. [FN129]
Two techniques are available to ensure that the claims encompass a sufficiently large scope of protection.
First, the claims should be directed to as many categories of patentable invention as the subject matter of the in-
vention permits. For example, for a simple article invention, the claims that should be considered are claims dir-
ected to
(1) the article,
(2) the process for producing the article, and
(3) the process for using the article.
A second technique of ensuring broad coverage is to include claims of varying scope within a single applic-
ation. Broad claims must be included to ensure that the application claims the broadest definition of the inven-
tion that is permitted in light of the known prior art. Narrow claims are used to describe the structure of specific
embodiments of the invention. The narrow claims are less likely to be invalid than the broad claims.
An important reason for including claims of varying scope in the application as filed is the availability of
royalties for infringement occurring in the time between publication of an application and issuance of a patent
on the application. [FN130] The royalties are available only if the invention as claimed in the issued patent is
substantially identical to the invention as claimed in the published application. To maximize the likelihood of
that occurring, a full set of claims of varying scope should be included in the original application. Such a full set
can include broad and narrow claims, product and process claims, independent and dependent claims, means-
plus-function and function-only claims, and step of and step for claims.
*6-81 The claims should not be written so broadly as to include nonenabled subject matter. In such circum-
stances, the claims can be invalid for lack of enablement. [FN130.1] If it is questionable whether anything with-
in a broad claim would actually work in the invention, it is advisable to break up the claim into two claims, one
of which is limited to operable and enabled subject matter, and the other of which is limited to ranges which the
inventor is not sure will actually function.
[FN129]. Maxwell v. J. Baker, Inc., 86 F.3d 1098, 39 U.S.P.Q.2d 1001 (Fed. Cir. 1996).
[FN130]. 35 U.S.C. § 154(d).
[FN130.1]. AK Steel Corp. v. Sollac, 344 F.3d 1234, 68 U.S.P.Q.2d 1280 (Fed. Cir. 2003).

END OF DOCUMENT


Jeffrey G. Sheldon

*6-81 § 6.5.2 Drafting the Picture Claim
A three-step approach can be used to obtain claims of broad, intermediate, and narrow scope. The recom-
mended first step for drafting claims is to write a "picture claim" that describes in detail all the features of a
drawing or model of a specific embodiment of the invention. These narrow claims are relatively easy to draft.
The next step is working the picture claim into a broad claim by eliminating unnecessary limitations and ele-
ments. The third step is to rewrite the broad claim into claims of intermediate scope by adding elements or by
describing elements in greater detail.
The picture claim is simply a written description of all the features of a specific embodiment of the inven-
tion. The description of each element may include:
1. Descriptions of subelements and their cooperation with the element itself;
2. A detailed description of the physical characteristics of the element, including its size, shape, and
geometry;
3. The materials used to construct the particular element and their chemical or physical structure; and
*6-82 4. Details of the preferred conditions in a process step, such as the optimum duration or temperat-
ure of the step.
As an example, a picture claim describing the shaking apparatus of Exhibit 6-10 is presented in Exhibit
6-11(a). Note that this picture claim literally describes every element shown in Exhibit 6-10. No effort is made
to use special language or generic names to expand the breadth of the claim.
It may be advantageous to include the picture claim in the claim section either in its actual form or as a
series of dependent claims. Being very narrow, these claims are more difficult to invalidate based on prior art.
Also, the examiner is more likely to accept the narrow claims in the first Office action. This focuses subsequent
discussions with the examiner on the allowable scope of the claims and not the patentability of the invention.
END OF DOCUMENT


Jeffrey G. Sheldon

*6-82 § 6.5.3 Writing the Broadest Claim or Claims
The broadest claim is the most difficult to prepare. It should encompass all possible embodiments of the in-
vention without reading on the prior art. Broad claims are drafted by claiming only the essential elements, that
is, the minimum number of elements that form a functional combination capable of achieving a purpose of the
invention. These claims crystallize the basic "inventive concept" by defining all the novel and nonobvious ele-
ments.
The broadest claim should be as broad as possible in view of the prior art. As long as the broad claim is not
anticipated by art known to the inventor, it cannot hurt to ask for the broad claim. At worst, the examiner will
not allow the broadest claims. Thus, it is recommended that the practitioner be greedy when initially writing the
application.
It is most important for the patent to contain at least one claim that is impossible to design around. If the in-
vention *6-83 has commercial value, competitors will spend great effort to design around the claims of the pat-
ent. Thus it is important that the practitioner spend time with the inventor to prepare such a claim. The inventor
should be asked to design around the patent. Armed with a dictionary and a thesaurus, the practitioner and in-
ventor should make certain that the words of the broad claims are accurate and precise, and do not provide an
opening for a competitor to avoid infringement.
Many patent applications do not have a single broad claim. Often there are broad independent claims of
overlapping scope. For example, if the prior art teaches a suitcase with elements A and B and the client has in-
vented a suitcase that has elements A and B, as well as elements C and D, the broadest claim should not neces-
sarily be one claiming the elements A + B + C + D. Instead, there could be a broad claim claiming elements A +
B + C and another broad claim claiming elements A + B + D.
The broadest claim can be, and whenever possible should be, directed to a subelement of an invention. As
long as a subelement satisfies the requirements of 35 U.S.C. §§ 101, 102, and 103, the subelement can be
claimed independently of the remainder of the device or process. For example, the Federal Circuit considered a
claim that was directed to a subelement of a measurement probe that included (1) a mount for a stylus and (2)
electronic circuitry for determining the position in space of the probe. The claim at issue called out only ele-
ments of the mount and did not specify the electronic circuitry. Reversing the district court's holding of invalid-
ity for lack of utility under 35 U.S.C. § 101 (discussed in chapter 7) and indefiniteness under 35 U.S.C. § 112,
the Federal Circuit found the claim proper because the claimed subelement (the mount) in fact served the pur-
pose of mounting a stylus, although the claimed device could not be used by itself for measuring position.
[FN131]
*6-84 For many inventions, therefore, and particularly those for complex machines and devices, there may

not be a single broad claim, but rather a multitude of claims directed to various patentable subelements or sub-
systems of the invention.
Once a broad claim is accepted by the examiner, the only remaining issue is whether the remaining narrower
dependent claims comply with the requirements of 35 U.S.C. § 112.
§ 6.5.3.1 Defining the Novel and Nonobvious Element or Elements
The broad claim should be drafted to emphasize the novel elements of the invention. For example, if the sa-
lient feature that distinguishes the shaking apparatus of Exhibit 6-1 from prior art shaking apparatuses is the use
of a container with its apertures sized large enough to retain articles, but small enough to allow impurities to fall
through, a broad claim should include the language:
1. A shaking apparatus, comprising:
(a) a container with apertures sized such that impurities are able to fall through while retaining the
articles themselves . . .
§ 6.5.3.2 Avoid Unnecessary Limitations and Elements
To draft the broadest possible claim, unnecessary limitations and unnecessary elements that are recited in
the preamble, transition, and body of the claim must be deleted. The claim should contain a barebones descrip-
tion of the novel and nonobvious elements. Exhibit 6-1 shows the final version of a broad claim that was drafted
by eliminating all the unnecessary limitations and elements present in the picture claim of Exhibit 6-11. The fol-
lowing section illustrates this derivation process.
*6-85 § 6.5.3.2.1 In the Preamble
In general, the language recited in the preamble does not affect the scope of the claim if the preamble
"merely states a purpose or intended use and the remainder of the claim completely defines the invention."
[FN132] However, the preamble may limit the scope of the claim if "the claim cannot be read independently of
the preamble and the preamble must be read to give meaning to the claim or is essential to point out the inven-
tion." [FN133] For example, the preamble of the Jepson-type claim clearly limits the claim by excluding the ex-
isting device or process from the improvement claimed.
Language that may be construed as an additional structural limitation on the body of the claim should be re-
moved from the preamble. Thus, the preamble of the picture claim of Exhibit 6-11 should be modified to read,
"Apparatus for shaking articles . . .". This preamble merely states a broad purpose of the invention without limit-
ing its intended use.
§ 6.5.3.2.2 In the Transition
It is much easier to exclude limitations from the transitional phrases of a claim. Generally, an open trans-
ition word, such as "comprises," should be used for virtually all claims. Narrow, closed transition terminology
should be used only when the practitioner is aware of prior art that requires a narrow claim. Thus, to draft a
broader claim, substitute the words "which comprises" for "consisting of" in the transition of the picture claim.
It is recommended that "composed of' and "having" not be used where definite language is needed in the
claims, because of the need to interpret these transitional phrases *6-86 with a view to the specification.
[FN133.1] This means that it will take a judge's decision to be sure what "composed of" means in a particular
situation unless the specification defines the term or prosecution of the patent application clarifies the meaning.

It is better to use well-defined transitional language when claim clarity and definiteness are desired.
§ 6.5.3.2.3 In the Body
To remove unnecessary elements from the body of the claim, it is necessary to carefully read over each ele-
ment of the picture claim, and determine if it is essential to define the "inventive concept" of the invention. For
example, if the claim contains an element which reads "a housing surrounding the drive shaft," and it is known
that the machine works without the housing, the "housing" should be deleted from the claim because it unduly
limits the claim. After all unnecessary elements have been removed, it is important to be sure that the elements
remaining in the claim are sufficiently interrelated.
A limitation directed only to the environment in which the invention operates can be eliminated from a
claim. A claim directed to, for example, a tram that can operate on a track can be written as "a tram adapted for
traveling along a track" so that the track itself is not a limitation in the claim.
Once the essential elements are identified, review the claim word by word to question the necessity of each
word that limits the claim. All unnecessary adjectives or numerical designations, such as "rigid," "flexible,"
"elongated," "round," or "three," are eliminated if possible. For each of these words, the inventor should be
asked if the element must be so limited, for example, "Does the element have to *6-87 be rigid?" If it does, the
word "rigid" is left in the claim; if it does not, "rigid" is deleted.
Also, each word is carefully chosen to avoid unnecessary limitations. The picture claim of Exhibit 6-11 con-
tains several words and phrases that unnecessarily limit the claim. For example, the phrase "hollow and rectan-
gular" unnecessarily limits the shape of the receptacle; a cylindrical or spherical receptacle would be equivalent.
It is also not necessary to define the motor as an "electric motor" because the motor could be gasoline or diesel-
powered. Similarly, it is not necessary for the invention to have four legs. The invention works equally well hav-
ing three or five legs. Thus, the number "four" should be omitted and replaced with the word "plurality," such as
a "plurality of legs." Unnecessary adjectives such as "metal" or "brass" should also be removed.
Language that describes a species rather than a genus can also limit the scope of the claim. For example, the
description of the hollow and rectangular receptacle to hold articles can be more broadly described as a "contain-
er," and the claim thus reads on both spherical and cylindrical containers. Similarly, "a support member" reads
on both parallel legs and sets of springs that are used to support the container.
§ 6.5.3.3 Defining Elements by Their Function
§ 6.5.3.3.1 Using Means Clauses
Means clauses offer a simple method for broadly defining an element by its function rather than defining it
based on its physical characteristics. The broad language of means clauses is construed to encompass corres-
ponding structure, material, or process steps described in the specification and their equivalents. [FN134]
*6-88 A means clause can encompass a single element, a part of an element, or a train of fifty cooperating
elements--whatever is needed to perform the recited function. Means clauses are often used to define conven-
tional elements of mechanical combinations. For example, "means for fastening the support to the base" can be
used to describe conventional fastening means, such as screws, nuts and bolts, and adhesives.
A means clause should be used to describe an element when the function of that element is more important
than any particular embodiment or construction that is used to perform a function. For example, the oscillating

means of the shaking apparatus of Exhibit 6-10 can be constructed from other arrangements, such as a piston
and cylinder. A detailed definition of each element of the oscillating mechanism limits the scope of the claim. A
much broader claim is obtained by using a means clause to define the oscillating mechanism, as in "a means for
oscillating the container on the legs to shake the articles." This functional language allows the claim to encom-
pass any of several different forms of oscillating mechanisms. The means clause equally applies to a piston-
cylinder mechanism. Similarly, the legs can be more broadly expressed as "means for mounting the container on
the base for oscillating movement with respect thereto." This expression is much broader because it reads on
both the spring mounting and the parallel legs.
In view of the limited scope of "means" clauses (see the discussion in section 6.3.5.1.4.1), if broad claim
coverage is desired, it is recommended that functional language be used, as discussed in the next section, rather
than means clauses. To maximize patent coverage, and to provide claims of varying scope, both claims with
functional language and claims with means clauses can be used.
One problem with using means clauses is that the exact scope of means clauses is uncertain because the
term "equivalent" used in section 112 is indefinite. The Federal Circuit *6-89 discussed the meaning of "equival-
ent" in Valmont Industries Inc. v. Reinke Manufacturing Co. [FN135]
According to the Valmont decision, a means-plus-function limitation reads on an accused device only if the
accused device (1) performs the identical function specified in the claims, and (2) "employs means identical to
or the equivalent of the structures, material, or acts described in the patent specification." [FN136] In that de-
cision, the Federal Circuit noted that the word "equivalent" is not to be confused with the "doctrine of equival-
ents." However, the Federal Circuit confused matters by defining the word "equivalent" as used in paragraph 6
of section 112 and "equivalent" in the doctrine of equivalents as both referring to an "insubstantial change."
The Federal Circuit claims there is an important difference between the doctrine of equivalents and para-
graph 6 of section 112. The Federal Circuit hypothesizes that because of technological advances, an insubstan-
tial variant of an invention may be developed after the patent is granted. If this variant is found not to be a sec-
tion 112, paragraph 6 equivalent, it could still be an equivalent under the doctrine of equivalents. [FN137]
In its Guidelines, supra, the Patent Office attempted to instruct examiners as what the "equivalent" means
under section 112. It is not known whether courts will adopt these guidelines. The Patent Office Guidelines de-
clare that for prior art to be equivalent to the structure disclosed in a patent application, the prior art structure
must perform the identical function recited in the claim. After that test is met, the Patent Office will apply the
following indicia to determine whether one element is equivalent to another:
*6-90 (1) Whether the prior art performs the function specified in the claim in substantially the same
way, and produces substantially the same results as the corresponding element disclosed in the specification.
(2) Whether a person of ordinary skill in the art would have recognized the interchangeablity of the ele-
ment shown in prior art for the corresponding element disclosed in the specification.
(3) Whether the prior art element is a structural equivalent of the corresponding element disclosed in
the specification being examined. That is, the prior art element performs the function specified in the claim
in substantially the same manner as the function is performed by the corresponding element described in the
specification.
(4) Whether the structure, material or acts disclosed in the specification represents an insubstantial
change which adds nothing of significance to the prior art element.
Of course, the first indicia relied upon by the Patent Office creates problems, in that it uses the Doctrine of
Equivalents standard, even though the Federal Circuit has stated that the word "equivalent" in section 112 does

not mean the same thing as "equivalent" under the Doctrine of Equivalents.
Another problem with means clauses in spite of verbiage to the contrary in the Guidelines, the net effect of
the Guidelines is applicants will receive the same rejections for anticipation/obviousness for "means clause" lan-
guage that they have always received.
In particular, if the Patent Office finds a prior art element that performs the function specified in means
clause, the examiner will then give an anticipation and/or obviousness rejection. The only exception to that pro-
cedure will be if there is an "explicit definition provided in the specification for an equivalent." In the absence of
that exception, the burden will shift to the applicant to show that the element shown in the prior art is not an
equivalent of the structure, material or acts disclosed in the application. In other words, *6-91 if the examiner
finds a prior art structure that performs the same function, the examiner has made a prima facie case of non-
patentability and the burden shifts to the applicant to prove non-equivalence.
In order to prove to the Patent Office that the prior art structure is not equivalent to applicant's structure, the
Patent Office suggests that the following reasons (which are not intended to be inclusive) be presented:
(1) Teachings in the specification that particular prior art is not equivalent,
(2) Teachings in the prior art reference itself that may tend to show non-equivalence, or
(3) Rule 132 affidavit evidence of facts tending to show nonequivalence.
In other words, the only way the Patent Office will issue a claim that has a "means" clause when the prior
art has structure, material, or acts that perform the same function, is by the applicant presenting arguments that,
unfortunately, create prosecution history estoppel, which will prevent any broad interpretation of the means
clause.
Clearly, then, a presentation of a means clause in a patent application involves some risk. If the examiner
finds a structure in the prior art that performs the same function, the only way to get the claim allowed will be to
establish significant prosecution history estoppel with regard to the breadth of the means clause.
Another potential problem with the use of means clause can be the failure to include in the specification
structure for performing the function of the means clause. Section 112, paragraph 2 of 35 U.S.C. requires that
such structures be disclosed. [FN138]
*6-92 Another problem with means clauses is that there is a lack of predictability as to whether or not the
claim will be interpreted as a "means-plus-function" clause. The reversal rate by the Federal Circuit, which con-
siders interpretation of a means-plus-function clause to be a matter of law, is very high, approaching 50% in
1997. [FN139] Accordingly, to avoid claim language which does not use "means" from being interpreted under
section 112, paragraph 6, it is recommended that the closing language described in section 7.5.10.3 herein be
used. Similarly, to be certain that "means for" language in the claims is interpreted under section 112, paragraph
6 by the courts, add language to the specification, each time a means-plus-function language is used, that says:
"The term 'means for . . .' as used herein, including in the claims, is to be interpreted according to 35 U.S.C. §
112, ¶ 6."
Mean-plus-function clauses create challenges when writing the specification with regard to the correspond-
ing structure. These challenges are discussed in section 7.5.10.3.3.
§ 6.5.3.3.2 Using Functional Language

Functional expressions provide an alternative technique of broadly defining an element. In general, func-
tional expressions (other than means clauses) should be used only to describe a function or result that necessar-
ily follows from some previously defined structure. [FN140] A claim that recites functional language without
any supporting structure may be rejected as purely "functional." [FN141]
*6-93 Recent cases have upheld very broad functional language. [FN142] For example, in In re Echerd,
[FN143] the Court of Customs and Patent Appeals held the following language valid: "having sufficient flexibil-
ity and wet strength to permit . . ." and "having sufficient adhesive characteristics to firmly bond . . ." Similarly,
in In re Boller, [FN144] the court allowed an ingredient in a composition-of-matter claim to be broadly claimed
as "volatile neutralizing agent." Functional language can also be used to broadly claim quantities of materials.
For example, in a claim for a new use of a chemical compound that was known in the prior art, the phrase "an
effective amount of [compound X] for [forming a desired function]" was held proper. [FN145]
In In re Ludtke, the C.C.P.A. upheld a claim directed to a parachute canopy that contained extremely broad
functional language: [FN146]
said plurality of lines [B] providing a radial separation between each of said panels [A] upon deploy-
ment [of the parachute] creating a region of high porosity between each of the said panels such that the crit-
ical velocity . . . would be less than . . . whereby said parachute will sequentially open and thus gradually
decelerate.
The net effect of broadening the picture claim of Exhibit 6-11 is the claim of Exhibit 6-1(a).
*6-94 The Federal Circuit has acknowledged that although the use of the term "means" is not necessarily to
trigger paragraph 6 of section 112, that term generally invokes paragraph 6 of section 112, while a different for-
mulation generally does not. Thus the use of the term "detent mechanism" is not to be interpreted as a means-
plus-function element; rather, the Federal Circuit considers "detent mechanism" to define a mechanism utilizing
functional terms. The court noted that many devices take the names of functions they perform, including "filter,"
"brake," "clamp," "screwdriver," "lock," "graspers," "cutters," and "suture applicators." [FN147]
§ 6.5.3.4 Comparing the Broadest Claim Against the Prior Art
After the broadest claim has been written, it is important to review this claim to ensure that it does not read
on the prior art. Not infrequently, when studious efforts are made to eliminate any unnecessary limitations from
a claim, the claim turns out to read on the prior art. It is important to take this "mental step" to try to determine if
the broadest claim inadvertently reads on the prior art.
For example, suppose an inventor determines that a cellulosic member inserted into soil near a plant can be
used to determine when the plant needs watering. The claim should not be drafted so broadly that it would read
on a filtered cigarette containing cellulose inserted in soil to extinguish the cigarette.
§ 6.5.3.5 Verifying Claim Structure with a Diagram
A diagrammatic sketch or "stick picture" of the broad claim can provide confirmation that all essential ele-
ments and necessary cooperation, but nothing more, have been included in *6-95 the claim. The sketch should
precisely conform to the language recited in the claim, showing only the elements and cooperation defined in the
claim--it should not be based on the drawings of the invention. For example, Exhibit 6-12 is a schematic sketch
of the broad claim of Exhibit 6-1(a). The diagrammatic sketch shows the claim elements, namely, the container,
the base, parallel legs, and means for oscillating the container and their interconnection. Missing or extraneous
elements or lack of cooperation would be readily apparent.

[FN131]. Carl Zeiss Stiftung v. Renishaw PLC, 945 F.2d 1173 (Fed. Cir. 1991).
[FN132]. Marston v. J.C. Penney Co., 353 F.2d 976, 986, 148 U.S.P.Q. 25 (4th Cir. 1965), cert. denied, 385
U.S. 974 (1966).
[FN133]. Porter v. Farmer's Supply Serv., Inc., 790 F.2d 882, 229 U.S.P.Q. 814 (Fed. Cir. 1986).
[FN133.1]. AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 57 U.S.P.Q.2d 1776 (Fed. Cir. 2001); Crystal
Semiconductor Corp. v. Tritech Microelectronics Int'l, Inc., 246 F.3d 1336, 57 U.S.P.Q.2d 1953 (Fed. Cir.
2001).
[FN134]. 35 U.S.C. § 112.
[FN135]. Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 25 U.S.P.Q.2d 1451 (Fed. Cir. 1993).
[FN136]. Id.
[FN137]. Chiuminatta Concrete Concepts Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 46 U.S.P.Q.2d 1752 (Fed.
Cir. 1998); Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 50 U.S.P.Q.2d 1161 (Fed. Cir. 1999).
[FN138]. In re Dossel, 42 U.S.P.Q.2d 1881 (Fed. Cir. 1997); Default Proof Credit Card Sys., Inc. v. Home De-
pot, U.S.A., Inc., 412 F.3d 1291 (Fed. Cir. 2005).
[FN139]. Kundupoglu, Yoncha Lynn, The Law of Means-Plus-Function Language (parts I and II), AIPLA Q.J.,
28:1 and 2, Winter (at 39-79) and Spring (at 141- 57), 2000.
[FN140]. In re Certain Pers. Computers, 224 U.S.P.Q. 270 (I.T.C. 1984).
[FN141]. In re Fuller, 1929 Dec. Comm'r Pat. 172, 388 Off. Gaz. Pat. Office 279 (Pat. Off. Bd. App. 1929).
[FN142]. In re Hallmann, 655 F.2d 212, 210 U.S.P.Q. 609 (C.C.P.A. 1981); In re Ludtke, 441 F.2d 660, 169
U.S.P.Q. 563 (C.C.P.A. 1971); In re Swinehart, 439 F.2d 210, 169 U.S.P.Q. 226 (C.C.P.A. 1971); In re Fuetter-
er, 319 F.2d 259, 138 U.S.P.Q. 217 (C.C.P.A. 1963).
[FN143]. In re Echerd, 471 F.2d 632, 176 U.S.P.Q. 321 (C.C.P.A. 1973).
[FN144]. In re Boller, 332 F.2d 382, 141 U.S.P.Q. 740 (C.C.P.A. 1964).
[FN145]. In re Halleck, 422 F.2d 911, 164 U.S.P.Q. 647 (C.C.P.A. 1970).
[FN146]. In re Ludtke, 169 U.S.P.Q. 563 (C.C.P.A 1971).
[FN147]. Greenberg v. Ethicon Endo-Surgery, 91 F.3d 1580, 1583-84, 39 U.S.P.Q.2d 1783 (Fed. Cir. 1996).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-95 § 6.5.4 Include Different Statutory Classes of Claims
Whenever possible it is advisable to include different statutory classes of claims in an application. This in-
creases the chance of catching an infringer and can increase the number of potential infringers. For example, a
new chemical composition can often lend itself to claims directed to methods of using the composition and
methods of making the composition. A new machine often can also be claimed with regard to the method of us-
ing the machine and the product produced by the machine.
Further, there are some significant advantages associated with method claims as compared other types of
claims. These include: [FN147.1]
(1) Method claims can have the breadth associated with functional language without the problems asso-
ciated with "means-plus-function" language.
(2) Methods claims do not need structural limitations.
(3) A method claim can protect the replacement part that is not patentable by itself so the competitor
selling the *6-96 replacement part can be sued for inducing or contributory patent infringement. Consider
claim 12 of U.S. Patent No. 6,052,903 for protecting a replaceable razor cartridge:
12. A method of connecting a replaceable razor cartridge to a handle in a proper orientation, com-
prising aligning a key structure on a handle connecting structure of said handle on one side of a connec-
tion axis but not the other side with a cutaway portion functioning as a keyway on a cartridge connect-
ing structure of said cartridge on one side of said connection axis but not the other side, moving said
handle connecting structure toward said cartridge connecting structure along said connection axis, mat-
ing said key structure on said handle connecting structure with said cutaway portion on said cartridge
connecting structure, and connecting said handle connecting structure to said cartridge connecting
structure.
(4) A method claim can be used to cover the performance achieved with the invented apparatus, inde-
pendent of the structure of the apparatus. An example of this is claim 1 of U.S. Patent No. 4,974,319, which
states:
A method of treating the blade of a razor head comprising applying an effective amount of a mix-
ture of a non-foaming lubricant and solubilizer via an aerosolization system directly to said razor blade
immediately before shaving such that shaving can be performed in the absence of first applying any
shaving preparation directly to the area to be shaved.
(5) Unauthorized importation of products made abroad using a process patented in the United States,
even when the product is not patented, can be *6-97 enjoined. [FN147.2] However, certain products are ex-
cluded from infringement, namely those materially changed by subsequent processes or those that become a
trivial and nonessential component of another product. To take advantage of this provision of U.S. law and
minimize exclusions, it is advisable to include in the patent application claims directed to all possible pro-

cesses that result in a material change of the product.

(6) There is no duty to mark under 35 U.S.C. § 287 for a patent containing only a method claim as op-
posed to a patent claiming a product, or both a method and a product. Since patentees frequently fail to
mark patented products, an issued patent containing only method claims--either as a result of compliance
with a restriction requirement or intentional prosecution strategy, such as by filing multiple applications-
-can allow for recovery of damages even in the absence of marking.
[FN147.1]. Some of these ideas are well presented in Julie R. Daulton, Five General Principles of Method
Claiming, AIPLA Oct. 2000 meeting, available at < www.merchantgould.com/attachments/65.doc>.
[FN147.2]. 19 U.S.C. § 1337(a) (ITC proceeding); 35 U.S.C. § 271(g) (federal court proceeding).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-97 § 6.5.5 Converting Process Claims to Apparatus Claims
In an application for a process patent, it is a good idea, whenever possible, to include claims directed to an
apparatus for practicing the claimed process. This is done to ensure that the patentee can sue a person who man-
ufactures machinery that can perform the process. For example, if the applicant has invented a new method for
making shoes, the party selling a machine to practice the process would not be a direct infringer; only the person
using the machine would directly infringe the patent. [FN148] Since most patentees do not *6-98 like to sue po-
tential customers, the problem of suing a customer is circumvented by having an apparatus claim in the patent
because with an apparatus claim it is possible to sue the competitor selling a machine for direct infringement.
The easiest way to do this is to change each step of the process claim into an apparatus claim by adding
"means for" language. For example, consider a process claim with the following steps:
• A method for manufacturing shoes comprising:
(a) retaining a shoe sole in a selected position;
(b) placing an upper on top of the shoe sole; and
(c) stitching the upper to the shoe sole.
This process claim can be easily converted into an apparatus claim by adding "means for" language for each
step. Such a claim would be read:
• A machine for manufacturing shoes comprising:
(a) means for retaining a shoe sole in a selected position;
(b) means for placing an upper on top of the shoe sole; and
(c) means for stitching the upper to the shoe sole.
Other dependent and independent apparatus claims can be drafted by specifying the "means for" language in
more detail.
[FN148]. The competitor may be sued for contributory infringement or for inducing infringement. See 35 U.S.C.
§ 271.
END OF DOCUMENT


Jeffrey G. Sheldon

*6-98 § 6.5.6 Adding Limitations to a Claim Without Narrowing the Claim
Although there is no conscious effort by the Patent Office to disallow short claims, it is only human nature
that the longer the claim, the more likely an examiner will believe that the claim is sufficiently narrow to be al-
lowable. Thus, it can be advantageous to add length to a claim without narrowing the claim. Another reason to
add "meaningless" limitations to a claim is that they may help avoid invalidity during subsequent litigation.
*6-99 Consider the following examples of techniques to apparently limit a claim, without affecting the
scope of the claimed subject matter.
Example 1. A new type of syringe that prevents air bubbles from being injected into a patient has been in-
vented. The claim can be lengthened by adding the following functional language without unduly narrowing the
claim: Structure A, B, C "for preventing injection of air bubbles into a patient."
Example 2. Add structure that is not critical to the claimed invention, but is inherent in its use. For ex-
ample, if the only foreseeable practical use of a new thermostat is in a toaster oven, at least some of the claims
should define the structure of the toaster oven including the thermostat.
END OF DOCUMENT


Jeffrey G. Sheldon

*6-99 § 6.5.7 Claim the Environment of the Invention
It is always desirable to have a high royalty base in litigation. One way to do this is by claiming the environ-
ment of an invention. Referring to the prior "toaster oven" example, a claim directed to a thermostat for a toaster
oven has an inherently smaller royalty base than a claim directed to a toaster oven that includes the patentable
thermostat. When negotiating a license or arguing damages before a jury, it would be better to work from a high
royalty base that includes the entire toaster oven.
As another example, most waterbed mattresses are used with waterbed frames, and many manufacturers
provide frames with the mattress. Therefore, a patent directed to a novel waterbed mattress should also include
claims for the combination of the frame and mattress to increase the possible royalty base.
END OF DOCUMENT


Jeffrey G. Sheldon

*6-100 § 6.5.8 Using Dependent Claims
§ 6.5.8.1 Strategic Use of Dependent Claims
Dependent claims are often overly used by new practitioners. A reasonable guideline to follow is that no in-
dependent claim should be the "parent" of many more than five dependent claims. If there are more than five de-
pendent claims, the dependent claims may be being misused or their subject matter should probably be placed in
additional independent claims.
Although theoretically a court and jury can uphold a dependent claim while finding its parent independent
claim invalid, such determinations are relatively rare. In general, even if dependent claims are separately argued
before a judge or jury, they tend to survive or fall along with the independent claims from which they depend.
Therefore, if any feature of a dependent claim is truly important and may be patentable in its own right, it is
strongly recommended that this feature be presented in an independent claim.
Dependent claims serve the following principal functions:
1. Dependent claims can be used to define the scope of the independent claim. [FN148.1]
Example 1. A claim directed to a stitching machine states that the machine comprises a widget. To make it
clear that there can be more than one widget, a dependent claim can state that the machine "comprises two wid-
gets."
Example 2. An independent claim states that element A is "proximate to" element B. To make it clear that
the independent claim does not require elements A and B to be in contact with one other, a dependent claim that
states "element A is in contact with element B" can be added.
Example 3. If the independent claim recites "at least four legs," separate dependent claims can recite "four
legs" and *6-101 "six legs." This makes it clear that the language "at least four legs" reads on four legs and any
number of legs greater than four legs.
Example 4. A process claim recites:

1. A method for manufacturing C comprising the steps of:
(a) melting compound A; and
(b) mixing compounds A and B together, thereby producing C from the reaction of A and B.
Dependent claims can be added to make it clear that the order of steps is immaterial. For example:
2. The method of claim 1 wherein the step of mixing takes place before the step of melting.
3. The method of claim 1 wherein the steps of mixing and melting occur simultaneously.

This use of dependent claims is based upon the doctrine of claim differentiation. According to the doctrine,
claims are presumed not to cover identical subject matter. Therefore, if a feature appears in a dependent claim,
according to this doctrine, the independent claim from which the dependent claim depends is not interpreted to
include this limitation. [FN148.2]
However, the doctrine of claim differentiation is just one factor that courts consider when interpreting a
claim. Thus the Federal Circuit has held that the doctrine cannot by itself restore to a broad claim an interpreta-
tion inconsistent with arguments made to the Patent Office regarding the scope of an independent claim.
[FN149]
*6-102 2. Dependent claims can be used to present subject matter that may be patentable even if the parent
independent claim is not patentable. When drafting a dependent claim of this nature, the practitioner should be
prepared to present an argument to the examiner for allowance of the dependent claim, where the argument is in
addition to the arguments presented for allowing the parent independent claim.
3. As discussed above, dependent claims depending on a parent claim containing a Markush group can be
used to present preferred versions of the invention. If arguments can be made for why the preferred version of
the Markush claim is patentable, then such a dependent claim should be included.
4. Dependent claims can be used to alleviate potential problems regarding indefinite claim language. For ex-
ample, if a claim recites an element that is "sufficiently long," a dependent claim can specify that the element is
"at least five inches long." The dependent claim is more definite and may avoid subsequent prosecution or litiga-
tion problems.
5. As a practical matter, practitioners need to satisfy many unsophisticated clients who believe that the value
of a patent is related to the number of claims rather than the breadth of the claims. Many clients brag about get-
ting a patent containing twenty-five claims without ever considering the breadth of each claim. Thus, dependent
claims can serve to keep the client happy!
6. Including an additional element or alternate structure in a dependent claim can avoid an argument in litig-
ation that, by failing to claim a particular combination, that combination was dedicated to the public. Under the
dedication rule, subject matter that was alternatively disclosed but unclaimed is deemed to have been dedicated
to the public. [FN150] *6-103 As a corollary to the dedication rule, courts have held that subject matter that
would have been foreseeable from the subject matter claimed is likewise dedicated. [FN151]
7. A method claim dependent on a composition or apparatus claim is a relatively inexpensive way to add a
method claim to an application. For example, a dependent claim directly to a method of using a mixer could
have the following format:
A method of mixing ingredients comprising the steps of:

(a) selecting the mixer of claim 1;
(b) adding ingredients A and B, in any order, into the mixer; and
(c) using the mixer, mixing A and B.
It is important that the claim be clearly a method claim, and not combine statutory classes. [FN151.1]
§ 6.5.8.2 Strategic Use of Multiple Dependent Claims
Multiple dependent claims have their advantages and disadvantages and should not necessarily be used in

every application.
Among the disadvantages of multiple dependent claims are the following:

1. There is an extra filing fee just for presenting a multiple dependent claim.
2. Each multiple dependent claim is considered for filing fee purposes as the number of claims to which
the dependent claim refers. For example, a multiple *6-104 dependent claim that reads "The article of any
one of claims 1- 5 . . ." is considered to be five dependent claims for purposes of calculating filing fees.
Thus, when multiple dependent claims are used in applications, the filing fee can mount up rapidly.
3. It becomes easy to be sloppy in claim drafting. There is a tendency to overuse multiple dependent
claims so that they inappropriately depend on other claims.
4. Most examiners will not determine the patentability of a multiple dependent claim separately for each
claim from which it depends. Thus, a multiple dependent claim will be allowed only if either its parent
claims are patentable or if the subject matter of the multiple dependent claim on its own is considered pat-
entable.
Advantages of multiple dependent claims include the following:

1. It is easier to understand the claim structure.
2. If the dependent claim needs to be changed, it only has to be changed once, rather than multiple
times. That reduces the cost of revising the specification or making amendments.
3. Multiple dependent claims save secretarial time, attorneys' time, and translation costs if the applica-
tion is filed in a foreign country.
4. Multiple dependent claims are commonly used in foreign countries. For those applications being filed
in foreign countries, it makes sense to use the multiple dependent claims up front rather than having to re-
vise the application before it is filed foreign.
Balancing the advantages and disadvantages of multiple dependent claims, it is recommended that multiple
dependent claims be used only for important dependent claims, such as those claims that are directed to features
of the invention that are independently nonobvious, or those claims containing*6-105 limitations the applicant
would be willing to include in the broadest claim in order to obtain a patent.
[FN148.1]. Harold Schoenhause v. Genesco, Inc., 440 F.3d 1284 (Fed. Cir. 2006).
[FN148.2]. Sunrace Roots Enter. Co. v. Sram Corp., 67 U.S.P.Q.2d 1438 (Fed. Cir. 2003); Amgen, Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003).
[FN149]. Fromson v. Anitec Printing Plates, Inc. 132 F.3d 1437, 45 U.S.P.Q.2d 1269 (Fed. Cir. 1997); ATD
Corp. v. Lydall, Inc., 159 F.3d 534, 48 U.S.P.Q.2d 1321 (Fed. Cir. 1998).
[FN150]. Miller v. Brass Co., 104 U.S. 350 (1881); Maxwell v. J. Baker, Inc. 86 F.3d 1098, 39 U.S.P.Q.2d 1001
(Fed. Cir. 1996), cert. denied, 117 S. Ct. 1244 (1997).
[FN151]. Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 44 U.S.P.Q.2d 1103 (1997).
[FN151.1]. IPIXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005) ("the system of claim
2 wherein . . . the user uses the input means . . ." is indefinite).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-105 § 6.5.9 Using Kit Claims
A very valuable type of claim to use for some inventions is a "kit" claim. Many products are sold unas-
sembled or contain a variety of parts that are used together. Kit claims are particularly valuable for those
products.
For example, a diagnostic product for detecting pregnancy can comprise two or three test tubes and particu-
lar reagents. Such an invention is typically claimed as a method for detecting pregnancy, or as a chemical com-
position if the reagents are novel. However, it is also appropriate to claim the invention as a kit because that is
how it is sold. A suitable claim would be:
• A kit for detecting pregnancy comprising:

(a) reagent 1;
(b) reagent 2 which when combined with reagent 1 produces . . .; and
(c) a container for combining reagent 1 and reagent 2 with urine, wherein the presence of the color
blue in the test tube, when reagents 1 and 2 are combined with urine, indicates that the urine donor is
pregnant.
Products that are sold as assemblages to be used by the consumer can be claimed as kits. For example, a pat-
ent directed to a pooper scooper could claim:
• A kit of parts for scooping poop from the ground comprising:
(a) a long handled scraper; and
(b) a long handled receptacle for receiving poop scraped from grass by the scraper.
*6-106 Inclusion of printed matter describing a method of using a kit is generally not of patentable signific-
ance, because there needs to be a new and unobvious functional relationship between the printed matter and an-
other portion of the kit. [FN151.2]
[FN151.2]. In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-106 § 6.5.10 Claim What Is Sold
It is extremely important that the claims cover what the client will be selling. It is remarkable how many
patents issue that fail to claim the commercial version of the client's product. It is important to always ask the in-
ventor what will be sold.
For example, consider a client in the business of selling a shaker for classifying sand where the customer
provides the container that is shaken by the shaker. At least some claims in the application should claim the
shaker apparatus without the container. Otherwise, a competitor selling the identical shaker mechanism, but with
no container, would not be a direct infringer (although possibly a contributory infringer or liable for inducing in-
fringement).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-106 § 6.5.11 Number of Claims--Avoid Undue Multiplicity
The application should present a "reasonable" number of claims, both because the PTO requires this, and to
keep filing fees reasonable. [FN152]
The following techniques are available to keep the filing fee reasonable, without adversely affecting the
scope of protection.
*6-107 1. If a restriction requirement is expected, limit dependent claims to those independent claims
expected to be elected.
2. Rewrite claims which ordinarily would be written as independent claims as dependent claims such
as:
Claim 2. A method of constructing the apparatus of claim 1 . . .

Claim 3. A method of heating a reaction comprising the step of selecting the apparatus of claim 1 . . .
3. Combine a number of features of relatively minor importance into one dependent claim, using a
format such as:
A method according to claim 1 that has one or more of the following characteristics:
A. . . .;
B. . . .; and
....
F. . . .
4. A similar approach can be used to minimize the number of independent claims, and still have all the
important features examined as independent claims. Such a claim can read:
1. An apparatus comprising:
A. element 1; and
B. element 2, where element 2 has at least one of the following characteristics:
(i) characteristic 1
(ii) characteristic 2; and
(iii) characteristic 3
The number of claims considered reasonable is determined on a case-by-case basis given the complexity and
quantity of patentable features. An unreasonable number of claims can be rejected on grounds of undue multipli-
city [FN153] if *6-108 (1) the excessive number of claims makes it difficult to understand what is claimed or (2)
duplicate claims that are substantially similar are presented. [FN154]
An excessively large number of claims can mislead the public by making the subject matter of the invention
and the breadth of the claims difficult to understand. [FN155] When the application contains an unreasonable
number of claims, the examiner has the discretion to reject all the claims without specifying with particularity

the grounds for rejecting each individual claim. For example, an application that recited 325 claims covering
seventy pages was held to be a "flagrant abuse" of the applicant's privilege to claim the invention in different
phraseology. [FN156] At the time of rejecting the claims, the examiner generally specifies the number of claims
that he or she considers reasonable in the circumstances to allow the applicant to select this number of claims
from the original application for further examination. [FN157]
Claims that are identical in scope can be rejected as duplicative. "The term 'about' has an ordinary meaning
of 'approximately' in the absence of a clear expression and description to the contrary." [FN158] For example, a
claim that differs from another claim only by the recitation of "two" elements rather than a "pair" of elements is
considered a duplicate claim. However, a claim that adds or changes even a small feature from any other claim
will generally not be rejected as duplicative. The difference can be as small as reciting an element by a different
name.
[FN152]. 37 C.F.R. § 1.75(b).
[FN153]. M.P.E.P. §2173.05(n).
[FN154]. Ex parte Birnbaum, 161 U.S.P.Q. 635 (Pat. Off. Bd. App. 1968).
[FN155]. See Carlton v. Bokee, 84 U.S. (17 Wall.) 463 (1873).
[FN156]. Ex parte McCullough, 1927 Dec. Comm'r Pat. 12 (Comm'r Pat. 1927).
[FN157]. M.P.E.P. § 2173.05(n).
[FN158]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

*6-109 § 6.5.12 Use of "About" and Other Terms of Approximation
Terms of approximation are frequently used in the claims when the invention does not lend itself to absolute
precision. For example, the word "about" is commonly used in claims where there are no numerical limitations,
to indicate that the precise number is not critical. Typical uses include:
• a temperature of from about 50° C to about 60° C
• a temperature of less than about 60° C
• at a pressure greater than about 2 atmospheres
• a distance of at least about 60 centimeters
Generally the use of the word "about" does not render a claim indefinite. The term "about" has an ordinary
meaning of "approximately" in the absence of a clear expression and description to the contrary. [FN158.1]
Moreover, use of "about" is helpful during litigation to broaden the scope of a claim. However, use of "about"
does create difficulties when prosecuting an application. It is more difficult to argue that a particular numerical
limitation is critical to the patentability of an invention when the word "about" is used. For example, if the prior
art teaches operating a process at 80° C and the claim uses the language "less than about 75° C," it is more diffi-
cult to argue for the criticality of the 75° C limitation than if the claim merely said "less than 75° C."
A claim requiring use of a bath having a cyanate content of between "about 25 and 40%" encompasses a
bath having a cyanate content in the range of 46% and 50%, [FN159] but the *6-110 phrase "about 40:1" does
not encompass a four-fold increase to 162.9:1. [FN160]
Use of "about" inevitably results in some ambiguity in a claim since it "avoids a strict numerical boundary
to the specified parameter." [FN161] It is clear that use of the word "approximately" broadens the scope of a
claim, [FN162] and accordingly, use of "about" likewise broadens a claim.
The use of "about" to broaden a claim term can backfire if it is not used throughout a claim. A numerical
limitation in a claim that does not use "about' has been narrowly construed when other numerical limitations in
the same claim used "about." [FN162.1]
The term "generally" can be used to impart a lack of precision to a claim, such as "generally parallel" envi-
sioning some amount of deviation from exactly parallel. [FN162.2]
The claim language "generally convex" means that a majority of points are convex. [FN162.3]
The term "substantially" can be a term of approximation or a term of magnitude. For example, the phrase
"substantially constant" can be language of approximation, while the *6-111 phrase "substantially below" can
signify language of magnitude, that is, not insubstantial. [FN162.4]

The term "substantial" can be a modifier that implies "approximate" rather than "perfect." Thus "substan-
tially flattened" requires neither a perfectly flat surface nor one that is flat within a manufacturing tolerance.
[FN162.5]
[FN158.1]. BJ Servs. Co. v. Halliburton Energy Servs. Inc., 338 F.3d 1368, 67 U.S.P.Q.2d 1692 (Fed. Cir.
2003); Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005).
[FN159]. Kolen Corp. v. Motor City Metal Treating, Inc., 440 F.2d 77, 169 U.S.P.Q. 77 (6th Cir.), cert. denied,
404 U.S. 886, 171 U.S.P.Q. 325 (1971).
[FN160]. Conopco, Inc. v. May Dep't Stores, 32 U.S.P.Q.2d 1225 (Fed. Cir. 1994).
[FN161]. Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217-20, 36 U.S.P.Q.2d 1225 (Fed. Cir. 1995) (a
molar ratio "about 5:1 to about 7:1" is not literally infringed by a ratio of 4:1, but is infringed under the doctrine
of equivalents).
[FN162]. Quantum Corp. v. Rodine, PLC, 65 F.3d 1577, 36 U.S.P.Q.2d 1162 (Fed. Cir. 1995) (change from "at
least 600 tpi" to "at least approximately 600 tpi" improperly broadened a claim during reexamination).
[FN162.1]. Jeneric/Pentron, Inc. v. Dillon Co., 205 F.3d 1377, 54 U.S.P.Q.2d 1086 (Fed. Cir. 2000).
[FN162.2]. Anchor Wall Sys. v. Rockwood Retaining Walls, 340 F.3d 1298, 67 U.S.P.Q. 2d 1865 (Fed. Cir.
2003).
[FN162.3]. N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005).
[FN162.4]. Deering Precision Instruments v. Vector Distribution Sys., 347 F.3d 1314 (Fed. Cir. 2003).
[FN162.5]. Playtex Prods., Inc. v. Proctor & Gamble Co., 400 F.3d 901 (Fed. Cir. 2005).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-111 § 6.5.13 Use of Numerical Limitations
§ 6.5.13.1 Avoid Precise Numbers
It is important to avoid overly precise numbers. For example, numbers should not be carried to decimal
points more accurate than is reasonable. If an inventor is operating a claimed process at a temperature between
30° C and 40° C, the claim should not state "from 30.0° C to 40.0° C." By adding the extra decimal, such a
claim has more limited scope under the doctrine of equivalents than if the claim merely stated "from 30° C to
40° C."
§ 6.5.13.2 Use Functional Language in Lieu of Numerical Limits
Whenever possible, it is better to use functional limitations in claims rather than numerical limitations.
Functional limitations have the advantages of clearly defining the invention, being hard to design around, and
inherently excluding nonoperative versions of the invention. For example, it is better to use the language "heat-
ing the ingredients sufficiently long that substantially all the ingredients are reacted" than the language "heating
the reactants for at least two hours." A reason for this is that later developments in the *6-112 field may discover
a catalyst that allows the reaction to occur in just one hour.
However, there is an inherent level of indefiniteness in the use of functional language. Thus, it is recom-
mended that a dependent claim be used to quantify the functional limit. For example, an appropriate dependent
claim to quantify the limit "sufficiently long" is "The method of claim 1, wherein the step of reacting the in-
gredients comprises reacting the ingredients for at least one hour."
§ 6.5.13.3 Numerical Limitations Can Require Criticality
If the only difference between a claimed invention and the prior art is differences in numerical limits, where
the numerical limits are overlapped by the prior art, it can be expected that the Patent Office will find the
claimed invention prima facie obvious and so reject the claimed invention. [FN162.6] To overcome the rejec-
tion, it is generally necessary to show the criticality of the numerical limitation, such as by showing unexpected
results relative to the prior art. [FN162.7]
Accordingly, it generally makes no sense to include a series of independent or dependent claims that differ
from the prior art only in numerical limitations unless the inventor is prepared to show the criticality of the nu-
merical limitations. Moreover, it is recommended that a description of the criticality be included in the specifica-
tion.
[FN162.6]. M.P.E.P. § 2144.05.

[FN162.7]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

*6-112 § 6.5.14 Avoid the Doctrines of Patent Exhaustion and Implied License
Under some circumstances, in view of the doctrine of patent exhaustion and implied license, it is advisable
to file two patent applications rather than one application, when *6-113 the claims are directed to (i) an article or
composition, and (ii) a method of using the article or composition. According to those doctrines, a purchaser of
the patented article from the owner of the patent may also be able to use the patented method, either under an
implied license or as a result of "patent exhaustion." The cases dealing with these doctrines usually are involved
with a single patent. These doctrines apply even if the patent in question has claims directed to a method of use,
where the article or composition is not capable of use other than in the patented method.
However, if there are two separate patents, there is a greater possibility of a court's finding that the article or
composition has uses other than in the patented method. Such a finding would allow the seller of the patented
article or composition to prevent use in the patented method, or collect a royalty for their use in the patented
method. Thus it can be desirable to have two patents, either by initially filing two applications or by not contest-
ing a restriction requirement.
END OF DOCUMENT


Jeffrey G. Sheldon

*6-113 § 6.5.15 Carefully Use "a" and "an"
The indefinite articles "a" and "an," when used in open-ended claims containing the transitional phrase "com-
prising," generally mean "one or more." [FN163] However, there are court decisions where the indefinite article
"a" has been interpreted to mean "one, and only one." Thus the clause "a morphologically identifiable chromo-
some or cell nucleus" was interpreted to mean only one chromosome or cell *6-114 nucleus, and not more than
one. [FN164] Similarly, "a metallic gas-confining chamber" was interpreted to recite one chamber and not one
or more than one chamber. [FN165] Likewise, the phrases "a cup" and "the cup" did not mean "one or more than
one" but only "one." [FN166] Also, the claim language "a solution consisting of water and a sodium phosphate,"
because of the presence of "consisting," was interpreted to be limited to a single sodium phosphate. [FN166.1]
Accordingly, exclude the term "a" from the claims in order to reduce ambiguity, unless an interpretation
limiting the claim to only one of the elements is acceptable. Otherwise, use "at least one," "one or more," or sim-
ilar language.
If the language "comprising at least one" were used instead of "comprising," it may not have been neces-
sary, in at least one reported case, to appeal to the Federal Circuit. [FN166.2]
[FN163]. Crystal Semiconductor Corp. v. Tritech Microelectronics Int'l, Inc., 246 F.3d 1336, 57 U.S.P.Q.2d
1953 (Fed. Cir. 2001); KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 55 U.S.P.Q.2d 1835 (Fed. Cir.
2000); Tate Access Floors, Inc. v. Interface Architectual Res., Inc., 279 F.3d 1357 (Fed. Cir. 2002); CollegeNet,
Inc. v. Applyyourself, Inc., 418 F.3d 1225 (Fed. Cir. 2005).
[FN164]. Regents of the Univ. of Cal. v. Oncor Inc., 44 U.S.P.Q.2d 1321 (N.D. Cal. 1997).
[FN165]. Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 43 U.S.P.Q.2d 1545, (Fed. Cir. 1997), petition for reh'g
granted and decision clarified, 131 F.3d 1009 (Fed. Cir. 1997).
[FN166]. Insituform Techs., Inc. v. Cat Contracting, Inc., 99 F.3d 1098, 40 U.S.P.Q.2d 1602 (Fed. Cir. 1996).
[FN166.1]. Norian Corp. v. Stryker Corp., 363 F.3d 1321 (Fed. Cir. 2005).
[FN166.2]. Scanner Techs. Corp. v. ICOS Vision Sys. Corp. N.V., 365 F.3d 1299 (Fed. Cir. 2004).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-114 § 6.5.16 Avoid 35 U.S.C. § 287(c)
Section 287(c) of 35 U.S.C. limits the liability of medical practitioners and others with regard to infringe-
ment of medical and surgical procedure patents. This section can vitiate the value of patents for medical proced-
ures. Among the techniques that may be effective to avoid the impact of that provision are:
1. Recite in the claim the use of a composition of matter where use of the composition directly contrib-
utes to achievement of the objective of the claimed method. *6-115 For example, in a surgical procedure
claim, include in the claim a treatment with an antibiotic, and state in the specification that an objective of
the invention is to ensure that the surgical technique is conducted to minimize the opportunity for infection.
2. Recite in the claim a device that has no substantially noninfringing use, so that manufacturers of the
device can be liable for contributory infringement.
END OF DOCUMENT


Jeffrey G. Sheldon

*6-115 § 6.5.17 Beware of "Including"
The transitional phrase "comprising" should be used rather than "including." Although most practitioners
would assume the two terms have the same meaning, the Federal Circuit has held otherwise. Thus a claim that
required an air inlet cover "including" means for increasing air pressure was interpreted to require that the
"means" element be in an "attachment relationship" to the cover. [FN167] Such a narrow interpretation of a
claim would most likely have been avoided by using "comprising" instead of "including."
[FN167]. Toro Co. v. White Consol. Indus. Inc., 199 F.3d 1295, 53 U.S.P.Q.2d 1065 (Fed. Cir. 1999).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-115 § 6.5.18 Claim All Disclosed Embodiments
It is important to claim all disclosed embodiments in an application. The Federal Circuit has held that the
doctrine of equivalents does not extend to what is disclosed but not literally claimed. [FN168] Thus, if the
claims in an issued patent literally *6-116 cover only one of two embodiments, the second embodiment may be
dedicated to the public. [FN168.1] This can be avoided by including claims directed to all embodiments dis-
closed as dependent claims from a generic claim.
Another reason why it is important to claim all disclosed embodiments in the application is the resurgence
of the doctrine of prosecution history laches. An undue delay in presenting claims, at least in extreme circum-
stances, can result in rejection by the Patent Office of a pending application based on this doctrine, [FN168.2]
and can result in the application of laches, and effectively unenforceability of a patent in a litigation context.
[FN168.3]
Another reason for claiming all disclosed embodiments and versions of the invention is to elicit a restriction
requirement, when appropriate. If there is a restriction requirement, a subsequent patent directed to restricted out
claims is not subject to a double patenting rejection under 35 U.S.C. § 121. However, if the claims of a sub-
sequent application were not presented in the original application, 35 U.S.C. § 121 does not immunize the sub-
sequent patent from a double patenting rejection. [FN168.4]
[FN168]. Toro Co. v. White Consol. Indus., Inc., 383 F.3d 1326 (Fed. Cir. 2004) (the disclosure-dedication rule
does not require that the description of the unclaimed feature satisfy 35 U.S.C. § 112); PSC Computer Prods.,
Inc. v. Foxconn Int'l, Inc., 355 F.3d 1353 (Fed. Cir. 2004) (patentee dedicated plastic clips to the public by ex-
plicitly claiming only clips made of metal while disclosing the prior art included clips made of plastic); Maxwell
v. J. Baker, Inc., 86 F.3d 1098, 39 U.S.P.Q.2d 1001 (Fed. Cir. 1996); cf. YBM Magnex, Inc. v. Int'l Trade
Comm'n, 145 F.3d 1317, 46 U.S.P.Q.2d 1843 (Fed. Cir. 1998) (limiting Maxwell to its facts); but see Johnson &
Johnson Assocs., Inc. v. R.E. Serv. Co., 285 F.3d 1046 (Fed. Cir. 2002) (apparently overruling YBM Magnex).
[FN168.1]. Pfizer Inc. v. Teva Pharms. USA, Inc., 429 F.3d 1364 (Fed. Cir. 2005) (disclosure-dedication rule
against recapturing claimed subject matter using the doctrine of equivalents applies only if the disclosed but un-
claimed subject matter is identified as an alternative to a claim limitation).
[FN168.2]. In re Bogese, 303 F.3d 1362 (Fed. Cir. 2002).
[FN168.3]. Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found., 277 F.3d 1361 (Fed. Cir.), cert.
denied, 537 U.S. 825 (2002); after remand, 2004 WL 161331 (D. Nev. Jan. 23, 2004).
[FN168.4]. Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373 (Fed. Cir. 2003).

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Jeffrey G. Sheldon

*6-117 § 6.5.19 Include Ambiguous Claims
Any litigator trying to sue on a patent, and any patent attorney trying to write a noninfringement opinion let-
ter, will tell you that it is best to have claims in a patent with some ambiguity. Of course it is important to have
some nonambiguous claims in the patent, so that at least some of the claims will definitely survive a 35 U.S.C. §
112 indefiniteness challenge. Once a practitioner knows how to write nonambiguous claims, the next challenge
is to intentionally write ambiguous claims. To make life more difficult for infringers, consider the following
strategies to add ambiguity to the claims:
(1) Use means-plus-function clauses, since these clauses are interpreted to cover the structure in the
specification that performs the function, and equivalents thereto. The ambiguity is clear in the statutory
definition, since there can be an issue as to exactly what structure in the specification performs the function.
Also, exactly what is "equivalent" raises difficult-to-answer issues.
(2) Use "step for" claims for the same reason one would use "means for" claims.
(3) Use claims with functional limitations comparable to the "means for" language.
(4) Include some structure in the "means for" clauses so it is not clear whether the clause is a means-
plus-function clause.
(5) Leave the word "means" out of "means-plus-function" clauses so it is not clear that the clause is a
means-plus-function clause.
(6) Call the same element different things in the specification.
(7) Use different terms in the claims for the same element.
*6-118 (8) Use the same term in the claims to refer to different elements.
(9) Use words of ambiguity such as "substantially" and "about."
(10) Use ranges without bottom limits or ranges without top limits.
(11) Use "having" and "composed of" as transitions instead of "comprising" or "consisting essentially
of" because the former transitions do not have a definite meaning without reference to the specification.
(See § 6.3.4.)
(12) Include limitations in the preamble that are not repeated in the body of the claim. (See section
6.3.3.2.)
(13) Do not organize the claims with paragraphs and subparagraphs.
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Jeffrey G. Sheldon

*6-118 § 6.5.20 Claim to Avoid Festo
The Supreme Court in Festo [FN168.5] created challenges for the patent practitioner. According to Festo,
when there is prosecution history estoppel relating to a claim element such as by narrowing the claim element to
avoid prior art, the availability of the doctrine of equivalents is very limited. A difference between the charged
infringement and the literal meaning of a claim may qualify for equivalents (an insubstantial difference) when:
(1) The equivalent was unforeseeable at the time of the application; or
(2) There is some other reason suggesting that the patentee could not reasonably be expected to have
described the insubstantial substitute in question.
*6-119 To avoid Festo it is necessary to avoid prosecution history estoppel, or at least make it unclear
whether or not prosecution estoppel applies. It is beyond the scope of the book to discuss prosecution strategies
to avoid Festo. However, there are some initial claiming strategies available that may make it possible to avoid
Festo. These are:
(1) Instead of claiming a genus, claim every species of the genus independently. As to unamended, is-
sued species claim, there would be no prosecution history estoppel.
(2) Include "means-plus-function" and "step-for" elements because a literal infringement analysis of
such an element includes an "equivalents" analysis under 35 U.S.C. § 112.
(3) Claim all the equivalents of every claim element so there is no need to rely on the doctrine of equi-
valents.
(4) Be sure that the claims do not inadvertently cover the prior art, but only claim up to the prior art to
avoid amendments during prosecution. It may be better when asserting a patent to have the doctrine of equi-
valents available for a narrow claim than no doctrine of equivalents being available for a relatively broad
claim.
(5) Submit multiple independent claims so that some claims can issue without amendment.
(6) Include claims of overlapping scope. For example claim A can have a broad range for pH and a nar-
row range for temperature, and the reverse can be present in claim B. With this claim structure, it can be dif-
ficult to determine if prosecution history estoppel applies if claim A is cancelled, because of the overlapping
coverage provided by claim B.
*6-120 (7) Carefully avoid informalities such as ambiguous language or missing antecedents so the
claims do not have to be amended.
(8) If the claims of the application will need amendment, particularly if the application originates over-
seas, file a preliminary amendment as part of the original disclosure [FN168.6] so any narrowing of the
claim may not amount to prosecution history estoppel.
[FN168.5]. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 122 S. Ct. 1831 (2002).
[FN168.6]. 37 C.F.R. § 1.115(a); see also 37 C.F.R. § 1.205(a).

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Jeffrey G. Sheldon

*6-120 § 6.5.21 Do Not Include Theory in the Claims
It is not uncommon to include the theory behind why an invention works in the specification. However, the
theory should not work its way into the claims. If the theory turns out to be wrong, then the claims may be inval-
id for including an inoperable or impossible claim limitation. [FN168.7]
[FN168.7]. EMI Group N. Am., Inc. v. Cypress Semiconductor Corp., 60 U.S.P.Q.2d 1423 (Fed. Cir. 2001).
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Jeffrey G. Sheldon

*6-120 § 6.5.22 Carefully Use Alternative Language
Carefully use alternative language such as "A or B" or a Markush group in the claims. If one of the alternat-
ives is anticipated by the prior art, then the entire claim is invalid. [FN168.8] It is safer to put each alternative in
its own claim, either as an independent claim, or by a series of dependent claims.
A difficulty with the expression "A or B" is that it can be interpreted to mean: (i) either A or B, but not
both; or (ii) A or B, or both A and B. To avoid an ambiguity, if the former is meant, use language such as "only
one of A and B." If the latter *6-121 is meant, use language such as "an element selected from the group consist-
ing of A, B, and combinations thereof." [FN168.9]
[FN168.8]. Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001). Of course, if an alleged infringer performs just one of
the alternatives, there is infringement. Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304 (Fed. Cir. 2002).
[FN168.9]. Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 60 U.S.P.Q.2d 1135 (Fed. Cir. 2001)
("magnitude or frequency" does not include both magnitude and frequency).
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Jeffrey G. Sheldon

*6-121 § 6.5.23 Use a Dictionary When Drafting Claims
Exactly what a claim means is uncertain until the claim has been interpreted by a court. Accordingly, claims
should be drafted with a dictionary in hand, and any important word in the claim should be compared to the dic-
tionary definition. If none of the dictionary definitions is in accord with what the term is supposed to mean, or if
there are multiple alternative definitions, only one of which is satisfactory, it is strongly recommended that
either a different term be chosen, or the meaning intended by the term be explicitly defined in the specification.
[FN168.10]
[FN168.10]. See section 7.5.10.3.1 on defining terms in the specification.
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Jeffrey G. Sheldon

*6-121 § 6.5.24 Avoid Divided and Distributed Claims
A "divided claim" is a claim that is not infringed by a single entity, which can occur with claims in the field
of computer networking, where a process can involve steps performed both on the client side and on the server
side. A "distributed claim" is a claim directed to a method or a system where the steps of a patented process can
occur in different locations, including steps performed outside the United States. It is desirable to avoid both
situations in view of the difficulty of finding a single person liable for infringement. [FN168.11] As a specific
example of a strategy to avoid this problem, consider an invention involving communication between a server
and a client. Instead of having the step of a client "transmitting a request to a server," have the step *6-122 "re-
ceiving a request from a client." This avoids geographic problems if the server is in the United States, even if the
client is overseas. Similarly, a claim directed to the client side of the transaction provides for inducing infringe-
ment in the United States even if the server is located overseas.
Method claims provide particular problems with regard to distributed claims. In order for there to be in-
fringement of a method claim, it is necessary that all of the steps be performed within the United States or its
territories. However, a system claim can be infringed even where a portion of the system was used outside the
United States. [FN168.12]
[FN168.11]. See Memley et al., Divided Infringement Claims, AIPLA QUARTERLY JOURNAL, 33:3, at
255-84.
[FN168.12]. NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 75 U.S.P.Q.2d 1763 (Fed. Cir. 2005).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-122 § 6.5.25 Drafting Claims to Avoid Restriction Requirements
The Patent Office frequently issues restriction requirements, claiming that there are multiple inventions and
multiple species in a patent application. In view of the high cost of government fees for filing a patent applica-
tion, as well as the high cost of maintenance fees for issued patents, in most cases it is better for a client to have
all patentable claims issue in a single patent, rather than multiple patents. Through proper claim drafting, it may
be possible to avoid restriction issues.
According to 35 U.S.C. § 121, for a restriction requirement to be proper, there must be two or more "inde-
pendent and distinct" inventions. However, the Patent Office interprets "and" to mean "or." Accordingly, if there
are two or more independent or distinct inventions, the Patent Office will often issue a restriction requirement.
The term "independent" means there is no disclosed relationship between claimed inventions. Even if two or
more inventions are related, that is, not independent, they are distinct if the *6-123 inventions are not connected
in at least one of design, operation, or effect, and where at least one invention is patentable (novel and nonobvi-
ous) over the other (even though they may be unpatentable over the prior art). [FN168.13]
The following tips may be helpful to avoid a restriction requirement.

1. Include a linking claim in the application. A linking claim is a claim that reads on various distinct in-
ventions. For example, a "method of making and using XYZ" links claims directed to a method of making
XYZ and a claim directed to a method of using XYZ. If a linking claim is allowable, even if there was an
earlier restriction requirement, the applicant is entitled to retain in the application claims directed to the
nonelected invention or inventions. [FN168.14]
2. Limit the number of claims in the application. The greater the number of claims, the more likely that
an examiner will issue a restriction requirement to avoid being overburdened. For example, do not include a
full set of dependent claims from each independent claim. If they are really needed, usually they can be ad-
ded after a Notice of Allowance by Rule 312 Amendment.
3. Write various claims of different statutory classes as dependent claims from the main claim. For ex-
ample, a claim set that might avoid a restriction requirement has the following form:
1. A chemical compound having features . . . .
2. A method of making the chemical compound of claim 1.
*6-124 3. A method of using the chemical compound of claim 1.
4. A mixture including the chemical compound of claim 1.
5. A kit including the compound of claim 1.
4. Consult the classification index when claim drafting. One of the factors considered when determining
if a restriction requirement is proper is the burden on the examiner, and if a search in different classes is re-
quired, that is evidence that there is a great burden on the examiner. [FN168.15]
5. For a Markush claim, have members of the group be few in number and closely related so that a

search and examination of the entire claim can be made without serious burden. [FN168.16]
6. Review M.P.E.P. § 806.05 during claim drafting. This section specifies when the examiner may or
may not restrict with respect to a variety of related inventions.
[FN168.13]. M.P.E.P. § 802.01.
[FN168.14]. M.P.E.P. § 809.
[FN168.15]. M.P.E.P. § 803(II).
[FN168.16]. M.P.E.P. § 8.03.02.
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Jeffrey G. Sheldon

*6-124 § 6.6 Claim Deficiencies--What Not to Do
This section presents some of the more common errors in claim drafting. As a practical guide to avoiding
these errors, a checklist is provided as Exhibit 6-13, and two patent agent exams containing poorly drafted
claims are provided as Exhibits 6-14 and 6-15. The exhibits include a section that criticizes these claims.
PLIREF-PATAPP s 6.6
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Jeffrey G. Sheldon

§ 6.6 Claim Deficiencies--What Not to Do
*6-124 § 6.6.1 Use of Inconsistent Terminology
Consistent terminology should be used throughout the claims. A single element should not have different
names in *6-125 the claims. One way to ensure the use of consistent terminology is to label the drawings with
the name of each element before attempting to draft the claims and use that terminology for the claims.
However, inconsistent terminology can be used to the advantage of the patentee to change the scope of the
claims. For example, if the same element is referred to as "bar" and "lever" in separate claims, the scope of each
claim is slightly different. Inconsistent terminology should be used consciously and not as a result of sloppy
claim-drafting practice.
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Jeffrey G. Sheldon

*6-125 § 6.6.2 Wrong Verb Form
The form of the verb used in the transition between the preamble and body must comply with the rule that
the claim is a single sentence.
Example 1. "What is claimed is: A pencil comprises . . . (parts A and B)" does not form a complete sen-
tence because the form of the verb "comprises" is incorrect. Instead, the claim should read, "What is claimed is:
A pencil comprising . . . (parts A and B)," which uses the correct verb form.
Example 2. "A suction cleaner includes a . . ." is incorrect. The proper form of the verb is "including."
Maintaining the proper verb form is easily accomplished by selecting a single verb style, such as "ing" or
"es," and using the same style consistently throughout the claim. The verb form chosen preferably is in the
present tense unless a past or future event is being described.
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Jeffrey G. Sheldon

*6-125 § 6.6.3 Lack of Antecedent Basis, Support, or Both
§ 6.6.3.1 Antecedent Basis in the Claim
One of the most common problems found in claims of novice patent writers is lack of antecedent basis in
the claims. *6-126 Every element in a claim must be properly introduced before the element can be modified or
qualified. For example, the qualification "the rear pair of wheels" is improper if the rear wheels are not previ-
ously introduced in the claims. Similarly, a statement of cooperation between two elements such as "rotating
cam connected to the gear . . ." is improper if the gear is not previously introduced.
To put it another way, the definite articles "the," "said," and "such" cannot be used unless the following
noun has already been introduced in the claim. Whenever a definite article is used in a claim before an element
of the claim, check to be certain the exact same element has already been introduced in the claim.
However, a claim having a key element lacking an antecedent basis can still be valid if the claim "is not in-
solubly ambiguous." [FN168.17]
If a claim is a dependent claim, the antecedent basis can be found in the dependent claim or any claim upon
which the claim is dependent, since a dependent claim incorporates by reference all of the claims from which it
depends.
If a plurality of identical elements is present, the elements should be introduced in plural to allow for sub-
sequent independent claims to limit or distinguish between the elements introduced as a plurality. [FN169]
Therefore, if there are two levers in an invention, they should be defined in the claims as "two levers," or "a
plurality of levers," or "first and second levers," or "at least two levers," etc.
Modification or qualification of elements must be properly introduced. For example, if "a gear" has been in-
troduced, a qualification describing the material used to fabricate the *6-127 gear should be separately intro-
duced, as in "the gear is plastic" or "the gear is comprised of plastic." A reference to the gear as "the plastic
gear" without first defining the gear being plastic is an improper indirect limitation. [FN170]
§ 6.6.3.2 Antecedent Basis in the Specification
The claims can lack antecedent support in the specification if

(1) an element introduced in the claims is not described at all in the specification,
(2) the description of the element in the claim is inconsistent with that provided in the specification,
(3) the language used to describe an element in the claim is misdescriptive, or
(4) it is not clear which of several elements described in the specification is referred to in the claim.

All terms and phrases used in the claims must find "clear support or antecedent basis" in the description so that
the meaning of the terms in the claims can be ascertained without ambiguity. [FN171]
To satisfy the requirement that the specification support the claims, every element or connection recited in
the claim must be derived from some corresponding element or connection that is described in greater detail
within the specification or drawings. An effective way of verifying antecedent support is to check off, word by
word, each element or connection within the claims, as supporting language is found in the specification. If the
language is missing in the specification, it should be added to the specification or the language in the claim
should be changed. For example, if a rivet-type fastener is used in an embodiment of the invention and the
*6-128 applicant wishes to broadly claim "fastener" or "fastening means," the specification should describe the
structure as: "a fastener, such as a rivet 10. . . ."
Once a particular name is selected for an element, the same name should be consistently used in both the
specification and the claims to identify the element. For example, if a container is called "a box" in the claims, it
should not be called "a holder" in the specification. Similarly, if a distinguishing adjective is used to differenti-
ate between similar elements, such as "a base rotating member and a connector rotating member," the same ad-
jective should be used consistently.
Occasionally, a decision is made to rename an element after the patent application is written. For example,
the inventor may wish to change the name of an element that was originally "a lever" to "a bar." With modern
word processing programs, such a change is relatively easy. Alternatively, the element can be first introduced in
the specification as "a bar, also referred to below as a lever." This technique requires fewer changes in the spe-
cification and prevents subsequent problems that may arise from an inadvertent, incomplete substitution.
§ 6.6.3.3 Antecedent Basis in the Drawings
The drawings must also support the claims by presenting every element claimed. [FN172] An effective tech-
nique for verifying antecedent basis in the drawings is to take a set of drawings and label the drawing using the
claimed elements. If an element in the claim cannot be found in the drawings, either the element should be re-
moved from the claim, or the drawing should be modified.
[FN168.17]. Energizer Holdings, Inc. v. Int'l Trade Comm'n, 435 F.3d 1366 (Fed. Cir. 2006) (even though "said
zinc anode" lacked antecedent basis, the claims were not unclear or ambiguous).
[FN169]. Ex parte Moelands, 36 U.S.P.Q.2d 1474 (Pat. Off. Bd. App. 1987).
[FN170]. See M.P.E.P. § 2173.05(e).
[FN171]. 37 C.F.R. § 1.75(d).
[FN172]. 37 C.F.R. § 1.83(a).
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Jeffrey G. Sheldon

*6-129 § 6.6.4 Indefiniteness
A vague or indefinite claim can be rejected under 35 U.S.C. § 112 if it does not "particularly point out and
distinctly claim" the invention. The claims must clearly delineate the scope of the invention without ambiguity
to prevent innocent infringement by the public and to provide a distinct basis for the examiner to establish the
patentability of the invention. [FN173]
The scope of the invention claimed must be understandable to the ordinary person skilled in the art of the
invention. [FN174] The degree of precision required in the claim is a flexible standard. [FN175] For example, a
claim for three-wheeled personal mobility vehicle was found invalid for indefiniteness with regard to the phrase
"removably" connected. The court held the specification did not define "removably," and the patentee's connec-
tion that "removably" refers to a connection which can be severed without use of tools was not supported either
by a dictionary definition or the patent itself. Therefore, the claim, in view of the specification, was held not to
be sufficiently definite to convey the scope of what was claimed to those skilled in the art. [FN176]
It is against the policy of the patent statutes to bar patent protection for inventions that are incapable of pre-
cise definition. [FN177] Consequently, the courts are lenient when the claims are as precise as the subject of the
invention permits. [FN178] On *6-130 the other hand, "vague and imprecise terms in a patent afford the pat-
entee an opportunity, after issuance of the patent, to define the claims in a way that is best suited to maximize
the patentee's patent monopoly." [FN179] Attempts to "corral the art by use of comprehensive indefinite terms"
[FN180] are frowned upon and construed against the patentee.
For example, in Georgia-Pacific, [FN181] the court allowed indefinite language (italicized below) because
the nature of the invention and the nature of the variables involved precluded objective quantification:
1. As a new article of manufacture a plywood panel having a face ply . . ., the exposed surface of said
face ply having a plurality of substantially continuous grooves of random depth over the surfaces, but each
groove being of the same depth throughout its length, frequent grooves being of material depth to pass
through any hard growth layer encountered, said grooves extending substantially lengthwise of the grain in
said ply, and generally across its width, and being sufficiently closely spaced to localize within the individu-
al ribs or groups of ribs the normal stresses arising from shrinking, expanding and the like . . .
The court held that the number, size, and configuration of the grooves; the size of the ribs; and the depth of
the grooving were all variable within a defined set of limits. The infinite permutations of the variables within
those defined limits precluded a more definite statement of those limitations. [FN182]
*6-131 In another case, a claim for a light bulb filled with "dry nitrogen at a pressure materially in excess of
that corresponding to 50 millimeters of mercury" and containing "a filament of tungsten of large effective dia-
meter" was held sufficiently definite. [FN183] The court held that the dimensions of the filament must be pro-

portioned to the designed wattage as determined from rules that are familiar to a competent electrical engineer.
[FN184]
On the other hand, a claim that is so peculiarly worded that it becomes incomprehensible in its totality is in-
definite even if each element of the claim is properly defined in the specification. For example:
• A shrimp vein remover, comprising: hook-like vein-engaging means, shrimp moving means operat-
ively associated with said vein-engaging means, and means associated with at least one of said above-named
means for effecting relative movement there between.
The court invalidated this claim, holding that it failed to define the scope of the invention with certainty be-
cause the structural and functional connections in the claim were incomprehensible. [FN185] It is unclear how,
why, or for what purpose the shrimp-moving means is "operatively associated" with the vein-engaging means.
Further, the claim failed to define how the shrimp is deveined.
In contrast, the following more specific claim was held valid in the same case:
*6-132 • A shrimp vein remover comprising: a supporting member, a lip projecting at an acute angle
from the supporting member and having a smooth rounded free edge for engaging beneath the vein of a
shrimp and for wedging the vein between the lip and the supporting member, and means operatively associ-
ated with said supporting member for relatively moving the shrimp with respect to said member to cause
separation of the vein from the shrimp meat.
§ 6.6.4.1 Words of Degree and Relational Terms
Words of degree and relational terms are red flags in a claim as creating potential problems of indefinite-
ness. However, they are not necessarily indefinite. They do not render claims indefinite when they are defined in
the specification, [FN186] or if they are used in commercial practice to define tolerance levels or qualities with
sufficient specificity. [FN187] Thus, terms such as "about," "sufficient to enhance," "slight excess," "substan-
tially spare," "substantially constant," [FN187.1] "normally empty," "heat-insulating," and "at least substantially
hot" can be acceptable. Qualifiers such as "resilient" or "flexible" are also usually accepted as terms that define a
particular quality with a reasonable degree of precision.
Among terms that are usually unacceptable, unless clearly defined in the specification, are: large, small, big,
tall, short, high, fast, quick, and long. Contrarily, comparative expressions are generally acceptable, that is, lar-
ger than, smaller than, faster than.
*6-133 However, the following terms were held to be indefinite because of inadequate guidance in the spe-
cification: "relatively flat," "non-reinforcing condition," "length of the order of 5 mm," "relatively small," "relat-
ively shallow," "substantial portions at least," "nearly flat a substantial part," "generally parallel," and "major
portion." [FN188]
A claim that has two plausible interpretations, each of which is definite and clear in scope, is not indefinite
per se. This is a problem of claim interpretation for the court, [FN189] which must determine whether the cor-
rect version would be discerned by one skilled in the art. [FN190] In Hybritech, a claim referred to minimum "af-
finity" of antibodies. Although the claim did not specify whether the minimum affinity referred to "functional
affinity" or "intrinsic affinity," the claim was upheld because the evidence indicated that "someone tutored in the
art would understand it to mean functional affinity." Nevertheless, the application should not have been written
so that there were two plausible interpretations. That was poor claim drafting. The particular meaning of "affin-
ity" should have been defined in the specifications, because the indefiniteness in the claim increased the expense

of litigating the patent.
Words of degree, relational terms, and ranges can create problems when used in claims to vaguely define
some quantity that is not defined with sufficient specificity within the claims or specification. For example, it
was held that "about 6%" renders the claim indefinite since nothing defines the range and nothing indicates why
6% is critical. [FN191] Similarly, *6-134 a process claim that defined the amount of acid required as the amount
necessary to achieve selective action and polymerization under refrigeration was indefinite, because it defined a
quantity by a desired end result and because of the lack of a precise refrigeration temperature range. [FN192]
The court held that "there are no critical limits which set off the new results claimed."
Comparatives, such as "thick," "heavy," or "small," can be considered vague and indefinite. This form of in-
definiteness can be cured by relating the comparative property to some definite external standard. For example,
"smaller than the external arm," or "having a specific gravity greater than 1," or "substantially equal to [some
other element defined in the claim]" can define a quantitative relationship without indefiniteness. [FN193]
Problems of indefiniteness can arise when relational terms such as "substantially," "relatively," "closely,"
or, more specifically, "heat-insulating" are used in claims. These words do not per se render the claim indefinite.
[FN194] However, a patent claim "must be a certain guide not a collection of pregnant suggestions." [FN195]
Relational terms are especially prohibited when they are used to describe features or relationships that are essen-
tial to the novelty of the invention. [FN196]
Terms that cannot be evaluated by an objective means are indefinite. For example, the term "aesthetically
pleasing" as *6-135 applied to a user interface of a computerized kiosk rendered a claim invalid for indefinite-
ness. [FN196.1]
As discussed in § 6.5.8, when words of degree and relational terms are used, dependent claims with numer-
ical limitations can be used to be sure to include in the application claims that do not create indefiniteness is-
sues.
§ 6.6.4.2 Indefinite References to Antecedent Elements
A claim can be indefinite if it is unclear which of two previously introduced elements is referred to by the
claim. For example, if "front wheels" and "rear wheels" are introduced, a subsequent reference to "the wheel"
that does not distinguish between the front and rear wheels is indefinite. It would be proper, however, to refer to
"the front wheel" or "the rear wheel" using an adjective to distinguish between the two types of wheel.
An ambiguous reference to a previously introduced element can also make a claim indefinite. For example,
a claim that reads, "a handle connected to the gear, which is supported on the axis to pivot about it," is ambigu-
ous because it is not clear if "which" and "it" refer to the handle, the gear, or the axis. When more than one ele-
ment is listed in a single clause, indefinite articles and pronouns should not be used to refer back to previously
recited elements. The previously defined element should be referred to by name even if that name must be re-
peated several times within a single clause. For example, the ambiguity of the example above can be eliminated
by replacing "which" with "handle" and "it" with "gear" to read, "a handle connected to the gear, with the handle
supported on the axis to pivot about the gear."
*6-136 The same name for an element must be used consistently throughout a claim and dependent claims
in the chain, without changing the name. For example, a "connecting member" is always a "member" or "connect-
ing member," and not a "connector" or "connecting element." However, names can change between different
series of claims, such as by using "first connecting means" in one independent claim and "connector" in another

independent claim. Moreover, adjectives can be dropped in a claim, as long as there is no other element whose
designation, when stripped of some of its adjectives, would be called by the same shortened name. For example,
the name "translucent elongated connector" can be shortened to "elongated connector," but not if the claim also
has an "opaque elongated connector," because the term "elongated connector" could refer to either of two ele-
ments (the translucent or opaque connector), and thus, is indefinite.
Use of a pronoun in a claim, such as "it," "its," "they," or "them," is a red flag that there may be an indefin-
iteness problem. This problem can usually be solved by replacing the pronoun with the specific element referred
to by the pronoun.
§ 6.6.4.3 Alternative Expressions
Alternative expressions, such as "glass or plastic" or "a spring or a weight for urging the carriage against
the stop," are considered improper because they render the breadth or scope of the claim indefinite; "the objec-
tion to an alternative claim is its uncertainty--the difficulty or impossibility of determining the precise limits of
the invention." [FN197] Attempted alternatives or hedged expressions, such as "a drive means, such as a motor"
or "a holder, preferably a perforated box," are also improper attempts to present two *6-137 claims (one broad
and one narrow) within a single claim structure.
The Patent Office initially adopted a strict policy barring the use of alternative language in a claim. [FN198]
However, the Patent Office has relaxed this policy, allowing alternative elements that bear some relationship to
one another. [FN199] For example, alternative expressions reading on equivalent elements, such as "rods or
bars," are allowed. [FN200] Recent decisions further expand this rule, holding that alternative language cannot
be rejected on grounds that the language is indefinite even if the alternatives recited are not equivalents.
[FN201] However, alternative claiming can still be rejected under 35 U.S.C. § 121 if the application as a whole
lacks "unity of invention." [FN202]
Thus, even though the strict policy against the use of alternative language has been relaxed, it is advisable to
avoid the use of alternative language in claims. A disadvantage of use of alternative language (A or B) in a claim
is that if one of the alternatives is anticipated by prior art, the claim is invalid. [FN202.1] There are several
methods of avoiding alternative expressions. A generic expression that describes the qualities or characteristics
of the alternative elements can be used. For example, "rigid, transparent material" can be used to claim alternat-
ives such as plastic or glass. Means clauses can also be used to avoid alternative language. Also, if the alternat-
ive elements are sufficiently related, they may be recited in the form of a Markush claim as discussed in section
6.3.10 above.
[FN173]. Jones Knitting Corp. v. Morgan, 361 F.2d 451, 149 U.S.P.Q. 659 (3d Cir. 1966).
[FN174]. Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 U.S.P.Q. 81 (Fed. Cir. 1986), cert.
denied, 107 S. Ct. 1606 (1987).
[FN175]. Chi. Pneumatic Tool Co. v. Hughes Tool Co., 97 F.2d 945, 38 U.S.P.Q. 258 (10th Cir.), cert. denied,
305 U.S. 643 (1938).
[FN176]. In re Burke, Inc., 786 F. Supp. 1537, 22 U.S.P.Q.2d 1368 (C.D. Cal. 1992).
[FN177]. Ga.-Pac. Corp. v. United States Plywood Corp., 258 F.2d 124, 118 U.S.P.Q. 122 (2d Cir.), cert.
denied, 358 U.S. 884 (1958).

[FN178]. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1 U.S.P.Q.2d 108 (Fed. Cir. 1988).
[FN179]. Mathis v. Hydro Air Indus., 1 U.S.P.Q.2d 1513, 1517 (C.D. Cal. 1986), aff'd on merits, 818 F.2d 874
(Fed. Cir. 1987) (unpublished opinion), aff'd on attorney fee award, 857 F.2d 749, 8 U.S.P.Q.2d 1551 (Fed. Cir.
1988).
[FN180]. Kintner v. Atl. Commc'n Co., 249 F. Supp. 73, 77 (S.D.N.Y. 1917).
[FN181]. Ga.-Pac. Corp. v. United States Plywood Corp., 258 F.2d 124, 134 n.2, 118 U.S.P.Q. 122 (2d Cir.),
cert. denied, 358 U.S. 884 (1958).
[FN182]. Id. at 138.
[FN183]. Gen. Elec. Co. v. Nitro Tungsten Lamp Co., 266 F. 994, 1000 (2d Cir. 1920).
[FN184]. Id. at 1000.
[FN185]. Laitram Corp. v. Deepsouth Packing Co., 301 F. Supp. 1037, 1064 (E.D. La. 1969), aff'd, 443 F.2d
928 (5th Cir. 1971), rev'd on other grounds, 406 U.S. 518 (1972).
[FN186]. Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 221 U.S.P.Q. 568 (Fed. Cir. 1984).
[FN187]. See Musher Found. v. Alba Trading Co., 150 F.2d 885, 66 U.S.P.Q. 183 (2d. Cir.), cert. denied, 326
U.S. 770 (1945).
[FN187.1]. Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116 (Fed. Cir. 2002).
[FN188]. Ex parte Oetiker, 23 U.S.P.Q.2d 1641, 23 U.S.P.Q.2d 1651 (Bd. Pat. App. & Interf. 1992), aff'd, 23
U.S.P.Q.2d 1661 (Fed. Cir. 1992).
[FN189]. Hoffman-LaRoche, Inc. v. Burroughs Wellcome Co., 10 U.S.P.Q.2d 1602 (D. Md. 1989).
[FN190]. Hybritech, Inc. v. Abbott Labs., 4 U.S.P.Q.2d 1001, 1011 (C.D. Cal. 1987), aff'd, 849 F.2d 1446, 7
U.S.P.Q. 1191 (Fed. Cir. 1988).
[FN191]. Helene Curtis Indus., Inc. v. Sales Affiliates, Inc., 233 F.2d 148, 160, 190 U.S.P.Q. 159 (2d Cir.), cert.
denied, 352 U.S. 879 (1956).
[FN192]. Standard Oil Co. v. Tide Water Assoc. Oil Co., 154 F.2d 579, 69 U.S.P.Q. 41 (3d Cir. 1946).
[FN193]. See Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 221 U.S.P.Q. 568 (Fed. Cir.
1984).
[FN194]. Jones Knitting Corp. v. Morgan, 361 F.2d 451, 149 U.S.P.Q. 659 (3d Cir. 1966).
[FN195]. Laitram Corp. v. Deepsouth Packing Co., 301 F. Supp. 1037, 1064, 162 U.S.P.Q. 14 (E.D. La. 1969).
[FN196]. Norton Co. v. Bendix Corp., 449 F.2d 553, 171 U.S.P.Q. 449 (2d Cir. 1971).
[FN196.1]. Datamize LLC v. Plum Tree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005).

[FN197]. Ex parte Reid, 1879 Dec. Comm'r Pat. 70, 15 Off. Gaz. Pat. Office 882 (Comm'r Pat. 1879).
[FN198]. M.P.E.P. § 2173.05(h).
[FN199]. See M.P.E.P. § 2173.01.
[FN200]. M.P.E.P. § 2173.05(h).
[FN201]. In re Wolfrum, 486 F.2d 588, 179 U.S.P.Q. 620 (C.C.P.A 1973).
[FN202.1]. Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-138 § 6.6.5 Deficient Functional Language
Functional language that describes an invention by what it accomplishes rather than by a description of its
structure is not objectionable per se (see section 6.3.5.1.4.2). However, functional language cannot be used in a
limited number of situations. For example, means clauses cannot be used in claims that describe a single ele-
ment. In addition, functional language other than means clauses is unacceptable if
(1) it encompasses more than what is disclosed in the specification or recited as antecedent support in
the claim, or
(2) the function accomplished is indefinite or ambiguous, or

(3) it lacks novelty or is obvious. [FN203]
The claims are supposed to give fair notice to competitors of the scope of the invention. If they fail to do that,
the claims do not comply with 35 U.S.C. § 112.
§ 6.6.5.1 Meaningless Means Clauses
Under 35 U.S.C. § 112, the function of an element in a claim that recites a combination of elements can be
recited by a means clause (see section 6.3.5.1.4.1). However, a claim that recites a single element cannot define
that element using "means for" language under the rationale that such a claim covers every conceivable means
for achieving a desired result without the implicit limitation imposed by the associated combination of elements.
[FN204] Examples of improper single means claims are:
*6-139 1. Apparatus for shaking articles in a container, which comprises: means for isolating the con-
tainer to shake the articles.
2. A Fourier transform processor comprising incremental means for incrementally generating the Fouri-
er transformed output signals in response to the incremental input signals. [FN205]
3. In a device of the class described, means for forcing the flow of air while preventing injury to the op-
erator [where the device at question was a fan with rubber blades]. [FN206]
Means clauses are to be avoided when an equivalent generic word covers the same breadth as the means
clause. Generic words are easier to understand than means clauses. For example, "the base" of a shaking appar-
atus should not be defined as "means for supporting," because the generic word "base" provides an equally
broad definition. Similarly, "means for holding" should be avoided in favor of the more generic "container."
Similarly, means clauses should not be used to avoid specifying the number of elements of a particular type.
It would be inappropriate to claim "means for supporting" to avoid recitation of the number of legs on the shak-
ing apparatus. Numerical limitations can be avoided by language such as "a plurality of legs," or by use of an
open transition word such as "comprising."

§ 6.6.5.2 Overly Broad
Functional language that implicitly encompasses every possible device that can possibly perform the recited
function is overly broad, lacking sufficient support from the specification. [FN207] When an element is defined
by functional *6-140 language (other than means clauses), the breadth of the functional language must be lim-
ited by recitation of some structure or method that supports the function claimed. [FN208] A claim that recites
only a desired end result unattached to any mechanism that is used to achieve that result will be rejected as
overly broad because it covers any conceivable means that anyone may ever discover. [FN209]
For example, a claim reading, "A woolen cloth having a tendency to wear rough rather than smooth," claims
a desired result--that the cloth does not become shiny with wear. [FN210] The claim is overly broad because it
does not limit the functional language by describing the process of manufacturing the cloth, that is, by decreas-
ing the animal grease content and adding silk threads to support a claim to the desired result. The functional lan-
guage can be limited by describing the physical structure of the cloth.
When claiming an ingredient of a composition-of-matter or process claim by its function, an overly broad
rejection can be avoided if:
1. The name of the ingredient is recited, in addition to its function;
2. The function specified does not encompass materials that would not work; and
3. The breadth of the functional language is supported by disclosing numerous alternative materials that
are equivalent in function. [FN211]
A claim that does not meet this standard is:

• A liquefiable substance having a liquefaction temperature from between 40° C to about 300° C and
being compatible with the ingredients in the powdered detergent composition.
*6-141 This claim was rejected because it did not name the ingredients used, it read on materials such as
low melting metals that would not work in the composition, and it was not supported by the disclosure because
only a limited number of examples were disclosed. [FN212]
The structure recited to support functional language should not be defined by the use of vague and indefinite
phrases. For example, the phrase "adapted" for performing some function was held indefinite because it did not
specify how the article was adapted to perform the specified function. [FN213] Although the Patent Office will
frequently accept use of the word "adapted," a more precise or more specific phrase, such as "mounted on," or
statutorily approved form such as a means clause, should be used. The author has had success in the Patent Of-
fice by replacing the word "adapted" by "sized," such as "sized to fit into the aperture." Other suitable alternat-
ives that may pass muster are "configured" and "shaped."
§ 6.6.5.3 Nonexistent Novelty and Nonobviousness
A newly discovered function of a previously known product is not patentable unless the structure of the in-
vention is also novel and nonobvious. [FN214] For example, a newly discovered corrosion-resistant property of
a class of alloys claimed by reciting that the class is "characterized by good corrosion resistance in hot brine,"
fails to distinguish the class, when the range of compositions specified for the class includes a composition
known in the prior art. [FN215]
[FN203]. In re Swinehart, 439 F.2d 210, 169 U.S.P.Q. 226 (C.C.P.A 1971).
[FN204]. In re Hyatt, 708 F.2d 712, 218 U.S.P.Q. 195 (Fed. Cir. 1983).

[FN205]. Id.
[FN206]. From the August 1963 patent agent exam.
[FN207]. Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245 (1928).
[FN208]. In re Fuller, 35 F.2d 62, 3 U.S.P.Q. 51 (C.C.P.A. 1929).
[FN209]. See In re Fuetterer, 319 F.2d 259, 138 U.S.P.Q. 217 (C.C.P.A. 1963).
[FN210]. In re Fuller, 35 F.2d 62, 3 U.S.P.Q. 51 (C.C.P.A. 1929).
[FN211]. See Ex parte Slob, 157 U.S.P.Q. 172 (Pat. Off. Bd. App. 1967).
[FN212]. Id.
[FN213]. In re Land & Rogers, 368 F.2d 866, 151 U.S.P.Q. 621 (C.C.P.A. 1966); In re Hutchinson, 54 F.2d 135,
69 U.S.P.Q. 138 (C.C.P.A. 1946).
[FN214]. In re Swinehart, 439 F.2d 210, 169 U.S.P.Q. 226 (C.C.P.A 1971).
[FN215]. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 227 U.S.P.Q. 773 (Fed. Cir. 1985).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-142 § 6.6.6 Surplusage
Surplus or laudatory statements are not permitted in the claims. The claims must be limited to a technical
description of the invention, without unnecessary laudatory statements narrating the merits of the invention. For
example, a claim that reads "a combination steam and dry iron comprising elements A, B, and C, thus to iron
clothes more effectively than heretofore" is objectionable because the italicized clause is laudatory.
Unnecessary words that do not provide any relevant information are surplus and should be removed. For ex-
ample, in the claim "a golf ball washer comprising (1) a first housing, said housing having . . .," it is unnecessary
to distinguish the housing by the word "first" if there is only a single housing. [FN216] Similarly, a claim to "a
new and novel process for rendering a structure resistant to penetration and shattering" is also improper because
the phrase "new and novel" is surplus. Another example is:
• An apparatus for converting foam to a liquid comprising a tank means to hold a quantity of liquid,
(1) outlet means or equivalents thereof at the bottom of said tank . . .
The claim is improper because it is not necessary to include the phrase "equivalents thereof" to describe the
invention; equivalent outlet means are presumed under the doctrine of equivalents.
[FN216]. This is proper if a later dependent claim introduces a second housing.
END OF DOCUMENT


Jeffrey G. Sheldon

*6-142 § 6.6.7 Tainted Trademarks
Although the literal language of 35 U.S.C. § 112 does not prohibit the use of trademarks in a claim, it is
strongly recommended not to use trademarks or common names used in *6-143 the trade (trade names) within a
claim. Trade terms are generally considered indefinite, failing to meet the particularity and definiteness require-
ments of 35 U.S.C. § 112, because the product described by the trade term may be changed at any time at the
discretion of its manufacturer. [FN217] Thus, the Patent Office rejected a claim for the use of "FORMICA" as a
substitute for wood in wooden separators, because the manufacturer of "FORMICA" could, at its discretion,
change the nature of the product denoted by the trade name. [FN218] Another rejected claim read:
• A floor mat comprising a supporting layer and an outer tacky layer of synthetic wax known as "Flexo
Wax C-Light" having a tread surface that is tacky, soft, rough, and adhesive, said tread surface acting to re-
move particles of dirt and dust from the sole of a contacting shoe. . . . [FN219]
This claim was rejected as vague and indefinite because the thickness of the outer tacky layer was essential
to the invention, and the manufacturer of "FLEXO WAX C-LIGHT" could change the thickness at will. [FN220]
Another reason to avoid the use of trade terms is to avoid limiting the life of the claim to the life of the
trademarked product. A patent reciting trade terms in a claim remains operative and useful only as long as the
trademarked material is available in the market. If the trademarked material becomes unavailable, the patent dis-
closure is no longer "enabling." [FN221]
*6-144 Although use of trade terms is not recommended, trade terms may be used in claims if the examiner
finds that the meaning of the trade term is sufficiently defined in the specification to impart a specific limitation
to the claim. [FN222] Thus, a claim that specified an ingredient by its trade term, "NAVILLITE," was allowed
because the specification recited a method for preparing "NAVILLITE." [FN223] Similarly, in Ex parte Canter,
the trade name "STANOLINO" was allowed in a claim, since the characteristics of this wax were defined in the
specification. [FN224]
If a trademark is used in the claims, it should be capitalized. [FN225] Every effort should be made to
provide greater information about the product by (1) stating a common or generic name for the product and (2)
using language of the form "a product X (a descriptive name) sold under the trademark Y" to describe the trade-
mark in the specification. [FN226]
[FN217]. Ex parte Bickell, 1959 Dec. Comm'r Pat. 21, 122 U.S.P.Q. 27 (Pat. Off. Bd. App. 1957).
[FN218]. Ex parte Bolton, 42 U.S.P.Q. 40 (Pat. Off. Bd. App. 1938).
[FN219]. In re Dense, 156 F.2d 76, 70 U.S.P.Q. 212 (C.C.P.A. 1946).

[FN220]. Id.
[FN221]. If the product cannot be otherwise defined, and the composition or process of making the trademarked
material is known at the time of filing the patent application, the applicant can amend the patent application by
providing the composition or the method of making the trademarked material. M.P.E.P. § 608.01(v).
[FN222]. Butler, Rules Defining the Use of Trade Terms in Patent Applications, 51 J. PAT. OFF. SOC'Y 339
(1969).
[FN223]. Ex parte Stephens, 71 U.S.P.Q. 304 (Pat. Off. Bd. App. 1945).
[FN224]. Ex parte Canter, 70 U.S.P.Q. 372 (Pat. Off. Bd. App. 1946).
[FN225]. M.P.E.P. § 608.01(v).
[FN226]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

*6-144 § 6.6.8 Incomplete Claims
A claim is incomplete if it omits essential elements or steps or fails to define necessary cooperation between
elements. [FN227] A claim that is incomplete with respect to elements that are essential to the novelty or utility
of the invention will be rejected. A rejection is less likely if the claim is incomplete with respect to nonessential
elements. [FN228] However, 35 U.S.C. § 112 requires the claims to specify what the applicant claims as the in-
vention and not what the examiner believes the invention to be. Thus, unnecessary limitations *6-145 should not
be added to a claim merely because the examiner believes the claim is incomplete.
[FN227]. M.P.E.P. § 2172.01.
[FN228]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

*6-145 § 6.6.9 Negative Limitations
A negative limitation is a statement that describes an element by specifying what it is not, rather than by
specifying what it is.
In the past, negative limitations that were used to exclude an element that would otherwise anticipate or
render the claim obvious from prior art were rejected. [FN229] For example, a claim drafted to exclude anticipa-
tion by a prior art reference that used nickel was invalidated, the claim reading: "chosen from a group in the
periodic system separated from the group containing silver by at least three other groups and excepting nickel."
[FN230]
Of course, the applicant could have achieved the same result without any problem by using a Markush
group or a series of Markush groups that positively specified the members of the group.
Currently, negative limitations are not prohibited per se. [FN231] A negative limitation is rejected only if it
is indefinite [FN232] or unduly broad. [FN233] For example, a claim cannot merely recite that a space is unob-
structed. This is a broad statement of something to avoid rather than a statement defining structure. Similarly, a
claim to a method "without using external attenuation" was rejected as indefinite. However, the same claim was
accepted when modified to read, *6-146 "without using hot gas blast attenuation," as sufficiently definite.
[FN234]
Negative limitations are unavoidable in situations where they constitute the only practical way of stating a
concept, as in "noncircular," "nonmagnetic," "colorless," "nonpoisonous," [FN235] and "nonalcoholic."
[FN236] These forms of negative limitation are allowed because there is no antonym or positive language that is
capable of expressing the same concepts with equivalent clarity and precision. Similarly, a claim to a method of
making a vaccine by growing a certain virus in an artificial tissue culture, "devoid of avian tissue," was held
proper as sufficiently particular and definite. [FN237] Holes and apertures can also be claimed by negative limit-
ations.
In certain situations, negative limitations can be allowed even if positive language providing an equivalent
description is available. For example, in In re Duva, [FN238] a negative limitation that read "absent sufficient
CN [cyanide] ions to prevent decomposition . . ." was held proper even though a positive expression could have
been used. [FN239] Duva also established that a negative limitation even at the "point of novelty" of the inven-
tion can be proper. [FN240]
Negative limitations also provide a useful method for avoiding the limiting breadth of closed transition
words like "consisting." For example, if it is nonobvious to eliminate the element D from a prior art combination
comprising A + B + C + D, a negative limitation claim could read "comprising A plus B plus C and absent suffi-

cient D to . . ." Although the claim could be drafted as "consisting of A + B + C," which *6-147 would exclude
D, only the prior claim would cover the combination A + B + C + E.
[FN229]. In re Langdon, 77 F.2d 920, 25 U.S.P.Q. 415 (C.C.P.A. 1935).
[FN230]. Langdon, 77 F.2d at 921.
[FN231]. In re Bankowski, 318 F.2d 778, 138 U.S.P.Q. 75 (C.C.P.A. 1963).
[FN232]. In re Schechter, 205 F.2d 185, 98 U.S.P.Q. 144 (C.C.P.A. 1953).
[FN233]. See Johns-Manville Corp. v. Guardian Indus. Corp., 586 F. Supp. 1034 (E.D. Mich. 1983), aff'd, 770
F.2d 178 (Fed. Cir. 1985), app. dismissed, 835 F.2d 871 (Fed. Cir. 1987).
[FN234]. Id.
[FN235]. In re Bankowski, 318 F.2d 778, 783, 138 U.S.P.Q. 75 (C.C.P.A. 1963).
[FN236]. Id.
[FN237]. Id.
[FN238]. In re Duva, 387 F.2d 402, 156 U.S.P.Q. 90 (C.C.P.A. 1967).
[FN239]. Duva, 387 F.2d at 404.
[FN240]. Id. at 407-08.
END OF DOCUMENT


Jeffrey G. Sheldon

*6-147 § 6.6.10 Nonexistent Operability
Section 101 of title 35 of the U.S.C. requires that the invention to be useful. Because each claim identifies
an embodiment of the invention, for that claim to be allowable the embodiment described within the claim must
show utility. Moreover, 35 U.S.C. § 112 requires that the invention be enabled, that is, such that one skilled in
the art would be able to practice the invention without undue experimentation. [FN241] Therefore, when a claim
merely reads on an inoperable embodiment, then the claimed invention has no utility and the claimed invention
is not enabled. Therefore, such a claim would not be allowable.
[FN241]. In re Vaeck, 947 F.2d 488, 20 U.S.P.Q.2d 1438 (Fed. Cir. 1991); EMI Group N. Am., Inc. v. Cypress
Semiconductor Corp., 60 U.S.P.Q.2d 1423 (Fed. Cir. 2001).
END OF DOCUMENT


Jeffrey G. Sheldon

*6-147 § 6.7 Checklist of Claim Deficiencies
After the claims have been prepared, it is recommended that the checklist of Exhibit 6-13 be used to verify
the form of the claims and avoid any claim deficiencies.
Exhibits 6-14 and 6-15 provide examples of what not to do when writing claims.
PLIREF-PATAPP s 6.7
END OF DOCUMENT

PLIREF-PATAPP 6 Exh. 6-1(a) FOR EDUCATIONAL USE ONLY Page 1
How to Write Pat. Application 6 Exh. 6-1(a)
(Publication page references are not available for this document.)

Jeffrey G. Sheldon

Exhibits 6-10 and 6-12 [FNa1]
(a) (Preamble) What is claimed is:

(Transition)
(Body)
1. Apparatus for shaking articles, the apparatus comprising:
(a) a container for the articles;
(b) a base;
(c) a plurality of parallel legs, each leg being con nected
pivotally at one end to the container and at the other end to
the base to support the container for oscillating movement
with respect to the base; and
(d) means for oscillating the container on the legs to shake
the articles.
[FNa1]. A corresponding picture claim appears in Exhibit 6-11. Drawings of the shaking apparatus are depicted in Exhib-
it 6-10.
PLIREF-PATAPP 6 Exh. 6-1(A)

END OF DOCUMENT

PLIREF-PATAPP 6 Exh. 6-1(b) FOR EDUCATIONAL USE ONLY Page 1
How to Write Pat. Application 6 Exh. 6-1(b)

Jeffrey G. Sheldon

[FNaa1]
(b) (Preamble) What is claimed is:

(Transition)
(Body)
1. Apparatus for collecting an advancing strand in a barrel,
which comprises:
(a) a turntable on which the barrel is mounted for rotation
therewith;
(b) a strand guide positioned above the barrel for guiding the
advancing strand into the barrel;
(c) rotating means for rotating the turntable so that the point
of collection of the strand varies cir cularly with respect
to the bottom of the barrel; and
(d) reciprocating means for reciprocating the guide so that the
point of collection varies radially with respect to the
bottom of the barrel.
[FNaa1]. Corresponding Jepson claim appears in Exhibit 6-5.
PLIREF-PATAPP 6 Exh. 6-1(B)

END OF DOCUMENT


Jeffrey G. Sheldon

*6EX-3 Exhibit 6-2: Proper and Improper Cooperation Among Elements of a Claim
(a) Proper Cooperation
(b) Improper Cooperation
END OF DOCUMENT


Jeffrey G. Sheldon

*6EX-5 Exhibit 6-3: Dependent Claim Sequences
(a) Proper Form
(b) Proper Form
(c) Sequential Clusters Improper Form
(d) Sequential Clusters (Proper Form)

END OF DOCUMENT


Jeffrey G. Sheldon

*6EX-7 Exhibit 6-4: Improper Multiple Dependent Claim Sequence
1. A widget, comprising...
2. The widget of claim 1 further comprising...
3. The widget of claim 2, wherein...
PROPER 4. The widget according to either of claims 2 or 3, further

comprising...
IMPROPER 5. The widget of either claims 3 or 4, wherein...
PROPER 6. The widget of claim 4, wherein...
PROPER 7. The widget according to claim 3, wherein...

END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
1. In a strand-collecting apparatus of the type in which an advancing strand is collected in a barrel mounted
on a rotating turntable, and in which a reciprocating strand is positioned above the barrel to guide the advancing
strand into the barrel, the improvement comprising:
a) means for detecting when a predetermined amount of strand has been collected in the barrel;
b) a cutter, operated by the detecting means, for severing the strand when a predetermined amount has
been collected; and
c) an accumulator, operated by the detecting means, for accumulating the strand after it has been
severed.
[FNa1]. Corresponds to claim of Exhibit 6-1(b).

END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
1. In a method for collecting an advancing strand in a barrel, of the type wherein the advancing strand is
guided into the barrel and the barrel is rotated to the point of collection circularly with respect to the bottom of
the barrel, the improvement comprising:
reciprocating the guide back and forth above the barrel so that the point of collection varies radially
with respect to the bottom of the barrel.
[FNa1]. Corresponds to claim of Exhibit 6-1(b).

END OF DOCUMENT


Jeffrey G. Sheldon

*6EX-13 Exhibit 6-7: Jepson Composition-of Matter Claim
2. An improved zinc-electroplating solution of the type containing an equal solution of zinc acetate, from 30
to 90 grams per liter; boric acid, from 1.5 to three times the zinc acetate concentration; an alkaline pH modifying
substance in an amount sufficient to adjust the pH to a value of from 4 to 5.5, wherein the improvement com-
prises: 0.5 to 1 gram per liter of boric acid.

END OF DOCUMENT


Jeffrey G. Sheldon

*6EX-15 Exhibit 6-8: Markush Claim
1. A compound having the formula: R-CH=N-S-X,
wherein:
(1) R is an alkyl group selected from the group consisting of methyl, ethyl and isopropyl; and
(2) X is a halogen selected from the group consisting of chlorine and fluorine.

END OF DOCUMENT


Jeffrey G. Sheldon

*6EX-17 Exhibit 6-9: Product-by-Process Claim
1. A resistor [product] which comprises:

a) a ceramic core;
b) a coating of carbon deposited on the core by decomposition of a hydrocarbon gas in the presence of
the core [process].

END OF DOCUMENT


Jeffrey G. Sheldon

*6EX-19 Exhibit 6-10: Drawings of Shaking Apparatus

END OF DOCUMENT


Jeffrey G. Sheldon

Exhibits 6-10 and 6-12 [FNa1]
1. An apparatus for shaking articles to dislodge impurities, the apparatus consisting of:
a) a hollow rectangular box that functions as a receptacle for the articles to be shaken;
b) a rectangular metal platform that functions as a base;
c) four parallel legs connected to the receptacle and the base by rotating pivotal members to allow the
container to oscillate with respect to the base;
d) an electrical motor attached to the base with its shaft perpendicular to the plane of the base;
e) a rotary metal cam driven by the motor;

f) a rubber ring enclosing the metal cam, to limit surface wear;
g) a cam follower engaging the cam;
h) a link pivoted at one end to the cam follower and at its other end to the receptacle, to permit oscilla-
tion of the container on the legs;
i) a brass spring wrapped around the axis of the cam follower to oscillate such that the cam follower
continuously engages the cam; and
j) a supporting member connected at one end to the base, the supporting member maintaining the cam
follower in engagement with the receptacle.
[FNa1]. Corresponding broad claim appears in Exhibit 6-1(a).

END OF DOCUMENT


Jeffrey G. Sheldon

Exhibit 6-1(a)

END OF DOCUMENT


Jeffrey G. Sheldon

*6EX-25 Exhibit 6-13: Checklist of Possible Claim Deficiencies
[References are to sections of this chapter.]

[ ] Is the claim statutory? (§ 6.2)
[ ] Omnibus claim? (§ 6.2.1)
[ ] Unnecessary referrals to drawings? (§ 6.2.1)
[ ] Is claim a single sentence with a period? (§ 6.3.2)
[ ] Are elements recited in single clauses? (§ 6.3.5.1.2)
[ ] Is cooperation between elements specified? (§ 6.3.5.3)
[ ] Is terminology consistent? (§ 6.6.1)
[ ] Is correct verb form used? (§ 6.6.2)
[ ] Is there antecedent/support for each element: (§ 6.6.3)

[ ] in the claim? (§ 6.6.3.1)
[ ] in the specification? (§ 6.6.3.2)
[ ] in the drawings? (§ 6.6.4)
[ ] Is the claim definite? (§ 6.6.4)

[ ] Are words of degree and relation terms definite? (§ 6.6.4.1)
[ ] Are there indefinite references to antecedent elements (pronoun problems)? (§ 6.6.4.2)
[ ] Are improper alternative expressions used? (?§ 6.6.4.3)
[ ] Is the relationship between elements defined? (§ 6.3.5.3)
[ ] Are the steps of a process in a proper order? (§ 6.3.5.3.3)
[ ] Is functional language properly used? (§ 6.6.5)

[ ] Is there a single means clause? (§ 6.6.5.1)
[ ] Is functional language overly broad? (§ 6.6.5.2)
[ ] Is surplusage used? (§ 6.6.6)
[ ] Are trademarks used? (§ 6.6.7)
[ ] Is the claim complete? (§ 6.6.8)
[ ] Are negative limitations used? (§ 6.6.9)

[ ] Is the claim subject matter novel over the prior art? (§§ 6.2.2, 6.5.3.4, 6.6.5.3)
[ ] Is the claimed subject matter nonobvious? (§§ 6.2.2, 6.5.3.4, 6.6.5.3)

END OF DOCUMENT


Jeffrey G. Sheldon

*6EX-27 Exhibit 6-14: Example of Poor Claim Drafting
*6EX-28 Specification
The present invention relates to suction cleaners and particularly to new and improved agitating means in
suction cleaners. More specifically the invention comprises the provision, in a suction cleaner, of the combina-
tion of a rotary agitator, embodying both positive beating and brushing means, with a reciprocating brush whose
direction of movement is parallel to the axis of the rotary agitator.
It is an object of the present invention to provide a new and improved suction cleaner. It is a further object
to provide new and improved surface-agitating means in a motor-driven suction cleaner. A still further object is
the provision, in a suction cleaner, of combined rotary and reciprocating agitating means. Still another object is
the provision of a suction cleaner in which rotary agitating means are provided in the suction cleaner nozzle
from which a reciprocating brush is driven. A still further object is the provision, in a motor driven suction
cleaner, of a rotary agitator embodying positive agitating means and brushing means, and a horizontally recip-
rocating agitator comprising a brush. These and other objects will appear upon reading the following specifica-
tion and claims and upon considering in connection therewith the attached drawing to which they relate.
In the drawing in which a preferred embodiment of the present invention is disclosed:
Fig. 1 discloses a side view of a modern suction cleaner, with certain parts broken away, with the present in-
vention embodied therein;
Fig. 2 is a section upon the line 2-2 of Fig. 1;
Fig. 3 is an enlarged section through the cleaner similar to that shown in Fig. 1 showing, in dotted lines, the
supporting frame of the rotary and reciprocating agitators pivoted downwardly from the nozzle mouth;
Fig. 4 is a view in perspective of a reciprocating brush element;
Fig. 5 is a partial view in perspective of the agitator-supporting frame showing the reciprocating brush set;
*6EX-29 Fig. 6 is a view in perspective of the pivoted latch or retaining cover of the brush seat;
Fig. 7 is a view in perspective of the pivoted brush supporting frame.
The present invention is disclosed embodied in a modern suction cleaner which comprises a main casting or
casing including a nozzle 1, a fan chamber 2, which is interiorly connected to the nozzle 1 by means of the air

passageway 3, and an exhaust outlet 4 to which is detachably connected a dust bag 5. A motor casing 6 is posi-
tioned upon the main casing immediately above the fan chamber 2 and houses a suitable driving motor, which is
not shown, but the shaft 7 of which extends downwardly through the fan chamber 2 where the fan 3 is mounted
thereon. The shaft 7 extends into the rear end of the air passageway 3 where it carries a suitable pulley 9. The
cleaner is movably supported by means of front wheels, of which one is shown resting upon a supporting surface
being indicated by reference character 10, and by means of a rear wheel 11. A pivoted handle 12 is mounted on
the casing of the cleaner and provides means by which the operator can propel the machine over the surface cov-
ering undergoing cleaning.
Within the nozzle 1 of the cleaner and extending thereacross is a rotary agitator which, in its general appear-
ance, differs but slightly from a common and well known type. This agitator comprises a large diameter cyl-
indrical body 13 on the surface of which are mounted helically-extending rigid beater elements 14, 14 which ex-
tend substantially the length of the agitator, with the exception of a small central portion which is reduced in
diameter to form a pulley 15. Carried by the cylindrical body 13 of the agitator and seated within the periphery
thereof are longitudinally-extending brushes 16, 16 which are of a common and well-known type and which are
removably secured in their seats in any suitable manner. Upon the surface body 13 of the agitator, immediately
adjacent the sides of the pulley 15, which is connected to the driving pulley 9 on the motor shaft 7 by a suitable
belt 21, are encircling cam races positioned below *6EX-30 the periphery of the body. These cam races are des-
ignated by the reference characters 22, 22 and have a function which will be apparent from the following de-
scription. A shaft 17, which extends through the agitator with each of its ends resting in a seat 20 in the side
member 19 of the frame 18, rotatably supports the agitator.
Between the side members 19, 19 of the frame 18, which is pivoted within the nozzle 1 at a point somewhat
in the rear of the rear nozzle lip 23, is a front cross member 24 which extends closely adjacent and parallel to the
front wall of the nozzle 1, being secured thereto, and holding the frame 18 within the nozzle, by ordinary and
suitable means which form no part of the present invention. This cross member 24 slopes downwardly from the
lower end of the front wall of the nozzle 1 and forms the front lip of the nozzle thereby cooperating with the rear
nozzle lip 23 in defining the nozzle mouth. The lip 24, however, differs from the usual nozzle lip through being
provided with two transversely-extending openings or apertures 25, 25, each of which extends parallel to the ax-
is of the rotary agitator and has a length substantially equal to half the length of the agitator. Seated upon the lip
24 with their bristles projecting downwardly through the apertures 25, 25 are brush elements 26, 26 which com-
prise rigid backs having the flexible brush bristles mounted therein. The length of each brush element 26 is
slightly less than the length of the aperture 25 in the nozzle lip 24 through which the bristles extend, thereby per-
mitting the brush a limited range of movement transversely of the agitator mouth, that is, parallel to the longit-
udinal axis of the agitator itself. To make use of this permissible movement of the brushes 26, 26 in order to ob-
tain the maximum agitation of the surface covering undergoing cleaning, each brush element 26, 26 is provided
at its inner end, with an upstanding lug 27 on which is mounted a roller or head 28 of such size that with the
brush seated upon the front lip 24 the roller 28 extends within the adjacent cam race 22 in the cylindrical body
13 of the rotary agitator, with the result that upon the rotation of that body the brush 26 will be reciprocated
back and forth as the roller *6EX-31 28 if moved by the cam. To insure the permanent positioning and the cor-
rect alignment of each brush 26 with the aperture 25, relative to which it must slide, a pivoted cover element 29
is provided which is pivotally mounted upon a pin 30 carried by the side of the transverse member or lip 24. The
cover member 29 is adapted to closely enclose the sides and top of the brush 26 to hold it in contact with the up-
per surface of the lip 24. To prevent the unintentional displacement of the cover relative to the lip the forward
edge of the lip is curved upwardly, as at 31, and is adapted to resiliently clamp the forward edge of the cover
which extends against it in the closed position.

In the operation of a suction cleaner constructed in accordance with the present invention, the suction-cre-
ating fan within the fan chamber is rotated by the driving motor resulting in a decrease in the pressure existing
within the nozzle thereby effecting the lifting of the surface, covering undergoing cleaning against the nozzle
lips, as is clearly indicated in Figure 1. With the surface covering suspended against the nozzle lips the rotary
agitator is rotated at high speed by the driving belt 21 which is connected, as aforedescribed, between the pul-
leys 15 and 9, the latter carried by the motor shaft. The beating elements 14, 14 upon the agitator function to vi-
olently vibrate the surface covering to dislodge the embedded foreign matter which is positioned therein. The
longitudinally-extending brushes 16, 16 upon the agitator surface cooperate with the rigid beating elements 14,
14 and assist in the removal of the light dirt. As the agitator is revolved the brushes 26, 26, which are carried by
the front nozzle lip 24 of the cleaner, are reciprocated transversely or parallel to the longitudinal axis of the ro-
tating agitator and, through extending below the nozzle lip, contact the surface covering which is positioned ad-
jacent thereto and function to deflect, bend and agitate the pile of that covering in a direction as right angles to
the direction of vibration and bending effected by the beating elements 14, 14 and the brush elements 16, 16 car-
ried by the rotary agitator.
*6EX-32 To effect the removal of the agitators constructed in accordance with the present invention from
the nozzle, it is only necessary to pivot the supporting frame 18 downwardly to the position shown in dotted
lines in Figure 3. With the frame so positioned the rotary agitator may be lifted therefrom, the supporting shaft
sliding outwardly from its open-ended seat 20 in each end plate 19 of the frame. With the rotary agitator re-
moved it is then possible to pivot each brush-holding cover 29 on its supporting pin 30, a recess 32 being con-
veniently provided in the forward edge of the nozzle lip into which an instrument such as a screwdriver may be
inserted to wedge the cover free from the retaining forward edge of the lip. With the cover pivoted back it is
then possible to remove the brush 26 by merely lifting it from the lip and withdrawing the bristles through the
aperture 25 through which they were extended, there being two brush elements, the same operation is necessary
to release the other element.
If desired, a single brush element extending across the full width of the nozzle may be used instead of two
brush elements.
*6EX-33 SUCTION CLEANER CLAIMS

What is claimed is:
1. A suction cleaner comprising a body supported by wheels, a drive motor mounted on said body for-
ward of the rear pair of wheels, the nozzle, formed on the front portion of the body having a lip, a flexible
agitator roll mounted in said nozzle, and drive means connecting said motor and agitator to cause it to ro-
tate. Said nozzle being further provided with a rear lip, a supporting frame for the agitator pivotally moun-
ted adjacent said lip, a single brush agitator mounted on said other lip and extending across the full width of
said nozzle, adapted to reciprocate upon rotation of said rotary agitator drive means for said reciprocating
agitator including a cam race, on said rotary agitator.
2. The suction cleaner of this invention includes a motor, a suction creating means, a rotary agitator,
and an additional brush agitator mounted to reciprocate relative to the surface being cleaned.
3. A suction cleaner according to claims 1 or 2, in which the nozzle has mounted therein forward of the
rotary agitator two reciprocating agitators having brush elements made of nylon to ensure long wear.
CRITICISM OF SUCTION CLEANER CLAIMS
Claim 1. Is improperly composed of two sentences. Claim 1 also lacks cooperation between elements to
make the complete combination stated in the preamble. Although a "suction cleaner" is claimed, nothing is re-
cited in the claim to produce suction. See § 6.3.2.

Line 2. There is no antecedent in the claim for the "rear pair" of wheels. The claim has previously stated
only that there are wheels. See § 6.6.3.1.
Line 2. There is no support in the disclosure for the rear "pair" of wheels. The specification discloses "a rear
wheel *6EX-34 11." A claim may not be contrary to, or inconsistent with, the specific example(s) disclosed. See
§ 6.6.3.2.
Line 3. There is no antecedent in the claim for "the nozzle." This should read "a nozzle." See § 6.6.3.1.
Line 4. There is no support in the disclosure for a "flexible" agitator roll. The agitator 14 is shown as a solid
member. See § 6.6.3.2.
Line 8. "Said lip" is indefinite because two different lips have previously been recited. The use of "said"
throughout the claim is disfavored as being overly legalistic. See § 6.3.5.1.1.
Line 8. "A single brush agitator" is not illustrated in the drawings. Every feature of the invention specified
in the claims must be shown in the drawings. See § 6.6.3.3.
Line 10. "adapted to reciprocate ..." may be considered by the Patent Office to be improper "functional lan-
guage without supporting structure." The "adapted to" phrase attempts to imply the mounting of the brush ele-
ment (26) and its driving connection to the rotary agitator (13.) This may be a debatable point, as "adapted to"
phrases are used fairly often in practice. See § 6.6.4.1.
Line 11 and 12. "A cam race" is acceptable. The drive means does include a cam race (22), as well as other
elements. There is nothing wrong with claiming a cam race when two are shown, if the invention can work with
one. Also, this is not an attempt to claim "a hole" positively, since the race can be considered a structural unit in-
cluding the walls of the groove, which actually do the guiding.
Claim 2. In general, Claim 2 is directed to a catalog of elements. There is no connection or cooperation

whatever between the elements. See § 6.3.5.3.
Line 1. "[O]f this invention" is surplusage. The same could be said of "to ensure long wear" in claim 8. See
§ 6.6.6.
Line 1. Uses the wrong verb form "includes." The claim must form a complete sentence, being the direct ob-
ject of the (understood) phrase "What is claimed is ...." The verb should read "including" rather than "includes."
"Which includes" would be a satisfactory alternative. There is nothing *6EX-35 wrong with the transitional
phrase "including" rather than "comprising," although the latter is much more common, and is almost conven-
tional for mechanical cases. Watch over little things like capital letters, periods, punctuation, and verb tenses.
See § 6.6.2.
Claim 3. "[O]r 2" is improper recitation of a multi-dependent claim. See § 6.4.2.
Line 2 and 3. "[T]wo reciprocating agitators" is improper. If this claim is dependent from claim 1, the recit-
ation of two agitators is inconsistent with "a single brush agitator" in the parent claim. A dependent claim may
not add statements inconsistent with the structure of the parent claim. If claim 3 is the parent claim, "an addi-
tional brush agitator" is already an element of the parent claim, so that it would be improper to add two more,
apparently as new elements. This would be double inclusion of elements. See § 6.6.3.1.

Line 4. There is no support in the disclosure for "nylon." The specification does not state of what material
the brushes are made. See § 6.6.3.2.

END OF DOCUMENT


Jeffrey G. Sheldon

*6EX-37 Exhibit 6-15: Example of Poor Claim Drafting
*6EX-38 Excerpts from Specification
The feature of this invention is the supplying of steam to the article being ironed in advance of, and while
moving the iron across the article whether in a frontward or backward direction.
However, if the operator desires to iron dry, he may shut off the supply of steam and use the device of this
invention as a dry iron.
An equally important feature of this invention is the controlling of the supply of steam through either the
front or rear ports of the iron to the article being ironed as desired. The operation of the means for controlling
the supply of steam is simple and coincides with the normal movement by hand of any iron over an article to be
ironed.
The water chamber of the steam iron is indicated as 6 and the upper section of the chamber becomes a steam
dome when the water is heated sufficiently by electrical element 7. The heating element is encased in the bottom
of the iron by a flat ironing surface 8 and connection between usual electric cords and the heating element 7 is
made by wiring not shown to the electrical terminals 9.
A plurality of steam ports represented by 10 are located in the flat ironing surface 8 around the front end of
the iron and a similar plurality of ports 11 are located in the flat surface 8 around or across the back end of the
iron. The front ports 10 lead to the forward steam chamber 12 while the rear ports 11 connect with the rear
steam chamber 13. The front steam chamber 12 may encircle the forward part of the iron and back along the
sides of the iron as far as desired. Similarly the back steam chamber 13 may extend across the back as shown
and also extend back along the sides of the iron as desired. However, in order to accomplish one of the features
of the iron of this invention the front and rear steam chambers cannot be connected. The chambers are formed
between the wall of the combination water and steam chamber 6 and the outside casing 14 of the iron. in areas of
the side walls beyond the limits of front steam chamber 12 and rear steam chamber 13 the casing 14 and wall 6
of the combined steam *6EX-39 and waterchamber are contiguous as seen as in Figures 2 and 5 of the accompa-
nying drawing.
A steam valve 15 controls the passage of steam from the steam and water chamber 6 to the front steam
chamber 12 and a similar valve 16 controls passage of steam into the rear chamber 13. In Figure 1 the two steam
valves 15 and 16 are shown in closed positions. In Figure 4 valve 15 is open and 16 is closed which would be
their relative positions when the iron is being moved forward. In figure 3 front valve 15 is closed while rear
valve 16 is open which would be their relative positions when the iron is being moved backward. The operation

of these steam valves 15 and 16 is accomplished by handle 17 which is free to rock on pin 18 in trunnion 19
which is bolted by means 20, or in any other way connected to casing 14.
A strip of spring steel 21 is fastened to the underside of handle 17 by any means, such as bolts 22, and is
preformed so that its two end sections bear down on the heads of valve stems 23 and 24 so as to keep steam
valves 15 and 16 closed as shown in Figure 1.
When the operator of the steam iron decides to move it forward, he naturally presses on the rear of the
handle so that the front of the iron will slide over the article being pressed. Thus in the normal operation of the
iron he inclines the handle down in the rear and it rocks on pin 18 so that the forward part of the handle is up.
This movement of the handle causes steam valve 15 to open up whereas steam valve 16 is firmly shut as shown
in Figure 4.
Similarly if the operator decides to pull the iron backwards across the article being ironed, he bears down on
the forward end of the handle, and thus on the front of the iron, thereby releasing pressure on the back end of the
rockable handle and the back of the iron, so that the iron will slide backward over the article being ironed. This
manipulation of the handle in turn closes steam valve 15 tight and allows steam valve 16 to open as shown in
Figure 3.
The obvious reason for so operating the handle of the steam iron is to simultaneously operate the steam
valves and *6EX-40 thus supply moist steam through ports 10 when moving the iron forward while ironing, and
through ports 11 when moving the iron backward. Thus supplying moist-steam to the article being ironed elim-
inates otherwise sprinkling or wetting the article before ironing.
Problem
Given the drawings and excerpts from the specification, criticize errors in the following "sample" claims
1-7.
SAMPLE CLAIMS TO BE CRITICIZED
1. A combination steam and dry iron, comprising a body having a water chamber therein and front and
rear steam chambers. The iron includes a bottom member, a first plurality of openings formed in the forward
portion of the bottom plate and communicating with the front steam chamber, a second plurality of openings
formed in the rear section of the bottom plate, and a toggle member connected to alternately activate the
valve means whereby the iron may be operated either forwardly or backwardly to iron clothes more effect-
ively than heretofore.
2. An iron including push-pull valve means for automatically spraying steam ahead of the iron when
moving forwardly and behind the iron when moving backwardly.
3. Apparatus as recited in claims 1 or 2, wherein the water chamber is omitted and steam is supplied
directly to the iron from a central steam boiler through a flexible hose.
4. A base 8, a heater 7, a plurality of valves 15-16, a selective actuator 21 for the valves selected from
the group consisting of springs, weights, and levers, a plurality of steam ports 10-11, and a handle 17.
*6EX-41 5. A method as recited in claim 4, further comprising the step of moving the iron alternately
forward and back to iron the clothes.
6. A method as recited in claim 5, further comprising a pair of leaf springs for actuating the valves
when the handle is pivoted.
7. Any and all novel features described, referred to, exemplified or shown.

*6EX-42 Criticism of the Steam and Dry Iron Claim

The following is a partial list of errors and questionable practices intentionally used in the "sample" claims.
Claim 1. As an overall criticism, this claim does not set forth all of the elements necessary to "the inven-
tion," as defined in the specification. In particular, there is no specific description of the main point of the inven-
tion, which has to do with supplying steam selectively through front and rear ports as the iron is moved forward
and back, by manipulating the handle to actuate valves. Thus, the claim is "incomplete" and "inconsistent with
the disclosure." See § 6.6.4.2.
Line 3. The claim consists of two sentences rather than one. See § 6.2.
Lines 3 and 5. "plurality of openings" are made "elements" of the claim. Holes should be negatively recited.
This should read, for example, "a bottom member having a plurality of openings ... [etc.]."
Lines 4 and 6, "bottom plate" is "indefinite." This should read bottom "member," as in line 3. One must use
consistent terminology for the same element throughout the claim. See § 6.6.1.
Lines 4 and 6. No antecedent for "the forward portion" or "the rear section." It is at least debatable whether
or not "bottom members" inherently have forward or rear sections. Better practice is, for example, "a bottom
plate having a forward portion ... etc." See § 6.6.3.1.
Line 6. No connection of the second plurality of openings with the rear steam chamber. Also, no connection
between the water chamber and the steam chamber, and nothing about heating the water. Thus, the claim is
drawn, in part, to a "catalog of elements." See § 6.3.5.3.
Line 7, "toggle member." Mechanically this is not a "toggle member." The word "toggle" does not appear
anywhere in the specification. Terms and phrases used in the claims must find clear support or antecedent basis
in the specification. See § 6.6.3.2.
*6EX-43 Line 7, "connected to." It is doubtful whether this phrase sets forth enough structural cooperation
with the other elements. There is insufficient structure recited to support the functional statement. See § 6.6.5.2.
Lines 7 and 8, "the valve means." No antecedent. This should have been made an element of the claim. See
§ 6.6.3.1.
Lines 8 and 9, "whereby." The function immediately following "whereby" has nothing to do with the
claimed structure in that all ordinary irons may be operated either forwardly or backwardly. The statement about
ironing more effectively does necessarily follow from the previously received structure. See § 6.6.5.
Also, laudatory expressions of this type ("more effectively than heretofore") are not permitted. This is "sur-
plusage." See § 6.6.6.
Claim 2, line 1. It seems unclear whether "push-pull valve means" has any meaning, and this language is
not used in the specification. This clause is vague and indefinite. See § 6.6.4.2.
Line 1, this iron does not work "automatically." Thus, the claim is "misdescriptive" and inconsistent with
the specification. See § 6.6.3.2.
Line 1, the claim is a "single means" claim. The statute (35 U.S.C. § 112) permits means plus function
clauses only in claims to combinations. Also, the claim may be objectionable as being overly broad at the pre-

cise point of novelty of the invention. See §§ 6.6.5.1 and 6.6.5.2.
Line 1, the transition "including" is acceptable, but "comprising" is preferred. See § 6.3.4.1.
Claim 3, line 1, "claims 1 or 2." Although multiple dependent claims are allowed, form is improper. See §
6.4.2.
Line 2, omitting the water chamber. A dependent claim must further restrict the preceding claim. Thus, ele-
ments cannot be subtracted, because this is a broadening of the claims. See § 6.4.1.
Line 2 and 3, steam boiler and water hose. This runs afoul of rule 83, that the drawing must show every fea-
ture of the *6EX-44 invention specified in the claims. Also, this is not described in the excerpts from the spe-
cification which were given. See § 6.6.3.3.
Line 2, "steam is supplied." This sounds like a method limitation, and would be better defined (if included
at all) in such terms as "... further comprising a central steam boiler, and a flexible hose ... etc."
Claim 4, line 1, no preamble. Claims normally have some form of preamble, and it may be improper to omit
it altogether. See § 6.3.3.
Lines 1-4, reference numerals. There is no objection to the use of reference characters in claims, but this is
done very rarely. However, when used, the characters should be enclosed in parentheses. See § 6.3.7.
Lines 1-4. The claim is merely a "catalog" of elements, with no structural or operational cooperation set
forth. The claim must be drawn to an assembled, operable combination. This type of claim is often called an "ag-
gregation," meaning as claimed. See § 6.3.5.3.
Lines 2 and 3, "selected from the group ..." This uses Markush language for mechanical elements, which is
proper. However, in lines 2 and 3 the weights and levers are not disclosed or shown, which is improper, as noted
earlier, because it lacks "support in the description."
See § § 6.4.4 and 6.6.3.
Line 4, the steam "ports" (holes) are claimed positively.
Claim 5, line 1, since the preceding claim (4) is not a method claim, this is an improper dependent claim be-
cause it is "inconsistent" with its parent claim. See § 6.4.1.
Lines 2 and 3. The step added by the subclaim is only the overall step of moving the iron in the convention-
al manner. It is probably objectionable, or at least poor practice, to add dependent claims which add only highly
conventional steps. See § 6.4.1.3.
Claim 6. This is a dependent method claim adding only further details of structure, which is improper. De-
pendent method claims should add method steps or further define *6EX-45 method steps. Also, apparatus limit-
ations should be avoided as far as possible in method claims. See § 6.4.1.2.
Line 2. There is no antecedent for "when the handle is pivoted," in either Claim 6 or "parent" Claims 5 and
4. See § 6.6.3.1.
Claim 7. This is a so-called "omnibus" claim, which is improper under 35 U.S.C. § 112. Such claims have

been held not "to particularly point out and distinctly claim" the invention. See § 6.2.1.

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 7: Writing the Specification
*7-5 § 7.1 Introduction: The Requirements of 35 U.S.C. § 112 and the Utility Requirement
This chapter deals with the nuts and bolts of writing the specification. Before discussing the "how to" as-
pects of writing the specification, this chapter presents the legal requirements that must be followed.
PLIREF-PATAPP s 7.1
END OF DOCUMENT


Jeffrey G. Sheldon

§ 7.1 Introduction: The Requirements of 35 U.S.C. § 112 and the Utility
Requirement
*7-5 § 7.1.1 35 U.S.C. § 112
To write an effective patent application, it is necessary to understand the legal requirements for the specific-
ation. At a bare minimum, these legal requirements need to be satisfied. If these legal requirements are not met,
no patent will issue, or if contested, the patent will be invalidated.
The statutory requirements are set forth in 35 U.S.C. § 112, which states:
The specification shall contain a written description of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth
the best mode contemplated by the inventor of carrying out his invention.
The requirements of 35 U.S.C. § 112 are threefold:

1. The Description Requirement ("shall contain a written description of the invention");
2. The Enablement Requirement ("enable any person skilled in the art . . ."); and
*7-6 3. The "Best Mode" Requirement ("set forth the best mode contemplated by the inventor of
carrying out his invention").
At the practical level, these requirements can be summarized by the question, "How much do I really need
to put in the specification?" In other words, how much detail needs to be put into the application to satisfy the
description, enablement, and "best mode" requirements? For example, in general, one does not need to put the
exact dimensions of each of the components of a rifle. Thus, exact dimensions are generally not included in the
application. However, for some inventions, the exact dimensions can be critical and thus would need to be dis-
closed.
One of the purposes of this chapter is to answer the question of "how much" and "what" information needs
to be in the application. For this purpose, the legal requirements under 35 U.S.C. § 112 are discussed. An under-
standing of those legal requirements is important for every patent practitioner, because each practitioner must
decide for each application exactly what needs to be described; there are few absolute rules.
After presenting the legal requirements of 35 U.S.C. § 112, this chapter presents a systematic approach for
preparing the specification. In addition, many hints and suggestions for writing an effective specification are
presented.
END OF DOCUMENT


Jeffrey G. Sheldon

§ 7.1 Introduction: The Requirements of 35 U.S.C. § 112 and the Utility
Requirement
*7-6 § 7.1.2 Utility
Another legal requirement of an invention, which needs to be addressed in the specification, is the "utility"
requirement. According to 35 U.S.C. § 101, a patentable invention has to be "useful." Utility is also required by
35 U.S.C. § 112, under the theory that if the written description fails to illuminate a credible utility, there is a
failure to teach how to use *7-7 the invention as required by section 112. [FN1] Therefore, the Patent Office
can, and does, reject applications for lack of utility.
Such rejections are extremely rare in the mechanical and electrical arts. Only when the inventor is claiming
a perpetual motion machine, or mechanical or electrical cures for diseases, or cold fusion, does the issue arise in
the mechanical and electrical arts. [FN2] Even an invention whose intent was to deceive purchasers into believ-
ing they were getting a premixed drink rather than a post-mixed drink is useful, because it provides some identi-
fiable benefit, that is, that one product can be altered to make it look like another. [FN3]
However, such rejections are more common in the chemical and biotechnological arts. Therefore, the
concept of utility is discussed in the chapters dealing with those technologies, namely chapters 13 and 14. The
reader is referred to those chapters if there is concern that questions may arise in the Patent Office about lack of
utility.
In general, all that needs to be included in the application regarding utility is some claim for utility. Even a
small degree of utility is sufficient to satisfy the utility requirement. [FN4] Proof is generally not required. The
only time proof may be required is if the Patent Office raises an issue as to utility, that is, the utility claimed
seems unreasonable. In that situation, evidence of utility would have to be presented. [FN5] Furthermore,*7-8
the invention need not accomplish all the objectives specified in the application, as long as the invention can be
used to achieve at least one of the stated objectives. [FN6]
Thus, as a practical matter, for most inventions, the utility requirement is satisfied by specifying some util-
ity for the invention.
The specification of utility needs to be specific. Merely asserting that a compound is useful for the "treat-
ment of diseases" and is an "anti-tumor substance" can be an insufficient disclosure of utility, while a statement
that the claimed compound is better than known anti-tumor substances with known anti-tumor activity against
leukemia tumor models is adequate. [FN7]
Utility requires that the claimed invention have a significant and presently available benefit to the public. A
claim directed to expressed sequence tags (ESTs small pieces of a DNA sequence) which can (1) serve as a
marker for an underlying gene, where the utility of the gene was unclear, and (2) measure the level of a mRNA

in a tissue sample, did not satisfy the utility requirement. [FN7.1]
Because of inconsistent and overly stringent application of the utility requirement in the biotechnology arts,
the Patent Office established guidelines for examiners with regard to the utility requirement. [FN8] Although
these guidelines and the accompanying discussion of the law are particularly directed to biotechnology inven-
tions, they are applicable to all inventions, *7-9 and thus are discussed here. [FN9] According to the Patent Of-
fice, the applicable legal principles are:
1. The claimed invention must have (i) a well-established utility, or (ii) the specification must assert for
the claimed invention at least one specific and substantial utility that is credible. See below for definitions
of "specific," "substantial," and "credible."
2. An invention has a well-established utility if a person of ordinary skill in the art would immediately
appreciate why the invention is useful based on the characteristics of the invention (for example, properties
or applications of a product or process), and the well-established utility is specific, substantial, and credible.
3. If there is an assertion that the invention is useful for a particular practical purpose (that is, it has a
"specific and substantial utility") and the assertion would be considered credible by a person of ordinary
skill in the art, the utility requirement is satisfied. Credibility is assessed from the perspective of one of or-
dinary skill in the art in view of the disclosure and any other evidence of record (for example, test data, affi-
davits or declarations from experts in the art, patents or printed publications) that is probative of the applic-
ant's assertions. See below for a definition of "credible" utility.
4. The requirement that there be a specific and substantial utility excludes "throw-away," "insubstan-
tial," or "nonspecific" utilities, such as the use of a complex invention as landfill, as a way of satisfying the
utility requirement of 35 U.S.C. § 101.
*7-10 5. The application need only provide one credible assertion of specific and substantial utility for
each claimed invention to satisfy the utility requirement.
6. The Patent Office will treat as true a statement of fact made by an applicant in relation to an asserted
utility, unless countervailing evidence can be provided that shows that one of ordinary skill in the art would
have a legitimate basis to doubt the credibility of such a statement. Similarly, Patent Office personnel will
accept an opinion from a qualified expert that is based upon relevant facts whose accuracy is not being
questioned.
In its training materials, the Patent Office elaborates on these guidelines by providing definitions of key
terms and applying the guidelines to many specific situations. [FN10] Since most of the specific fact situations
are in the biological arts, an attorney/agent preparing an application in these arts should carefully review those
training materials to anticipate the utility rejections that may await an application in the Patent Office. The
definitions of key terms are:
1. A "specific utility" is a utility that is specific to the subject matter claimed. This contrasts with a
general utility that would be applicable to the broad class of the invention. For example, a claim to a poly-
nucleotide whose use is disclosed simply as a "gene probe" or "chromosome marker" would not be con-
sidered to be specific in the absence of a disclosure of a specific DNA target. Similarly, a general statement
of diagnostic utility, such as diagnosing an unspecified disease, would ordinarily be insufficient absent a
disclosure of what condition can be diagnosed.
*7-11 2. A "substantial utility" is a utility that defines a "real world" use. Utilities that require or con-
stitute carrying out further research to identify or reasonably confirm a "real world" context of use are not
substantial utilities. For example, both a therapeutic method of treating a known or newly discovered dis-
ease and an assay method for identifying compounds that themselves have a "substantial utility" define a
"real world" context of use. An assay that measures the presence of a material which has a stated correlation

to a predisposition to the onset of a particular disease condition would also define a "real world" context of
use in identifying potential candidates for preventive measures or further monitoring. On the other hand, the
following are examples of situations that require or constitute carrying out further research to identify or
reasonably confirm a "real world" context of use and, therefore, do not define "substantial utilities":
i. Basic research such as studying the properties of the claimed product itself or the mechanisms in
which the material is involved.
ii. A method of treating an unspecified disease or condition.
iii. A method of assaying for or identifying a material that itself has no "specific and/or substantial
utility."
iv. A method of making a material that itself has no specific, substantial and credible utility.
3. A "credible utility" is an asserted utility where the assertion of utility is believable to a person of
ordinary skill in the art based on the totality of evidence and reasoning provided. An assertion is credible
unless (A) the logic underlying the assertion is seriously flawed, or (B) the facts upon which the assertion is
based are inconsistent with the logic underlying the *7-12 assertion. A credible utility is assessed from the
standpoint of whether a person of ordinary skill in the art would accept that the recited or disclosed inven-
tion is currently available for such use. For example, no perpetual motion machines would be considered to
be currently available. However, nucleic acids could be used as probes, chromosome markers, or forensic or
diagnostic markers.
Accordingly, if the Patent Office reasonably applies these standards, the utility requirement is easily satis-
fied when preparing an application. All that needs to be disclosed in the specification is one asserted utility that
benefits the public and that is credible. It is recommended for safety that multiple credible utilities be asserted in
an application. [FN11] For example, if the claimed invention is directed to an automobile tire composition, if
there are other possible credible utilities for the composition, such as bicycle tires, tennis shoe soles, gaskets,
etc., these can be disclosed in the application. However, one disadvantage of asserting multiple utilities that
must be considered is that the scope of analogous art applicable under section 103 can be broadened unduly to
include a reference outside the scope of the principal utility.
[FN1]. In re Joyce A. Cortright, 165 F.3d 1353, 49 U.S.P.Q.2d 1464 (Fed. Cir. 1999).
[FN2]. See In re Chilowsky, 229 F.2d 457, 108 U.S.P.Q. 321 (C.C.P.A. 1956); In re Swartz, 232 F.3d 862, 56
U.S.P.Q.2d 1703 (Fed. Cir. 2000) (cold fusion not patentable because applicant provided no persuasive objective
evidence sufficient to overcome the reasonable doubt established by PTO).
[FN3]. Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364, 51 U.S.P.Q.2d 1700 (Fed. Cir. 1999).
[FN4]. Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 221 U.S.P.Q. 473 (Fed. Cir. 1984).
[FN5]. See In re Chilowsky, 229 F.2d 457, 108 U.S.P.Q. 321 (C.C.P.A. 1956).
[FN6]. Stiftung v. Renishaw plc, 945 F.2d 1173 (Fed. Cir. 1991), reh'g denied.
[FN7]. In re Brana, 51 F.3d 1560, 34 U.S.P.Q.2d 1436 (Fed. Cir. 1995).
[FN7.1]. In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005).
[FN8]. 66 Fed. Reg. 1092 (Jan. 5, 2001); see also Synopsis of Application of the Revised Utility Guidelines,
available at <http:// www.uspto.gov/web/menu/utility.pdf>.

[FN9]. Application of these principles to biotechnology inventions can be found in chapter 14.
[FN10]. Synopsis of Application of the Revised Utility Guidelines, available at

<http://www.uspto.gov/web/menu/utility.pdf>.
[FN11]. The Patent Office can require cancellation of unsupported utilities that could deceive the public. In re
Hozumi, 226 U.S.P.Q. 353 (Comm'r Pat. & Trademarks 1985).
END OF DOCUMENT


Jeffrey G. Sheldon

*7-12 § 7.2 Satisfying the Description Requirement of § 112
The purpose of the description requirement is to persuade those skilled in the art that the inventor has inven-
ted the claimed subject matter. [FN12] The description requirement can be satisfied in a fairly straightforward
manner: include in the *7-13 specification a description of the invention that is claimed in the claims. [FN13]
The best way to be sure that every claim is included is to either paraphrase all of the claims or reproduce the
claims in the specification verbatim.
It is possible to live dangerously and not set forth exactly the claimed subject matter if the written descrip-
tion conveys with reasonable clarity to those of skill in the art that the inventor actually invented what is
claimed. However, taking this approach opens an issued patent to attack during litigation. [FN13.1]
Failure to satisfy the description requirement with regard to the originally submitted claims is usually not
fatal. The description of the invention can always be amended during prosecution to include anything that is in
the claims that were originally filed. This is not considered "new matter" because the claims are part of the spe-
cification as of the filing date. [FN14]
Another description requirement is associated with 35 U.S.C. § 112, ¶ 6, which allows use of means-
plus-function language. Such language covers the corresponding structures disclosed in the specification and
equivalents thereof. If means-plus-function language is used in a claim, the specification must set forth an ad-
equate disclosure of what is meant by the claim language. Thus, structure supporting the means-plus-function
language must be described in the specification. [FN15]
*7-14 The description requirement becomes very important if additional claims need to be added after the
initial filing. This can occur if the originally filed claims are not sufficiently broad to cover the entire invention,
or additional species claims are required. An insufficient description can lead to problems when the application
is amended and there is a need to retain the original filing date. If an attempt is made to amend the claims, or
add new claims during prosecution, and there is no supporting description in the application as originally filed,
the amended and new claims will be rejected as not being within the scope of the originally described invention,
and for introducing new matter as prohibited by 35 U.S.C. § 132. [FN16]
If the new claim is rejected, the inventor can submit a new application. However, the original filing date
will be lost. The description requirement will therefore be an issue where an inventor wishes to add a new claim
and needs to retain the original filing date. Only if the original description is broad enough to encompass the
new claim can the inventor keep the benefit of the earlier filing date. [FN17]
The Federal Circuit has identified certain information that can be absent from a specification that still satis-
fies the written description requirement, namely:
1. Examples;

2. Evidence of an actual reduction to practice; and

3. The recitation of a known structure of a biological macromolecule. [FN17.1]
The importance of a sufficient description is demonstrated by the inability of the inventors of an audiocas-
sette storage case to obtain a utility patent. These inventors filed an application *7-15 for a design patent and
then filed a utility patent application based on the design application. Because the storage case was not suffi-
ciently described in the design application, the inventors could not rely on the earlier filing date, and because the
storage case was on sale over one year before the utility application was filed, the patent was denied under 35
U.S.C. § 102(b). [FN18]
The written description requirement can also be invoked to invalidate what the author considers to be
"wouldn't it be nice" inventions. For example, a claim directed to selectively inhibiting prostaglandin synthesis
of a non-steroid compound, without describing any particular compound that achieved the function, was invalid
because the specification did not satisfy the written description requirement. No compound that could be used to
practice the claimed method was known at the time the application was filed. [FN18.1] Thus the claim was dir-
ected to "wouldn't it be nice if there was a compound that . . ."
Disclosing a sequence of only 10 of the 185 to 192 amino acids comprising a particular protein does not put
one in possession of the claimed DNA sequence, and thus the description requirement is not satisfied. [FN18.2]
However, even drawings alone can satisfy the "written description" requirement, if the drawings sufficiently
demonstrate that the inventors had possession of the claimed subject matter at the time of filing. [FN19]
The Federal Circuit is placing more emphasis on the description requirement and making it more difficult to
satisfy. For example, the Federal Circuit held in 1993 that the specification supports a claim to a product only if
the structure, *7-16 name, formula, or definitive chemical or physical properties of the product are disclosed.
Thus, as discussed in chapter 14 dealing with biotechnology patent applications, the description requirement was
not satisfied in a claim directed to DNA because the DNA was not described, even though a method of produ-
cing the DNA was enabled. [FN20]
As a result of the increased emphasis of the description requirement, the Patent Office has promulgated
guidelines for examination of a patent application under the written description requirement. [FN21] These
guidelines provide that:
1. The goal of the written description requirement is to clearly convey the information that an applicant
has invented the subject matter which is claimed to put the public in possession of what the applicant claims
as the invention.
2. To satisfy the written description requirement, a patent specification must describe the claimed in-
vention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had posses-
sion of the claimed invention.
3. Possession may be shown by:
i. Actual reduction to practice, by a clear depiction of the invention in detailed drawings which per-
mit a person skilled in the art to clearly recognize that applicant had possession of the claimed inven-
tion. Actual reduction to practice of a biological material may be shown by specifically describing a de-
posit made in accordance with the requirements of 37 C.F.R. § 1.801 et seq.
*7-17 ii. A written description of the invention describing sufficient relevant identifying character-
istics such that a person skilled in the art would recognize that the inventor had possession of the
claimed invention;
iii. A specification showing that the inventor constructed an embodiment or performed a process

that met all the limitations of the claim, and determined that the invention would work for its intended
purpose.
iv. Disclosure of sufficiently detailed relevant identifying characteristics which provide evidence
that applicant was in possession of the claimed invention, that is, complete or partial structure, other
physical and/or chemical properties, functional characteristics when coupled with a known or disclosed
correlation between function and structure, or some combination of such characteristics.
4. There is a strong presumption that an adequate written description of the claimed invention is present
when the application is filed. Consequently, rejection of an original claim for lack of written description
should be rare.
5. An issue of a lack of adequate written description can arise:
i. when an aspect of the claimed invention has not been described with sufficient particularity such
that one skilled in the art would recognize that the applicant had possession of the claimed invention:
ii. an essential or critical element is not adequately described in the specification and is not conven-
tional in the art;
iii. an invention is described solely in terms of a method of its making coupled with its function
*7-18 and there is no described or art recognized correlation or relationship between the structure of the
invention and its function;
iv. the knowledge and level of skill in the art would not permit one skilled in the art to immediately
envisage the product claimed from the disclosed process.
6. A claim that omits an element which applicant describes as an essential or critical feature of the in-
vention originally disclosed does not comply with the written description requirement. [FN21.1]
7. The claim as a whole, including all limitations found in the preamble, the transitional phrase, and the
body of the claim, must be sufficiently described in the specification to satisfy the written description re-
quirement. Sufficient structures, acts, or functions must be recited to make clear the scope and meaning of
the claim, including the weight to be given the preamble.
8. There is an inverse correlation between the level of skill and knowledge in the art and the specificity
of disclosure necessary to satisfy the written description requirement.
9. What is conventional or well known to one skilled in the art need not be disclosed in detail. If a
skilled artisan would have understood the inventor to be in possession of the claimed invention at the time
of filing, even if every nuance of the claims is not explicitly described in the specification, then the adequate
description requirement is met. The description need only describe in detail that which is new or not con-
ventional.
*7-19 10. In most technologies which are mature, and wherein the knowledge and level of skill in the
art is high, a written description question should not be raised for original claims even if the specification
discloses only a method of making the invention and the function of the invention. In contrast, in emerging
and unpredictable technologies, more evidence is required to show possession.
11. The description requirement applies to each genus claim and each species of the genus specifically
claimed.
12. The written description requirement for a claimed genus may be satisfied through sufficient descrip-
tion of a representative number of species by actual reduction practice, reduction to drawings, or by disclos-
ure of relevant identifying characteristics, that is, structure or other physical and/or chemical properties, by
functional characteristics coupled with a known or disclosed correlation between function and structure, or
by a combination of such identifying characteristics, sufficient to show the applicant was in possession of
the claimed genus. A "representative number of species" means that the species which are adequately de-
scribed are representative of the entire genus. Thus, when there is substantial variation within the genus, a
sufficient variety of species must be described to reflect the variation within the genus. What constitutes a

"representative number" is an inverse function of the skill and knowledge in the art. Satisfactory disclosure
of a "representative number" depends on whether one of skill in the art would recognize that the applicant
was in possession of the necessary common attributes or features of the elements possessed by the members
of the genus in view of the species disclosed. In an unpredictable art, adequate written description of a
genus which embraces widely *7-20 variant species cannot be achieved by disclosing only one species with-
in the genus. Description of a representative number of species does not require the description to be of such
specificity that it would provide individual support for each species that the genus embraces. [FN21.2]
While the description requirement is easily satisfied when the original application is filed, later problems
can arise if the inventor wants to add new claims. Because of that possibility, it is important that the description
fully describes, as broadly as possible, the invention that exists on the date of filing. A full listing of alternative
versions of the invention should be included in the description, including all species in a chemical invention.
Also, any new claims that are later added should use the same terminology as the original description to ensure
that the claims are construed within the scope of the description. [FN22]
Describing a large number of species within a generic claim has been standard practice in unpredictable arts
such as genetic engineering. However, doing so in the so-called predictable arts is also strongly recommended in
view of the position of the Federal Circuit that a generic claim that allowed for placement of controls at multiple
locations was not supported by a description that taught only one location. [FN23] Similarly, the Federal Circuit
held that a description *7-21 of two species of the shape for a cup for an artificial hip did not support a claim to
a generic shape, which would have encompassed prior art shapes, because the specification touted an advantage
of the specific shapes disclosed. [FN24] A claim directed to all methods that result in "seamless image compres-
sion" is invalid because the specification described only one embodiment of seamless image compression.
[FN24.1]
[FN12]. In re Wilder, 736 F.2d 1516, 222 U.S.P.Q. 369 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985).
[FN13]. In re Certain Ltd.-Charge Cell Culture Microcarriers, 221 U.S.P.Q. 1165 (1983), aff'd sub nom. MIT v.
A.B. Fortia, 774 F.2d 1104, 227 U.S.P.Q. 428 (Fed. Cir. 1985).
[FN13.1]. Union Oil Co. of Cal. v. Atl. Richfield Co., 208 F.3d 989, 54 U.S.P.Q.2d 1227 (Fed. Cir. 2000).
[FN14]. In re Smith, 481 F.2d 910, 178 U.S.P.Q. 620 (C.C.P.A. 1973).
[FN15]. Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 53 U.S.P.Q.2d 1225 (Fed. Cir. 1999); De-
fault Proof Credit Card Sys., Inc. v. Home Depot USA, Inc., 412 F.3d 1291 (Fed. Cir. 2005) (because "means
for dispensing" was not clearly linked to any structure in the specification, claim is invalid).
[FN16]. In re Wright, 866 F.2d 422, 9 U.S.P.Q.2d 1649 (Fed. Cir. 1989); In re Barker, 559 F.2d 588, 194
U.S.P.Q. 470 (C.C.P.A. 1977), cert. denied, 434 U.S. 1064 (1978).
[FN17.1]. Falkner v. Engliss, 448 F3d 1357 (Fed. Cir. 2006).
[FN18]. In re Berkman, 642 F.2d 427, 209 U.S.P.Q. 45 (C.C.P.A. 1981).
[FN18.1]. Univ. of Rochester v. G.D. Searle & Co., Inc., 375 F.3d 1303 (Fed. Cir. 2004).

[FN18.2]. In re Wallach, 378 F.3d 1330 (Fed. Cir. 2004).
[FN19]. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 19 U.S.P.Q.2d 1111 (Fed. Cir. 1991).
[FN20]. Fiers v. Revel, 984 F.2d 1164, 25 U.S.P.Q.2d 1601 (Fed. Cir. 1993).
[FN21]. 66 Fed. Reg. 1,099 (Jan. 5, 2001); see also M.P.E.P. § 2163; Synopsis of Application Written Descrip-
tion Guidelines, available at <http:// www.uspto.gov/web/menu/written.pdf>.
[FN21.1]. See Reifin v. Microsoft Corp., 214 F.3d 1342, 54 U.S.P.Q.2d 1915 (Fed. Cir. 2000).
[FN21.2]. See, e.g., Noelle v. Lederman, 355 F.3d 1343, 69 U.S.P.Q.2d 1508 (Fed. Cir. 2004) (a genus claim for
a particular antibody was not described by a description of the mouse antibody within the genus); In re Curtis,
354 F.3d 1347, 69 U.S.P.Q. 2d 1274 (Fed. Cir. 2004) (disclosure of microcrystalline wax did not support a claim
directed to "friction enhancing coatings").
[FN22]. M.P.E.P. § 608.01(o).
[FN23]. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 45 U.S.P.Q.2d 1498 (Fed. Cir. 1998); cf. Utter v.
Hiraga, 845 F.2d 993, 6 U.S.P.Q.2d 1709 (Fed. Cir. 1988); see also Laurence H. Pretty, The Recline and Fall of
Mechanical Genus Claim Scope Under "Written Description" in the Sofa Case, J. PAT. TRADEMARK OFF.
SOC'Y. 469 (July 1998).
[FN24]. Tronzo v. Biomet, 156 F.3d 1154, 47 U.S.P.Q.2d 1829 (Fed. Cir. 1998).
[FN24.1]. Lizardtech Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005). In the author's opinion,
the Lizardtech court seems confused. It appears that the court was actually stating that there was a failure to sat-
isfy the enablement requirement rather than the written description requirement.
PLIREF-PATAPP s 7.2
END OF DOCUMENT


Jeffrey G. Sheldon

§ 7.3 Satisfying the Enablement Requirement of § 112
*7-21 § 7.3.1 What Is the Enablement Requirement?
Section 112 of 35 U.S.C. requires that the "specification shall contain a written description of the invention,
and of the manner of making and using it, in such full, clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same. . . ."
[FN25] The description and the enablement requirements are separate, and both must be met. [FN26] The en-
ablement requirement means that the specification must teach someone skilled in the art how to make and how
to use the invention. If the specification is not sufficiently enabling, an infringer can challenge the validity of the
patent and the patent can be invalidated. Therefore, it is extremely important that the enablement requirement is
satisfied.
[FN25]. 35 U.S.C. § 112.
[FN26]. In re Barker, 559 F.2d 588, 194 U.S.P.Q. 470 (C.C.P.A.), cert. denied, 434 U.S. 1064 (1977).
END OF DOCUMENT


Jeffrey G. Sheldon

§ 7.3 Satisfying the Enablement Requirement of § 112
*7-22 § 7.3.2 Guidelines for Satisfying the Enablement Requirement
A difficulty with satisfying the enablement requirement is that it is desirable to leave out the endless minuti-
ae that can unduly lengthen an application. Contrarily, sufficient "minutiae" need to be included to allow a reas-
onable balance between too much detail and insufficient disclosure, always keeping in mind that the disclosure
is aimed at someone with ordinary skill in the art. One good way to ensure that this requirement is met is to ask
the inventor if his colleagues would be able to practice the invention after reading the disclosure statement. If
the answer is yes, then the enablement requirement probably is satisfied; if the answer is no, more detail needs
to be included. The following discussion provides some guidelines.
The guidelines followed by the PTO examiners with regard to the enablement requirement are found in the
Manual of Patent Examining Procedure. [FN27]
§ 7.3.2.1 The Enablement Requirement Applies Only to Claimed Subject Matter
The enablement requirement applies only to the claimed subject matter. Therefore, before writing the dis-
closure section it is important first to define the claimed invention. [FN28]
It is important for the applicant to define the claimed invention clearly and precisely. If there is a possibility
of varying interpretation in scope of what is claimed, then the PTO is likely to attach the broadest meaning to
the claims during the prosecution, so that the enablement requirement is not satisfied unless the full scope of the
claim, as broadly defined, is enabled in the disclosure. Moreover, if such varying interpretations can be given to
what is claimed, then the *7-23 courts are likely to attach the narrowest meaning to the claims during an in-
fringement proceeding, so that a competitor may be able to design around the invention. The reason for the latter
is that the courts want to avoid the possibility of an applicant's obtaining in court a scope of protection that en-
compasses subject matter that, through the conscious efforts of the applicant, the PTO did not examine. [FN29]
The inventor has no duty to enable an unclaimed use of the invention. Moreover, if the application does not
claim a method of commercial production of an invention, the method does not need to be disclosed. [FN30] For
example, a patent for a rifle was challenged on the basis that it did not disclose how to mass produce the rifle.
The Federal Circuit upheld the patent because the inventor claimed only the rifle, and not the method of mass
production. [FN31]
§ 7.3.2.2 The Specification Need Be Enabling Only to Someone Skilled in the Relevant Art
"Someone skilled in the art" for the purposes of 35 U.S.C. § 112 means someone skilled in the art that is the
most appropriate to practice the invention. [FN32] There is an assumption that anyone attempting to reproduce
an invention will hire expert consultants for any special technical component. [FN33] To write a clear and con-
cise specification, it is important to keep the future reader in mind and remember to include sufficient informa-

tion for someone of ordinary skill in the art. It is not necessary to fill the application with a *7-24 great amount
of detail so that someone not skilled in the art can reproduce the invention. [FN34]
For example, in a patent for a device that used a computer to measure seismic waves, the appropriate art was
computer programming, and not seismic prospecting. [FN35] Therefore, the inventor did not need to include in
the application sufficient information to teach the skill of computer programming to someone skilled in seismic
prospecting. [FN36]
The inventor must disclose sufficient information to "bridge the gap" between the knowledge of someone
skilled in the relevant art and that knowledge required to practice the invention. [FN37] Any information not
widely known must be disclosed in the specification. An expert's unsupported conclusion that integral elements
of the invention were "well-known" and "routinely built" does not make the disclosure enabling. [FN38] Thus, it
is always better to err on the side of including too much information rather than too little.
This bridging is best illustrated with patents for computer programs. If an application for a computer soft-
ware patent were required to disclose every step of every well known subprogram necessary to the invention, the
application would be cumbersome and overinclusive. Thus, the C.C.P.A. differentiated between the "droning use
of a clerical skill" and true inventiveness and experimentation, and upheld a patent that disclosed sufficient data
and mathematical tools to satisfy the needs of one skilled in the art of computer programming. [FN39] In a pat-
ent application for a batch data processor, the inventor did not include the entire computer *7-25 program neces-
sary to reproduce the invention. The Federal Circuit upheld the patent, because the excluded information was a
routine computer program and there was sufficient information to enable a programmer of reasonable skill to
write a satisfactory program with ordinary effort. [FN40]
In the specification, all information necessary to reproduce the invention must be included. A patent for an
antidepressant drug was invalidated because the specification did not disclose the subject of the dosage tests,
whether it was human, dog, or rat. [FN41] In this case it was not just a question of determining dosage, but also
one of determining the proper subject; thus, the specification did not provide enough guidance for one skilled in
the art to reproduce the invention.
The inventor must specifically describe how to make and use the invention and cannot expect one skilled in
the art to determine for himself how to make the invention. For example, in a patent for a device that made ores
react with a wet reagent, the specification neglected to explain how the mixture was heated within a tube. The
inventor had stated that the vapor produced at the end of the tube was hot, but neglected to state that it was the
hot vapor that was used to heat the mixture in the middle of the tube. When challenged, the inventors claimed
that it would have been apparent to one skilled in the art that it would be possible to use the hot vapor for heat-
ing the mixture. The court disagreed and held that the disclosure was insufficient because the step was crucial to
the invention and the inventors could not expect someone skilled in the art to guess at possibilities. The disclos-
ure was therefore held insufficient because it did not explicitly state how to use the vapor. [FN42]
*7-26 An enabling disclosure can be found in the background portion of an application, including when the
background section is discussing deficiencies in the prior art. [FN42.1]
Because of the serious potential consequences of failing to satisfy the enablement requirement, it is import-
ant to follow the "rule of doubt"; if there is any doubt as to whether additional information should be included,
the information should be included. While this is tempered with the need to write a clear and concise specifica-
tion, the inventor cannot require someone skilled in the relevant art to engage in undue experimentation to prac-
tice the invention.

§ 7.3.2.3 The "Skill of the Art" Is Determined As of the Date of Filing
When writing the specification, it is important to be aware of the skill of the art on the day of filing. Wheth-
er a process or material is well known is determined on this date. [FN43]
A description that is enabling on the date of filing can become unenabling because a starting material be-
comes unavailable. In that situation the court evaluates each case individually and uses a rule of reason. [FN44]
Because of the uncertainty as to how a court will rule in each case, when an unusual material or trademarked
material is used, all possible alternative materials that will also enable the practice of the invention should be
provided.
§ 7.3.2.4 The Specification Need Not Explain How or Why the Invention Works
Although the inventor must teach how to obtain the claimed result, the inventor need not disclose or explain
how *7-27 or why the invention works. The inventor does not need to understand the scientific principles behind
the invention. [FN45]
For example, the inventor of a photographic printing plate, who had no background in lithography, attemp-
ted to describe what he believed to be the chemical reaction that was the basis of the invention. When the patent
was later challenged, the inventor's theories as to how the invention worked did not limit the scope of the patent.
The Federal Circuit held that the patent specification was enabling, and that the inventor did not need to under-
stand or to disclose how the invention worked. [FN46]
§ 7.3.2.5 Undue Experimentation Must Not Be Required to Reproduce the Invention
Undue experimentation to reproduce the invention cannot be required. Exactly what is "undue" depends on
the nature of the invention and what amount of experimentation is reasonable. Factors that a court evaluates in-
clude whether the required experiments are routine or unpredictable, the amount of guidance presented in the
specification, and how long it will take. [FN47] Because chemistry and biology are more unpredictable than the
mechanical arts, if the invention is chemical or biological, it is particularly important to be certain that a tech-
nique that is not explained in detail in the specification is truly well known and routine. [FN48]
The Federal Circuit has approved the use of the following factors for determining whether undue experi-
mentation is required:
*7-28 1. The quantity of experimentation required.
2. The amount of direction or guidance presented.
3. The presence or absence of working examples.
4. The nature of the invention.
5. The state of the prior art.
6. The relative skill of those in the art.
7. The predictability or unpredictability of the art.
8. The breadth of the claims. [FN49]
The mere fact that experimentation may be difficult and time-consuming does not mandate a conclusion that
such experimentation would be undue. [FN49.1]
An example where the required experimentation was unreasonable involved a device that used a complic-
ated computer program that was critical to the claimed invention. The inventors claimed a numerical control sys-
tem for machine tools that required a computer program that could control different tools at the same time. No

information about the program was disclosed, except its trade name, and there was evidence that a skilled pro-
grammer would require up to two years of effort to duplicate the invention. [FN50]
In a patent application for an electronic bone growth stimulator, the application claimed the use of different
materials, but the electrical current dosage level was disclosed only for stainless steel electrodes. The Federal
Circuit held that it would not require undue experimentation to perform a dose response study for materials other
than stainless steel because the stainless steel dosage was disclosed, as well as a description of how the dosage
range was determined. [FN51]
*7-29 In another case, the nondisclosed information involved techniques that were labor-intensive, but
routine. The application claimed an immunoassay that used high-affinity monoclonal antibodies specific for a
hepatitis B antigen; the patent was challenged because the antibodies were not made available. The challenger
claimed that a great amount of labor would be required to produce high-affinity monoclonal antibodies. The
Federal Circuit held that labor alone does not constitute unreasonable experimentation; because the techniques
were routine, the enablement requirement was satisfied. [FN52] Chapter 14 below discusses the specimen-depos-
it requirements for biological inventions.
In another case, the claim at issue was broad enough to read on monoclonal antibodies produced by known
hybridoma technology, but also monoclonal antibodies produced by chimeric antibodies. The claim was not en-
abled by a first parent application because at the time the first parent application was filed, chimeric antibodies
were not known, and thus the written description requirement was not satisfied. It was not enabled by a later
filed second parent application, because although chimeric antibodies were known at the time of the filing of the
second parent application, the technology was "nascent," which requires a "specific and useful" teaching to be
enabled. [FN52.1]
A claim directed to using a chemical compound to treat prostate cancer was not enabled because it failed to
disclose any data demonstrating the efficacy of the compound. This is because the enablement requirement of
section 112 incorporates as a matter of law the utility requirement of section 101, and the utility of a drug in hu-
man therapy requires substantiating evidence of the utility unless one with ordinary skill in *7-30 the art would
accept the allegations of utility as obviously correct. [FN52.2]
§ 7.3.2.6 The Claimed Matter Must Not Be Unduly Broad in Relation to the Disclosure
The scope of the disclosure must bear a reasonable relationship to the scope of the claims. [FN53] The spe-
cification cannot enable only a fraction of the claimed subject matter and require undue experimentation to pro-
duce the other claimed versions of the invention. [FN54] Therefore, when writing the specification, it is import-
ant to continually refer to the claims and ensure that the claims are not overly broad in view of how much of the
claimed subject matter it enabled.
There must be a reasonable correlation between the scope of enablement provided in the specification and
the scope of the claims. For example, the Federal Circuit held that a claim directed to use of cyanobacteria, "a
diverse and relatively poorly studied group of organisms, comprising some 150 different genera," was not en-
abled by a specification that employed only one species in the working examples and mentioned only nine gen-
era. [FN55]
An example of a case where the claims were overly broad in relation to the description of the invention in-
volved a patent for the purification of a hormone from pituitary glands. The inventors claimed all preparations of
the hormone that were at least at the purity of one International Unit (IU) of hormone per milligram. However,

the inventors had only achieved a purity level of 2.3 IUs per milligram. Because the specification only enabled
the production of hormone of *7-31 at most 2.3 IUs per milligram, the claim was held too broad, and the patent
was invalidated. [FN56] Therefore, it is important to limit the claimed matter to the scope that can be enabled in
the specification. Thus, if the claims include a numerical range, it is desirable that the specification enable the
entire claimed range. If the specification in fact expressly teaches against a portion of the claimed range, a court
could hold as a matter of law that the specification is nonenabling. [FN56.1]
If only one species of an invention is provided, but there is still enough information to produce the other
species without undue experimentation, the enablement requirement for a generic claim is satisfied. [FN57] In
the previously discussed application for an electronic bone growth stimulator, the claims were not unduly broad
because there was sufficient disclosure to enable one skilled in the art to reasonably experiment to determine the
correct dosage levels for all of the versions of the invention. [FN58] However, where a claim is broad enough to
read on antibodies produced by three techniques, but only one technique is enabled, the claim is invalid.
[FN58.1]
A claim directed to all methods that result in "seamless image compression" is invalid because the specifica-
tion described only one embodiment of seamless image compression. [FN58.2]
*7-32 § 7.3.2.7 The Specification Must Teach How to Make and Use Each Member of a Markush Group
When a Markush group is used to recite certain classes of variations of the invention, rather than attempting
to list each alternative separately, the inventor names the generic class and then lists the members included in
the group. One example is where a patent for a chemical compound claims "an alkyl group, selected from the
group consisting of methyl, ethyl, and isopropyl, attached to a basic structure." [FN59] Another example is
where a claim includes "a fastener, selected from a group consisting of hook and loop fasteners, interconnecting
geometric structures and interlocking posts and cavities." When a claim recites a Markush group, the inventor
must disclose enough information to teach how to make and how to use the invention employing each member
of the group. [FN60]
In one case that involved a patent for a class of pharmaceutical compounds, the court found that there was
insufficient disclosure about how to make the various compounds in the class, and therefore the claims were too
broad. The inventors claimed a Markush group consisting of various alkyl radicals attached to a basic ring struc-
ture. They provided working examples for certain variations, but there was no teaching as to how to make the
compound with many of the listed alkyl radicals. The claim that referred to the Markush group was therefore in-
validated for insufficient disclosure. [FN61]
*7-33 § 7.3.2.8 Working and Prophetic Examples Can Be Used to Satisfy the Enablement Requirement
Working examples and prophetic examples are routinely used to satisfy the enablement requirement, partic-
ularly for chemical applications. [FN62] Working examples are those that describe tests that have actually been
conducted, and the test results. Working examples are not required, [FN63] and prophetic (or "paper") examples
may be used. Prophetic examples describe the manner of producing an embodiment of the invention that has not
already been conducted. It is important to state clearly that a prophetic example is not a working example. If a
prophetic example is represented as work actually done, a charge can arise in litigation that the examiner was
misled. To reduce any confusion, prophetic examples use the present or future tense, and do not use the past
tense. [FN64] Further, it is recommended that prophetic examples be clearly labeled as such. [FN64.1]
One example of a patent application that used a prophetic example was an application claiming a blasting

agent. The inventor had not yet produced an embodiment, but in the disclosure suggested numerous salts, fuels,
and emulsifiers, and listed the desired properties of these materials that would produce the blasting agent. The
inventor included prophetic examples based on actual experiments that differed slightly from the ones required
to produce the invention. *7-34 The court held that there was sufficient information and guidance to enable
someone skilled in the art to select the proper components and produce the invention with reasonable experi-
mentation. [FN65]
§ 7.3.2.9 The Enablement Requirement Does Not Extend to Technology That Arises After the Time of Fil-
ing
A claim can be written so broadly that it encompasses after-developed technology. For example, in Chiron
Corp. v. Genentech, Inc., [FN65.1] the claims were broad enough to cover variations of monoclonal antibodies
that first appeared in the literature after the filing date of the application at issue. There is no obligation for such
a broad claim to enable non-existent technology.
[FN27]. M.P.E.P. § 2164.
[FN28]. In re Moore, 439 F.2d 1232, 169 U.S.P.Q. 236 (C.C.P.A. 1971).
[FN29]. Genentech, Inc. v. Wellcome Found., 29 F.3d 1555, 31 U.S.P.Q.2d 1161 (Fed. Cir. 1994).
[FN30]. Christianson v. Colt Indus. Operating Corp., 822 F.2d 1544, 3 U.S.P.Q.2d 1241 (Fed. Cir. 1987).
[FN31]. Id.
[FN32]. Int'l Standard Elec. Corp. v. Ooms, 157 F.2d 73, 70 U.S.P.Q. 32 (D.C. Cir. 1946).
[FN33]. 2 D. CHISUM, PATENTS 7-26 (1989).
[FN34]. In re Howarth, 654 F.2d 103, 210 U.S.P.Q. 689 (C.C.P.A. 1981).
[FN35]. In re Naquin, 398 F.2d 863, 158 U.S.P.Q. 317 (C.C.P.A. 1968).
[FN36]. Int'l Standard Elec. Corp. v. Ooms, 157 F.2d 73, 70 U.S.P.Q. 32 (D.C. Cir. 1946).
[FN37]. In re Sherwood, 613 F.2d 809, 816, 204 U.S.P.Q. 537 (C.C.P.A. 1980), cert. denied, 450 U.S. 994
(1981).
[FN38]. In re Buchner, 929 F.2d 668 (Fed. Cir. 1991).
[FN39]. Id.
[FN40]. N. Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 15 U.S.P.Q.2d 1321 (Fed. Cir. 1990).
[FN41]. In re Gardner, 427 F.2d 786, 166 U.S.P.Q. 138 (C.C.P.A. 1970); see also Union Pac. Res. Co. v. Ches-
apeake Energy Corp., 236 F.3d 684, 57 U.S.P.Q.2d 1293 (Fed. Cir. 2001).
[FN42]. In re Winkhaus, 527 F.2d 637, 188 U.S.P.Q. 129 (C.C.P.A. 1975).
[FN42.1]. Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361 (Fed. Cir. 2005).

[FN43]. In re Koller, 613 F.2d 819, 204 U.S.P.Q. 702 (C.C.P.A. 1980).
[FN44]. In re Metcalfe, 410 F.2d 1378, 161 U.S.P.Q. 789 (C.C.P.A. 1969).
[FN45]. Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 219 U.S.P.Q. 1137 (Fed. Cir. 1983).
[FN46]. Id.
[FN47]. In re Wands, 858 F.2d 731, 8 U.S.P.Q.2d 1400 (Fed. Cir. 1988); Enzo Biochem, Inc. v. Calgene, Inc.,
188 F.3d 1362, 52 U.S.P.Q.2d 1129 (Fed. Cir. 1999).
[FN48]. United States v. Telectronics, Inc., 857 F.2d 778, 8 U.S.P.Q.2d 1217 (Fed. Cir. 1988).
[FN49]. In re Wands, 858 F.2d 731, 8 U.S.P.Q.2d 1400 (Fed. Cir. 1988); Chiron Corp. v. Genentech, Inc., 363
F.3d 1247 (Fed. Cir. 2004).
[FN49.1]. Falkner v. Engliss, 448 F.3d 1357 (Fed. Cir. 2006).
[FN50]. White Consol. Indus., Inc. v. Vega Servo-Control, Inc., 713 F.2d 788, 218 U.S.P.Q. 961 (Fed. Cir.
1983).
[FN52]. In re Wands, 858 F.2d 731, 8 U.S.P.Q.2d 1400 (Fed. Cir. 1988).
[FN52.1]. Chiron Corp. v. Genentech, Inc., 363 F.3d 1247 (Fed. Cir. 2004).
[FN52.2]. Rasmusson v. Smith KlineBeecham Corp., 413 F.3d 1318 (Fed. Cir. 2005).
[FN53]. In re Fisher, 427 F.2d 833, 166 U.S.P.Q. 18 (C.C.P.A. 1970).
[FN54]. Telectronics, Inc., 857 F.2d 778, 8 U.S.P.Q.2d 1217 (Fed. Cir. 1988); Nat'l Recovery Tech., Inc. v.
Magnetic Separation Sys., Inc., 166 F.3d 1190, 49 U.S.P.Q.2d 1671 (Fed. Cir. 1999).
[FN55]. In re Vaeck, 20 U.S.P.Q.2d 1438 (Fed. Cir. 1991).
[FN56]. In re Fisher, 427 F.2d 833, 166 U.S.P.Q. 18 (C.C.P.A. 1970).
[FN56.1]. AK Steel Corp. v. Sollac, 344 F.3d 1234, 68 U.S.P.Q. 2d 1280 (Fed. Cir. 2003).
[FN57]. United States v. Telectronics, Inc., 857 F.2d 778, 8 U.S.P.Q.2d 1217 (Fed. Cir. 1988); Invitrogen Corp.
v. Clontech Labs, Inc., 429 F.3d 1052 (Fed. Cir. 2005).
[FN58.2]. Lizardtech Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005). In the author's view, it
appears that the Lizardtech court was actually stating that there was a failure to satisfy the enablement require-
ment than the written description requirement.
[FN59]. R. FABER, LANDIS ON MECHANICS OF PATENT CLAIM DRAFTING 148-50 (3d ed. 1990).

[FN60]. In re Fouche, 439 F.2d 1237, 58 C.C.P.A. 1086, 169 U.S.P.Q. 429 (C.C.P.A. 1971).
[FN61]. Id.
[FN62]. M.P.E.P. § 2164.02.
[FN63]. In re Borkowski, 422 F.2d 904 (C.C.P.A. 1970).
[FN64]. See M.P.E.P. § 608.01(p).
[FN64.1]. Hoffmann-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 66 U.S.P.Q. 2d 1385 (Fed. Cir. 2003)
(using past tense in an example to suggest falsely that test was performed resulted in finding of inequitable con-
duct); Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 66 U.S.P.Q.2d 1341 (Fed. Cir. 2003); Novo Nor-
disk Pharms. Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347 (Fed. Cir. 2005).
[FN65]. Atlas Powder Co. v. E.I. Du Pont de Nemours & Co., 750 F.2d 1569, 224 U.S.P.Q. 409 (Fed. Cir.
1984).
END OF DOCUMENT


Jeffrey G. Sheldon

§ 7.4 Satisfying the "Best Mode" Requirement of § 112
*7-34 § 7.4.1 What Is the "Best Mode" Requirement?
Section 112 of title 35 requires that the "specification shall . . . set forth the best mode contemplated by the
inventor of carrying out his invention." [FN66] An inventor cannot receive a patent if the best mode has been
concealed. The patent will be invalidated if (1) the inventors knew of a better mode of carrying out the claimed
invention than they disclosed in the specification and (2) the inventors concealed that better mode. Thus, identi-
fying what should be disclosed as a best mode is both a subjective and a factual determination, based on an as-
sessment of the inventor's state of mind at the time *7-35 the patent application was filed and whether the in-
ventor knew of a better mode of practicing the invention at that time. [FN67]
Frequently inventors want to hold something back to maintain trade secrets as a backup to patent protection.
That cannot be done. The consequences of concealing the best mode can be disastrous. An accused infringer can
invalidate the patent if the best mode has not been disclosed. Moreover, if a court finds that the inventor has in-
tentionally concealed this information, then an otherwise valid patent could be held unenforceable [FN68] and
the court might even find inequitable conduct, [FN69] with an award of attorneys' fees to the accused infringer.
Therefore, when drafting the specification, it is extremely important to comply with the "best mode" require-
ment.
It is extremely rare that an examiner rejects an application because of failure to disclose the best mode. Usu-
ally there is no way for the examiner to know that the inventor has a better mode than disclosed for carrying out
the invention. Guidelines for the examiners with regard to examining and application for the best mode require-
ment are in the Manual of Patent Examining Procedure. [FN70]
[FN66]. 35 U.S.C. § 112.
[FN67]. Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923 (Fed. Cir. 1990).
[FN68]. Dale Elec., Inc. v. R.C.L. Elec., Inc., 488 F.2d 382, 180 U.S.P.Q. 225 (1st Cir. 1973).
[FN69]. Consol. Aluminum Corp. v. Foseco Int'l Ltd., 10 U.S.P.Q.2d 1143 (N.D. Ill. 1988), aff'd, 910 F.2d 804
(Fed. Cir. 1990).
[FN70]. M.P.E.P. § 2165.
END OF DOCUMENT


Jeffrey G. Sheldon

§ 7.4 Satisfying the "Best Mode" Requirement of § 112
*7-35 § 7.4.2 Guidelines for Satisfying the "Best Mode" Requirement
A constant problem for patent practitioners is what exactly is the best mode, and how much need be dis-
closed about it. The following discussion provides some guidelines. *7-36[ FN71] However, when in doubt, fol-
low the "rule of doubt," that is, when in doubt, disclose all. It is much less likely that a patent will be invalidated
for disclosing too much than too little.
§ 7.4.2.1 The "Best Mode" Requirement Applies Only to Claimed Subject Matter and Unclaimed Ele-
ments Necessary to Operation of the Invention
First, before it can be determined whether a patent application satisfies the "best mode" requirement, the
subject matter claimed must be defined because it is the best mode "of carrying out his invention" that must be
described.
The best mode requirement is not limited to elements specified in the claims. Nevertheless, courts focus on
the claimed subject matter and generally do not require disclosure of non-claimed parts or materials that are
readily available. [FN72] For example, in an application that claimed a new outer shell for golf balls, the best
material for the golf ball core was not disclosed. However, because the application did not claim the golf ball
core material, and because suitable materials were known and readily available, it adequately disclosed the best
mode. [FN73]
Similarly, a patent for a pharmaceutical composition did not violate the best mode requirement because of
the failure to disclose the preferred method for synthesizing the starting material. The reason for this conclusion
was that neither the starting material nor the method of making it was disclosed. An unclaimed method of syn-
thesis need not be disclosed to *7-37 satisfy the best mode requirement. [FN74] However, in dicta, the Federal
Circuit has stated that a best mode violation can occur if a preferred route to obtain unclaimed starting material
for a claimed compound if the undisclosed preferences have a material effect on the properties of the claimed
compound. [FN74.1]
In another example, an application claimed a machine that cleaned computer disks, but did not claim the
disk cleaning fluid. Again, even without a full disclosure of the components in the fluid, because the fluid was
readily available and not claimed, the "best mode" requirement was satisfied. [FN75]
In addition, the application need not disclose the best method to obtain an unclaimed use because the "best
mode" requirement focuses only on the claimed invention. For example, a patent that claimed a rifle and rifle
parts was challenged on the basis that the patent did not disclose the best method necessary to make the parts in-
terchangeable with those of an M-16 rifle. Since the application did not claim that the parts were interchange-
able with an M-16 rifle, the patent was valid. [FN76]

In another example, a patent for an amplifier was challenged on the basis that it did not disclose the best
mode to boost a particular type of voltage, namely wordline voltage. Because the inventors only claimed general
amplification and not any specific type of amplification, and did not consider wordline voltage boosting to be
the best feature of their invention, the patent was upheld. [FN77]
*7-38 The best mode requirement applies not only to the claimed invention, but also to unclaimed elements
necessary to the operation of the invention. [FN77.1] For example, an inventor for scanning integrated circuit
chips utilizing computer software needed to disclose, at least implicitly, the software used to practice the inven-
tion even though the software was not part of the claims. The specific source code need not be described if cre-
ation of that source code is within the skill of the art. [FN77.2]
§ 7.4.2.2 Only the Best Mode As of the Filing Date Need Be Disclosed
The "best mode" requirement applies to the best mode only on the day of filing; if the inventor later discov-
ers a better method, the patent will not be invalidated, as long as that method was not considered better than the
one specified when the patent application was filed. [FN78]
§ 7.4.2.3 The Best Mode Is Not Necessarily the Eventual Commercial Method
The disclosed method does not necessarily need to be the method eventually commercially adopted, as long
as it is the best mode conceived of by the inventor at the time of filing. [FN79] Often the disclosed method
might result in the highest quality *7-39 product, but may turn out to be commercially infeasible. Years of ex-
perimentation can be required after the patent application is filed to determine the best mode for commercial
production. This problem often occurs with patents that involve chemical compositions. In this situation, the pat-
ent will be upheld if at the time of filing the inventor discloses the best known information about desired charac-
teristics of the compound.
For example, a patent for an explosive was upheld when the inventor had not decided on the exact final for-
mulation at the time of filing, but did include examples that demonstrated the characteristics that led to an ef-
fective explosive. [FN80]
Despite the fact that a different commercial embodiment is not per se evidence of a violation of the "best
mode" requirement, it still might weigh against the inventor's favor. Therefore, if a method that later may be
used for commercial production is one that the inventor is aware of on the filing date, it should be described in
the specification.
§ 7.4.2.4 The Specification Need Only Disclose What the Inventor Subjectively Believes to Be the Best
Mode
Because the test for whether a patent satisfies the best mode is subjective, the best mode disclosed does not
have to be the actual optimum mode, as long as the inventor does not know of the optimum mode or does not ap-
preciate that the optimum mode is the best mode. [FN81] As one mode may be best for quality and yet another
for commercial efficiency, it would be impossible to use a purely objective test. In other words, the inventor has
to disclose only what he or she honestly *7-40 believes to be the best mode, and not what an expert believes in
hindsight is the best mode.
One way to determine the best mode is to ask the inventor what method he or she would use if he or she
were to produce the invention today. However, this subjective test cannot be used to hide the best mode. The in-
ventor cannot simply rely on a particular whim, but must seriously consider all possible modes before deciding

which to disclose as the best mode. Because of the serious consequences of intentionally failing to meet the
"best mode" standard, the "rule of doubt" should be followed: all modes that might be preferred by the inventor
should be disclosed.
§ 7.4.2.5 Violation of the "Best Mode" Standard Can Be Accidental
Violation of the "best mode" standard need not be intentional; even accidental concealment can violate the
"best mode" requirement. [FN82] Therefore, in order to ensure the patent's validity, it is best to clearly disclose
all information that might be relevant to the best mode.
§ 7.4.2.6 The Best Mode Must Be Disclosed Even If the Applicant Did Not Invent It
The best mode must be disclosed even if the applicant was not the discoverer of the best mode. Since the
subjective test for best mode focuses on what the inventor knew at the time of filing, if the applicant knew of a
better method for practicing the invention, it must be disclosed, whether or not he or she is the actual inventor.
The best mode need not be developed *7-41 by the patent applicant. It may be the commercial product of a third
party, or even the trade secrets of another. [FN83]
§ 7.4.2.7 The Description of the Best Mode Has to Be Objectively Enabling
How much information is needed to disclose the best mode adequately is determined by an objective test.
The description of the best mode should be clear and concise, and it must contain all information necessary for
someone skilled in the art to understand and use the best mode. [FN84] Thus, once the "subjective" best mode is
identified, the adequacy of the description of the best mode is determined objectively. In other words, the en-
ablement requirement of 35 U.S.C. § 112 applies to the best mode. The specification must contain a description
of the manner and process of making and using the best mode in such full, clear, concise, and exact terms as to
enable any person skilled in the art to make and use the best mode. [FN85]
An inadequate description of the best mode invalidates a patent. For example, in a patent application for a
process to mold foamed thermoplastic products, the valve and extruder were illustrated with a blank box. The in-
ventor claimed that one of ordinary skill in plastics molding could select the correct valve and extruder.
However, to achieve the best mode, the inventor had used a unique valve system that was specially designed to
avoid gas leakage, which was not disclosed. *7-42 This was deemed an inadequate disclosure, because someone
skilled in the art of plastics molding would have had to engage in undue experimentation to avoid gas leakage,
and the patent was invalidated. [FN86]
The description of the best mode must be sufficiently clear that someone skilled in the art does not need to
engage in undue experimentation to reproduce the best mode. [FN87] For example, the specification should not
refer to a general category of materials, where the specific type of material required for the best mode is known.
This is illustrated by a case where a patent application for a resistor referred to an insulative fluid injected
between the resistor and the metal housing as "materials in the classification of epoxys, phenolics or silicones."
To reproduce the invention, someone skilled in the art would have had to conduct undue experiments to determ-
ine the best insulative fluid. Because the inventor knew which epoxy would be best to carry out the invention,
the vague descriptions amounted to concealment. [FN88]
While the description of the best mode cannot require undue experimentation to reproduce the best mode, a
reasonable amount of experimentation is allowed. If there is sufficient information for a person skilled in the art
to practice the best mode of an invention after a reasonable amount of experimentation, the patent will be up-
held. [FN89] In a case involving the expression of a cloned gene, the Federal Circuit held that it was sufficient

for the inventor to disclose a range of methotrexate concentration needed to amplify expression of the gene; it
was not necessary to disclose the exact concentration because one skilled in the art of gene expression *7-43
could experiment and determine the best concentration within a reasonable time. [FN90]
If the materials necessary to practice the best mode are not commercially available, the inventor can be re-
quired to provide them. This especially applies to biotechnology patents, for which the necessary materials can
be obtained only from nature. In those cases, the material needed to practice the best mode must be available in
a depository. However, that requirement only applies when the materials are not available or can be produced
only with undue experimentation. For example, in a case that involved a patent for human erythropoietin pro-
duced by expression of a cloned gene, the inventor was not required to deposit the cells used for the best expres-
sion because they were readily available. [FN91]
Also, in a similar case that involved a patent for purification of a protein using monoclonal antibodies, the
party challenging the patent claimed that because of the laborious procedure required to screen the monoclonal
antibodies to obtain the highest quality protein, the inventors should have made the antibody available in a de-
pository. The court disagreed and held that where all of the materials needed to obtain the antibody are commer-
cially available, and one skilled in the art could follow the procedure, it is sufficient to disclose the procedure in
the application and no deposit is necessary. [FN92]
*7-44 § 7.4.2.8 The Use of Trademarks to Satisfy the Best Mode Requirement
The description of the best mode must be clear so that one skilled in the art does not need to engage in un-
due experimentation to reproduce the best mode. When the best mode uses a material that is readily available
under a trademark or trade name, it is recommended that both the trademark and specific properties and manu-
facturer be sufficiently disclosed. The details of the use of trademarks are described in section 7.5.10.6.
To avoid indefiniteness, uncertainty, and arbitrariness, the applicant should disclose both the generic prop-
erties of the preferred material and the trademark and the supplier of the material used.
§ 7.4.2.9 The Disclosure of the Best Mode Cannot Rely on Prior Art that Is Nonconventional or Not
Widely Known
The inventor cannot rely on prior art to satisfy the "best mode" requirement when the prior art is not widely
known to someone skilled in the art. [FN93] Because the resolution of this question in court usually will rely on
expert testimony, it can be difficult when writing an application to predict exactly which prior art is well known
and conventional. Moreover, even when the prior art is widely known, intentional concealment of manufacturing
information necessary to practice the best mode is still a violation of the "best mode" requirement. [FN94] The
inventor's intent is determined from the factual circumstances of the case, including the scope of the invention,
*7-45 skill in the art, and evidence regarding the inventor's state of mind. [FN95] Therefore, in order to resolve
any doubt, it is recommended that any information crucial to the best mode of the invention be disclosed, even if
it is well known in the prior art.
An example of a court's holding that the inventor could not rely on prior art concerned a device that formed
plastic pipes with a variable wall thickness. The inventor did not disclose that in order to slow the extrusion of
the piping material, and thereby increase the thickness of the walls of the pipe, a second gear was needed to op-
erate rollers that pulled the pipe out of the extruder. The inventor's argument that the mechanism of using a
second gear to slow down rollers was known in the prior art was unsuccessful. [FN96]
In another example, a patent for a valve stem seal was invalidated because the specification did not disclose

the best method of obtaining good leakage control by a fluoride surface treatment. The inventors unsuccessfully
argued that this treatment was known in the prior art. [FN97]
§ 7.4.2.10 The Best Mode Need Not Be Identified As Such, But It Should Not Be Hidden
The best mode need not be specifically identified as such. The best mode can be included as one of a num-
ber of possibilities if it is clear to someone skilled in the art which is the best mode. [FN98] For example, a pat-
ent was upheld where the inventor claimed the expression of a cloned gene into protein, and the application de-
scribed ten different cell types that could be used for expression. The Federal Circuit upheld *7-46 the patent be-
cause the optimal cell line was obvious to someone skilled in the art of human gene expression, as it was the
only cell line listed that was known to properly express and process human protein. [FN99]
A patent is not rendered invalid for failure to disclose the best manufacturing technique for an invention
when that technique is no more than a routine manufacturing choice. For example, a patent was upheld in which
the inventor failed to disclose that embedment molding was the best technique for manufacturing certain devices
containing thermochromic materials. The Federal Circuit upheld the patent because the molding technique was a
routine manufacturing choice known to those skilled in the art. The court further held that the "best mode" re-
quirement does not necessarily cover the selections of each of the specific steps and materials in a process of
manufacture. The court noted that the function of a patent specification is not to be a detailed production sched-
ule. [FN100]
If too many possibilities are present, the "best mode" requirement can be held to be unsatisfied due to con-
cealment. [FN101] Therefore, it is safest to designate the best mode clearly and not include it among a list of
possibilities in an attempt to conceal it. In an unpublished opinion, a patent was invalidated because the list of
possible combinations was too large. It involved a patent for carbon disc aircraft brakes. While the preferred
mode was known at the time of filing to require a ditungsten-monoboride additive, that was not disclosed. In-
stead, the application suggested treatment with additives, including tungsten, boron, silicon carbide, zirconium,
and titanium. The patent was invalidated because *7-47 it was not obvious to someone skilled in the art which
additives, in which proportions, were necessary. [FN102]
§ 7.4.2.11 The Public Cannot Be Misled As to the Best Mode
Patent applications do not satisfy the "best mode" requirement if they are misleading as to the method of ob-
taining the best mode. This is the ultimate type of concealment and must be avoided. For example, in a patent
application for a batch data processor that claimed a novel method of recording data on magnetic audiocassettes,
the application specified that normal, commercially available audiocassettes were used to record the data. That
was misleading, because at the time of filing the inventor knew that the best mode of recording the data required
specially designed magnetic audiocassettes, and regular audiocassettes performed poorly. While the inventor
claimed that at the time of filing, one particular brand of commercially available audiocassettes performed well,
the inventor did not even name that brand. Therefore, the patent was invalidated for not disclosing either of the
two best modes, and for being deliberately misleading by not revealing the type of audiocassette necessary to
practice the best mode. [FN103] This example illustrates how important it is to fully disclose the best mode
known at the time of filing, including the brand name and supplier of components of the invention.
In another case, the inventor deliberately included misleading information. While the preferred mode of pro-
ducing a ceramic foam filter consisted of a ceramic slurry of known ingredients and proportions, the specifica-
tion left some constituents unnamed and stated false proportions for the named *7-48 constituents. The slurry
described in the specification was not only not the best mode, it was inoperable. [FN104]

Another way to conceal the best mode is to fully describe an alternate method while insufficiently disclos-
ing the best mode. This also violates the "best mode" standard. For example, the Federal Circuit invalidated a
patent for a gas laser where the inventors attempted to conceal the best mode. Two methods of constructing a
component of the laser were disclosed. One method, the best mode, was only briefly referred to, while a lesser
alternative method was described in full. The Federal Circuit held that such disclosure would mislead the reader
to believe that the fully detailed method was the best mode, and invalidated the patent. [FN105]
§ 7.4.2.12 A Working Example Is an Effective Way to Disclose the Best Mode
A working example can satisfy the statutory enablement requirement and can also effectively disclose the
best mode. [FN106] In complex technologies, a working example is an especially desirable way to disclose the
best mode. [FN107] However, a working example is not required if there is sufficient disclosure for one skilled
in the art to practice the best mode without undue experimentation. [FN108]
§ 7.4.2.13 Trade Secrets and the Best Mode Are Incompatible
Trade secrets pose a problem. Often a product is designed specially for a customer by an inventor, or an in-
vention *7-49 requires the use of material that is a trade secret of a supplier and is only known by its trade name.
Even though it may be beneficial to the inventor or supplier not to disclose that information to the public, the
"best mode" requirement must still be strictly followed and the information has to be disclosed.
Use of a trade name to identify a product can pose difficulties if no other product can be used to satisfy the
"best mode" requirement. It is important in such a situation to at least generically describe the trade name
product so that substitutes can be obtained. For example, in a patent application for a computer disk automated
cleaner, the specification for the liquid cleaner was "a non-residue detergent solution such as Randomex cleaner
No. 50281." Because the inventor generically described the proprietary Randomex as a "non-residue detergent
solution," the "best mode" standard was satisfied. [FN109]
When there are no substitutes for the proprietary product, the components of the proprietary product must be
disclosed. For example, an inventor claimed a computerized control system for machine tools. An integral part
of the system used a computer program that was a trade secret of another company. The Federal Circuit invalid-
ated the patent because it failed to disclose the program, and no suitable substitutes were available. The court's
reasoning was that if trade secrets were not disclosed in patents where no substitutes were available, the patent's
exclusionary rights would be extended beyond the protected period because even one skilled in the art could not
reproduce the invention without purchasing the program. [FN110]
*7-50 Similarly, where an inventor knew of a preferred hardness of a constituent material of a claimed in-
vention and specially ordered such material to make the only embodiment of the claimed invention, but failed to
disclose anywhere in the specification the material hardness or the supplier and trade name of the preferred com-
pound, the claim was invalid because of the inventor's failure to disclose the best mode. [FN111] Section
7.5.10.6 below discusses in more detail the use of trademarks in the specification.
§ 7.4.2.14 The Best Mode Requirement Does Not Include Unclaimed Uses of the Invention
The best mode of practicing an unclaimed use, and even the best use, of the claimed invention need not be
disclosed. [FN111.1] For example, in Brooktree Corp. v. Advanced Microdevices, [FN112] the Federal Circuit
held, "[t]he various applications to which an invention can be put are not the focus of the best mode require-
ment." Thus, a patent directed to a particular circuit for a video display did not violate the best mode require-
ment when the patent application made no reference to a video display as originally filed, but only generally de-

scribed use of the display in a data processor. In that particular case, the applicant added the phrase "for video
display" to the preamble of the claims pursuant to a rejection under 35 U.S.C. § 112.
[FN71]. Adams, What's Better, What's Best--The Best Mode Requirement in U.S. Patent Practice, 11 J. PAT. &
TRADEMARK OFF. SOC'Y 811 (1991).
[FN72]. DeGeorge v. Bernier, 768 F.2d 1318, 226 U.S.P.Q. 758 (Fed. Cir. 1985); Randomex, Inc. v. Scopus
Corp., 849 F.2d 585, 7 U.S.P.Q.2d 1050 (Fed. Cir. 1988).
[FN73]. Spalding & Evenflo Cos. v. Acushnet Co., 718 F. Supp. 1023, 13 U.S.P.Q.2d 1081 (D. Mass. 1989).
[FN74]. Eli Lilly & Co. v. Barr Labs., Inc., 222 F.3d 973, 55 U.S.P.Q.2d 1609 (Fed. Cir. 2000).
[FN74.1]. Bayer AG v. Schein Pharms., Inc., 301 F.3d 1306 (Fed. Cir. 2002).
[FN75]. Randomex, Inc. v. Scopus Corp., 849 F.2d 585, 7 U.S.P.Q.2d 1050 (Fed. Cir. 1988).
[FN76]. Christianson v. Colt Indus. Operating Corp., 822 F.2d 1544, 3 U.S.P.Q.2d 1241 (Fed. Cir. 1987); N.
Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 55 U.S.P.Q.2d 1065 (Fed. Cir. 2000).
[FN77]. Tex. Instruments, Inc. v. United States Int'l Trade Comm'n, 871 F.2d 1054, 10 U.S.P.Q.2d 1257 (Fed.
Cir. 1989).
[FN77.1]. Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 58 U.S.P.Q.2d 1321 (Fed. Cir. 1997);
Applied Med. Res. Corp. v. United States Surgical Corp., 147 F.3d 1374, 47 U.S.P.Q.2d 1289 (Fed. Cir. 1998).
[FN77.2]. Robotic Vision Sys. v. View Eng'g, Inc., 112 F.3d 1163, 42 U.S.P.Q.2d 1619 (Fed. Cir. 1997).
[FN78]. Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528 (Fed. Cir. 1991); Hughes Aircraft Co. v. United
States, 717 F.2d 1351, 219 U.S.P.Q. 473 (Fed. Cir. 1983).
[FN79]. Atlas Powder Co. v. E.I. Du Pont de Nemours & Co., 588 F. Supp. 1455, 221 U.S.P.Q. 426 (N.D. Tex.
1983), aff'd, 750 F.2d 1569, 224 U.S.P.Q. 409 (Fed. Cir. 1984).
[FN80]. Id.
[FN81]. Studiengesellschaft Kohle v. Eastman Kodak Co., 616 F.2d 1315, 206 U.S.P.Q. 577 (5th Cir.), cert.
denied, 449 U.S. 1014, 208 U.S.P.Q. 88 (1980).
[FN82]. DeGeorge v. Bernier, 768 F.2d 1318, 226 U.S.P.Q. 758 (Fed. Cir. 1985); Graco, Inc. v. Binks Mfg. Co.,
60 F.3d 785, 35 U.S.P.Q.3d 1255 (Fed. Cir. 1995); Spectra-Physics, Inc. v. Coherent, Inc. 827 F.2d 1524, 3
U.S.P.Q.2d 1737 (Fed. Cir. 1987); United States Gypsum Co. v. Nat'l Gypsum Co., 74 F.3d 1209, 37 U.S.P.Q.2d
1388 (Fed. Cir. 1996).
[FN83]. Checkpoint Sys., Inc. v. Knogo Corp., 490 F. Supp. 116, 207 U.S.P.Q. 257 (E.D.N.Y. 1980); Graco,
Inc. v. Binks Mfg. Co., 60 F.3d 785, 35 U.S.P.Q.3d 1255 (Fed. Cir. 1995); Chemcast Corp. v. Arco Indus. Corp.,
913 F.2d 923, 16 U.S.P.Q.2d 1033; Consol. Aluminum Corp. v. Foseco Int'l Ltd., 10 U.S.P.Q.2d 1143 (N.D. Ill.
1988); Checkpoint Sys., Inc. v. Knogo Corp., 490 F. Supp. 116, 207 U.S.P.Q. 257 (E.D.N.Y 1980).
[FN84]. M.P.E.P. § 608.01(a).

[FN85]. Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 16 U.S.P.Q.2d 1033 (Fed. Cir. 1990).
[FN86]. Thyssen Plastik Anger KG v. Induplas, Inc., 576 F.2d 400, 200 U.S.P.Q. 197 (1st Cir. 1978).
[FN87]. In re Stephens, 529 F.2d 1343, 188 U.S.P.Q. 659 (C.C.P.A. 1976).
[FN89]. Novo Industri A/S v. Travenol Lab., Inc., 677 F.2d 1202, 215 U.S.P.Q. 412 (7th Cir. 1982).
[FN90]. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 18 U.S.P.Q.2d 1016 (Fed. Cir. 1991).
[FN91]. Id.
1991).
[FN93]. See Wahl Instruments, Inc. v. Acvious, Inc., 21 U.S.P.Q.2d 1123 (Fed. Cir. 1991); Dana Corp. v. Ltd.
P'ship, 860 F.2d 415, 8 U.S.P.Q.2d 1692 (Fed. Cir. 1988).
[FN94]. Wahl Instruments, Inc. v. Acvious, Inc., 21 U.S.P.Q.2d 1123 (Fed. Cir. 1991).
[FN95]. Id.
[FN96]. Thyssen Plastik Anger KG v. Induplas, Inc., 576 F.2d 400, 200 U.S.P.Q. 197 (1st Cir. 1978).
[FN97]. Union Carbide Corp. v. Borg-Warner Corp., 550 F.2d 355, 193 U.S.P.Q. 1 (6th Cir. 1977).
[FN98]. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 18 U.S.P.Q.2d 1016 (Fed. Cir. 1991).
[FN99]. Id.
[FN100]. Wahl Instruments, Inc. v. Acvious, Inc., 950 F.2d 1575, 21 U.S.P.Q.2d 1123 (Fed. Cir. 1991).
[FN102]. Loral Corp. v. B.F. Goodrich Co., unpublished (Fed. Cir. 1990).
[FN103]. N. Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 15 U.S.P.Q.2d 1321 (Fed. Cir. 1990).
[FN104]. Consol. Aluminum Corp. v. Foseco Int'l Ltd., 10 U.S.P.Q.2d 1143 (N.D. Ill. 1988), aff'd, 910 F.2d 804
(Fed. Cir. 1990).
[FN105]. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 3 U.S.P.Q.2d 1737 (Fed. Cir.), cert. denied,
484 U.S. 954 (1987).
[FN106]. In re Strahilevitz, 668 F.2d 1229, 212 U.S.P.Q. 561 (C.C.P.A. 1982).
[FN107]. Id.
[FN108]. In re Borkowski, 422 F.2d 904 (C.C.P.A. 1970).

1983).
[FN111.1]. N. Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 53 U.S.P.Q.2d 1065 (Fed. Cir. 2000).
[FN112]. Brooktree Corp. v. Advanced Microdevices, 977 F.2d 1555, 24 U.S.P.Q.2d 1401 (Fed. Cir. 1992).
END OF DOCUMENT


Jeffrey G. Sheldon

§ 7.5 Writing the Specification
*7-51 § 7.5.1 Introduction
The preceding sections of this chapter describe the legal requirements for writing a specification. In theory,
any good technical writer should be able to apply these legal principles and write a patent application that satis-
fies the requirements of 35 U.S.C. § 112. However, patent attorneys and agents are not mere technical writers.
They are retained by clients to obtain patents and have those patents stand up in the marketplace and, if chal-
lenged, in court. Therefore, the purpose of the remainder of this chapter is to close the gap between technical
writing and writing an effective patent application.
The specification serves two purposes. The first purpose is to satisfy the minimum legal requirements of 35
U.S.C. § 101 and § 112 in order to obtain a patent. As discussed above, this includes a description of the utility
of the invention, a description of the invention, satisfaction of the "best mode" requirement, and teaching one of
ordinary skill in the art how to practice the invention.
In addition to these basic legal requirements, the specification is a "sales" document. It should be written to
persuade the examiner that the application is for a meritorious invention and the invention is worthy of patent
protection. It should be written to persuade judges and juries that the invention is worthy of protection. During
litigation, the one document that will certainly be reviewed by the court and the jury, and that will make its way
into the jury room, is the patent. Therefore, the patent specification should be written to persuade the judge and
jury to uphold the validity of the patent.
To achieve this goal, the specification should be written in a style and using terminology that a jury can un-
derstand. In some instances, this may seem difficult to do, as in computer technology or biotechnology.
However, every invention can *7-52 be reduced to terms that the nonspecialist can understand. The trial attorney
will need to do that, and there is no reason the patent attorney or agent cannot do the same. The specification
should include at least some description at this level, no matter how technically complex the invention may be.
For example, a mechanically complex burner tip for burning fuel oil in a power plant can be described as "a
burner that produces low amounts of air pollution because nozzles of the burner inject the fuel oil in a special
fast burning configuration." As another example, a new catalyst for making a polymeric resin can be described
as "a new high surface area catalyst that allows polymer resins to be made 10% faster, and thus 10% cheaper."
An excellent way to learn how to describe an invention nontechnically is to find someone who does not
have a technical background, such as a paralegal, secretary, or spouse, and explain the invention to that person
in simple, nontechnical terms. By explaining the invention in those terms, the practitioner is forced to distill the
invention to its essence. During this discussion, the practitioner should try to persuade the listener that this is a
great invention that deserves seventeen years of exclusivity. Only after that is done is it time to start writing the
specification.

An important concept popularized by Tom Arnold, Esq., is that, during litigation, it is important to distill
the essence of the invention into a short, catchy "theme." There is no reason to wait for litigation to do this. Be-
fore putting pen to paper, it is important to try to develop a theme. If possible, before writing the specification,
the theme should be developed, and the specification should be directed to that theme. Examples of suitable
themes are:
• The first easily processed polyimide resin stable at temperatures higher than 700° F.
• A durable, compact grill scraper that can be inexpensively mass produced.
• A reliable home test for pregnancy.
*7-53 • The first cure for baldness.
• The first sex-improvement potion without risk of traumatic injury or hangover.
• The first successful heavier-than-air flying machine.
• The first full-screen laptop computer with a battery life greater than six hours.
A potential pitfall with using the theme approach is that it can turn out that the theme is wrong because of
art developed subsequent to writing the application. Referring to the last example, assume a piece of prior art
does show a laptop computer with a battery life greater than six hours, and that prior art is discovered only after
the application has been filed. That prior art laptop computer, however, cannot accommodate floppy disk drives
or hard drives. In this situation, it may be possible to obtain a patent stressing the advantages of a laptop com-
puter with disk drives compared to a laptop computer without a disk drive. Nevertheless, the theme written into
the specification would be inaccurate. Thus, not every application lends itself to the "theme" approach.
Another important concept that needs to be considered when writing the specification is that the "invention"
may not really be known until the decision of the jury is in. If the invention is considered to be the patentable
subject matter, then in most applications, even the practitioner does not know exactly what the invention "al-
lowed" by the Patent Office is going to be. More often than not, it is necessary to amend the broadest claim in an
application to obtain allowance. As soon as that is done, the patentable "invention" has been redefined. There-
fore, when writing the specification, it is important to avoid referring to anything as "the invention" because, un-
til the verdict is in from the jury, it is difficult to predict exactly what "the invention" is. Better terminology is to
refer to something described in the specification as a "version of the invention" or an "embodiment of the inven-
tion."
*7-54 The remainder of this chapter describes the various elements of the application using the arrangement
required by 37 C.F.R. § 1.77 and M.P.E.P. § 608.01(a). This description is in general terms for all applications,
regardless of the technology. Additional guidance for the specification for applications directed to specific tech-
nologies is presented in the chapters describing preparing applications for specific technologies. It is recommen-
ded that those chapters be referred to whenever appropriate.
END OF DOCUMENT


Jeffrey G. Sheldon

*7-54 § 7.5.2 Parts of the Application
The PTO wants the specification to be arranged in the following order: [FN113]
(A) Title of the Invention
(B) Cross-Reference to Related Applications [FN113.1]
(C) Statement Regarding Federally Sponsored Research or Development
(D) Background of the Invention
(1) Field of the Invention
(2) Description of Related Art
(E) Brief Summary of the Invention

(F) Brief Description of the Several Views of the Drawing
(G) Detailed Description of the Invention
(H) Claims
(I) Abstract of the Disclosure
(J) Drawings
(K) Sequence Listing (If on Paper)
The PTO wants all section headings capitalized without underlining and without bold type. If no text fol-
lows the *7-55 section heading, the PTO wants the phrase "Not Applicable" to follow the section heading. The
Claims and Abstract start on a new page. The "title of the invention" heading is not used--just the title appears.
It is not recommended that these exact titles be used for all of the sections, because the use of these titles
may not be in the best interest of the applicant. Accordingly, consider using the titles specified in the following
sections of this chapter for the reasons presented. Moreover, there is no advantage to the applicant to use these
section headings when no text follows, and thus it is recommended against wasting paper and attorney effort to
include a section title followed by "Not Applicable."
[FN113]. 37 C.F.R. § 1.77(a); M.P.E.P. § 601.
[FN113.1]. According to 37 C.F.R. § 1.78(a)(2), can alternatively be placed in the Application Data Sheet of 37
C.F.R. § 1.76.
END OF DOCUMENT


Jeffrey G. Sheldon

*7-55 § 7.5.3 Title
The title of the invention should be placed at the top of the first page of the specification. Optionally, the
title can be provided in an application data sheet. [FN114] It should be brief, but technically accurate and de-
scriptive, preferably from two to seven words. It is advantageous to use seven words or less because that is the
limit for a PCT application, and this avoids the necessity of changing the title for a PCT filing.
A good title is usually what appears in the preamble of the broadest claim. If the preamble of claim 1 states:
"A polymeric resin comprising . . .," the title can be "Polymeric Resin." If the preamble of the broadest claim
states: "An apparatus for manufacturing ball bearings comprising . . .," the title can be "Apparatus for Manufac-
turing Ball Bearings."
It is important to avoid making the title overly broad or generic, because that can make it more difficult to
obtain a patent. If a very broad or generic title is used, that arguably broadens the scope of the analogous prior
art and allows the examiner to argue that certain references are prior art, where the references would not be con-
sidered to be prior art in the *7-56 absence of a broad title. For example, in the application directed to a machine
for making ball bearings, if the title were "Apparatus for Making Spherical Articles," arguably the examiner
could apply against the claims any reference that teaches an apparatus for making any spherical article, includ-
ing glass beads, baseballs, and tennis balls. During prosecution, the applicant would want to argue that such ref-
erences are not directed to analogous art, and thus should not be applied against claims directed to making ball
bearings. That argument has a better chance of success in the absence of a broad title.
Another reason that choice of the title is important is that the title can be used to interpret the claims. For
example, see Exxon Chemical Patents, Inc. v. Lubrizol Corp., [FN115] where the Federal Circuit interpreted a
claim to be directed to a composition rather than a "recipe," partly because the title was "Lubricating Oil Com-
positions Containing Ashless Dispersant, [ZDDP], Metal Detergent and a Copper Compound." The Federal Cir-
cuit believed that in view of the title and the use of the word "containing," only a final composition that con-
tained all of the ingredients of the claims infringed the patent, and not a composition resulting from mere inclu-
sion of starting ingredients defined in the claims.
It is recommended that the title be laudatory of the invention. Although this usually does not much impress
a Patent Office examiner, it can help in a trial. If the jury and judge understand that the PTO allowed issuance of
a patent with a title containing a laudatory word such as "improved," "novel," or "faster," this could at least sub-
liminally impress the judge and jury as to the worth of the invention. Consider such titles as
*7-57 "Improved Electrophoresis of Biological Fluids"
"Safety-Improved Car Seat"
"Fast Copier"
"Dependable Camera"

"Novel Ceiling Fan"

"Highly Efficient Automobile Engine."
[FN114]. 37 C.F.R. § 1.72(a).
[FN115]. Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 35 U.S.P.Q.2d 1801 (Fed. Cir. 1995); also
see Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 227 U.S.P.Q. 773 (Fed. Cir. 1985).
END OF DOCUMENT


Jeffrey G. Sheldon

*7-57 § 7.5.4 Identification of Inventors
It can be desirable that the names of the inventors be presented immediately after the title, using the follow-
ing format:
Apparatus for Making Ball Bearings

by
John L. Inventor I
John L. Inventor II
and
Mary S. Inventor
Effective December 1, 1997, the names of the inventors are no longer needed to obtain a filing date; later
identification of the inventors is sufficient. It is better to name the inventors as a matter of habit in the specifica-
tion if they are accurately known at the time of writing. An advantage of identifying the inventors immediately
after the title is that if the tentative identification of the inventors is incorrect, whoever is reviewing the specific-
ation is immediately alerted as to the mistake. Moreover, for those applications filed without formal papers, this
may be the only place whoever is reviewing the application has an opportunity to review the accuracy of the in-
ventor identification, including the spelling of the inventors' names.
However, whenever the inventorship is changed during prosecution, it will be necessary to amend the spe-
cification to change inventorship. So if that is a possibility, it may be best not to identify the initial inventors in
the specification. Maybe compromise by including the names of the inventors *7-58 on a draft of the applica-
tion, but leave them off the final version.
END OF DOCUMENT


Jeffrey G. Sheldon

*7-58 § 7.5.5 Cross-References
Cross-references to related applications are included in the "Cross-Reference" section. This includes any
parent applications from which priority is claimed, as well as any sister applications, such as divisional applica-
tions. In fact, to obtain the benefit of the priority of prior filed U.S. applications and international applications
designating the United States, it is necessary that the first sentence of the specification contain a reference to
each such prior application. [FN116] In addition, this is a good place to refer to any copending applications that
are related to the application being filed. For example, if the application being filed is directed to an apparatus
for making ball bearings and there is a sister application that is copending or will be filed on the same day that
teaches a preferred material for the ball bearings, this is the proper place to cross-reference that sister applica-
tion.
Any application that is cross-referenced must be sufficiently described to identify the application. Identific-
ation is usually by at least the serial number and filing date, and optionally the inventor, title, and status, that is,
pending or abandoned. It is also recommended that the attorney docket number be included in parentheses or in
the margin so that status can easily be determined for updating. If the cross-referenced application does not yet
have a serial number, sufficient information must be provided to identify that application, such as by title, in-
ventor, subject matter, attorney docket number, foreign priority application, and so on.
It is also recommended that cross-referenced applications be incorporated by reference, so that any disclos-
ure in the cross-referenced application can be included verbatim during *7-59 prosecution if necessary. See the
discussion below in section 7.5.10.7 regarding incorporation by reference practice.
When claiming the benefit of a provisional application, if it was filed more than one year prior to the filing
date of the current application, it is important to claim the benefit of any intermediate nonprovisional application
that was filed within one year of the filing date of the provisional application. If that is not done, the Patent Of-
fice does not acknowledge the priority of the provisional application. [FN116.1]
In claiming the benefit of a provisional application that was filed in a language other than English, an Eng-
lish language translation of the prior filed provisional application and a statement that the translation is accurate
need to be provided. [FN116.2]
An exemplary cross-reference section is:

The present application is a division of my application serial number 08/123,456 filed January 1, 2003,
entitled "Machine for Making Ball Bearings," currently pending (attorney docket number 8231); which is a
continuation of my application serial number 07/789,231 filed January 1, 2002, now abandoned; which is a
continuation in part of my U.S. Patent Number 6,400,001 filed January 28,2000, which claims the benefit of
Provisional Application Number ___ filed January 29,1999. The present application is related to copending

application serial number 08/123,457 filed on the same date as the present application by inventor X. All of
these applications and the patent are incorporated herein by reference.
As indicated by this example, the reference to the priority claim can use multiple sentences. [FN116.3]
*7-60 A possible disadvantage of cross-referencing an application arises when the application that incorpor-
ates by reference issues. At that time, the secrecy of the cross-referenced application is lost. [FN117] In other
words, without referring to the above example, as soon as the application containing the quoted language issues,
each application identified, even if pending or abandoned, becomes available to the public. Therefore, if there is
a possibility that the subject matter of an application may need to be maintained as a trade secret, then the ap-
plication should not be cross-referenced unless the cross-reference is necessary to comply with the requirements
of 35 U.S.C. § 112 or for a priority claim.
Careful consideration needs to be given to any claim for priority. Since the patent term is twenty years from
the earliest application from which priority is claimed, a priority claim can shorten the patent term. If a parent
application or patent does not provide support under 35 U.S.C. § 112 for at least one of the claims being presen-
ted in the new application, then it shall not be used for a claim for priority.
It is recommended that any claim for the benefit of a prior application be included when the application is
originally submitted, so that it is not unduly delayed. This claim must be submitted within four months of the ac-
tual filing date of the application, or sixteen months from the filing date of the prior-filed application, whichever
period of time is longer. [FN117.1]
The Patent Office may consider anything referred to in the Cross-Reference Section or in the Background
Section as prior art. Unless something discussed is clearly prior art, it is recommended that the following phrase
be used to avoid the PTO claiming a document cross-referenced is admitted to be prior art:
*7-61 ". . . which is not admitted to be prior art with respect to the present invention by its mention in
the background."
The cross-reference section should also include any reference to a "microfiche appendix" as permitted by
section 1.96(b) of title 37 of the Code of Federal Regulations.
[FN116]. 37 C.F.R. § 1.78(a)(2); M.P.E.P. § 201.11.
[FN116.1]. 1268 OG 89 (Mar. 18, 2003).
[FN116.2]. 37 C.F.R. § 1.78(a)(5)(iv).
[FN116.3]. 37 C.F.R. §§ 1.7(a)(2)(iii) and 1.78(a)(5)(iii).
[FN117]. See 37 C.F.R. § 1.14(a).
[FN117.1]. 37 C.F.R. § 1.78(a)(2).
END OF DOCUMENT


Jeffrey G. Sheldon

*7-61 § 7.5.6 Government Rights
The cross-reference section can include, or a separate section can be provided for, a statement as to any
rights in the invention that may exist under federally sponsored research and development.
§ 7.5.6a Reference to CDs
The specification requires a reference to a Sequence Listing, a table, or a computer program listing appendix
submitted on a compact disc. The reference must include an incorporation-by-reference of the material on the
compact disc, and specify the total number of compact discs, including duplicates, the files on each compact
disc, their date of creation, and their size in bytes. [FN117.2] Any CD submitted to the Patent Office must be fi-
nalized so that it cannot be changed. [FN117.3]
[FN117.2]. 37 C.F.R. § 1.77(a).
[FN117.3]. 37 C.F.R. § 1.52(e)(3)(i).
END OF DOCUMENT


Jeffrey G. Sheldon

The background is an extremely important section of the application. This is where the sales pitch begins.
§ 7.5.7.1 Heading
It is recommended that the heading "Background" be used for this section, rather than the more commonly
used heading "*7-62 Background of the Invention." As discussed above, the exact scope and nature of the inven-
tion may not be known until long after the application is written. Ordinarily, it is safer to use the title "Back-
ground," so as to not prematurely commit to the exact identity of the invention.
§ 7.5.7.2 What the Background Section Should Not Include
What this author believes to be the purpose of the Background section and what the Patent Office wants in
the Background section are inconsistent. According to M.P.E.P. § 608.01(a) and (c), the Patent Office suggests
that the following items be included in the Background section:
a. Field of the Invention
A statement of the field of the art to which the invention pertains.
b. Description of the Related Art
Include where appropriate references to specific art or other information.
This author recommends against putting any of this in the Background section except as specified below.
There is no benefit to be obtained from specifying the "Field of the Invention." Identification of the "field of the
invention" can hurt the applicant. If the field of invention is described very broadly, this can be interpreted to be
an admission that anything within the broad description is analogous art and can be used to reject the claims un-
der 35 U.S.C. § 103. If the field of the invention is described unduly narrowly, then the scope of the claims may
be interpreted during litigation to be of commensurate narrow scope.
Generally, the related art should not be described in the Background section. Any description of the prior art
should be limited to setting up a "straw man" that helps identify the merits of the invention. There is always the
risk that the description of the prior art will be inaccurate, which can raise issues during litigation. Therefore,
unless describing *7-63 the prior art in the Background section assists in obtaining allowance of the application
or will help a judge or jury better understand the merits of the invention, it is recommended that the prior art not
be described in the Background section, or in any other part of the specification.
The Background should not include any admissions that something is prior art unless there is no possible
question about it. Any admission in the background can by used by the Patent Office in rejecting claims, even if
the admission does not fall with any statutory class of prior art. [FN117.4]

Moreover, the Patent Office does not want applicants making "derogatory" remarks about the prior art.
[FN118] The Patent Office considers derogatory remarks to be "statements disparaging the products or processes
of any particular person other than the applicant or statements as to the merits or validity of applications or pat-
ents of another person." Mere comparisons with the prior art are not considered to be disparaging, per se. Ac-
cordingly, if it is not possible to say anything disparaging about any specific prior art reference, why say any-
thing at all?
Special attention must be given when referring to copending applications or any other technology in the
Background Section that is not prior art. To avoid the risk of the Patent Office using a copending application as
prior art, it is recommended that the applicant explicitly state the following: ". . . which is not admitted to be pri-
or art with respect to the present invention by its mention in this Background Section."
The Background section must not contain anything that can be used against the applicant in any product li-
ability lawsuit. For example, if the invention relates to a better motorcycle helmet, it is foolish to discuss the
safety deficiencies of the applicant's prior art helmets. Nothing would be better for *7-64 a plaintiff's personal
injury attorney to read to a jury than a copy of a patent specification in which the defendant has described all the
deficiencies of the helmet that resulted in head injuries. Savvy personal injury attorneys routinely obtain copies
of patents looking for just that type of language.
Therefore, when writing the Background section, it is important to avoid including any statements that may
be useful to a plaintiff's attorney in a product liability lawsuit. Such statements should be deleted unless the cli-
ent knowingly is willing to allow them to stay in, which would be very rare.
§ 7.5.7.3 What the Background Section Should Include
What the Background section should do, rather than discuss the prior art, is to begin the sales pitch for the
invention. The reader who has finished reading the Background section should be left with the belief that there is
a desperate need for a solution to the problems solved by the applicant. For example, for an invention for bioen-
gineered human insulin, the Background section should include a description of the problems of diabetes, in-
cluding the health consequences, the expense of obtaining insulin from animals, and the side effects of using in-
sulin from animals.
As another example, if the invention is for an apparatus that makes almost perfectly spherical ball bearings,
the Background section should include a description of how important ball bearings are and why it is critical that
they be as perfectly spherical as possible.
It is recommended that the material prior art, including everything identified in the Information Disclosure
Statement, be listed in the Background section. The reason for this is that one document always brought into the
jury room is the patent. It is beneficial to argue in closing argument that the art relied upon by the infringer or
art equivalent thereto was considered by the examiner and disclosed in good faith by the inventor right in the
patent, and for the jury to see that for themselves. *7-65 Although the same argument can be made with regard
to an Information Disclosure Statement, and in reality with more justice, the argument does not carry as much
weight.
It is not recommended that the teachings of these references actually be discussed, for the reasons presented
in the prior section. Rather, they can be listed and dismissed using the following technique:
Information relevant to attempts to address these problems can be found in U.S. Patent Nos. _______
and ________. However, each one of these references suffers from one or more of the following disadvant-

ages: __________________.
If the prior art does not suffer from at least one disadvantage, there is no real commercial need for the in-
vention. Thus, if this statement cannot be made, there probably is no need for the patent application in the first
place.
It is important that this listing of references not be referred to as "prior art," because one or more of the ref-
erences may not qualify as prior art. For example, the references may include non-analogous art or art the ap-
plicant can swear behind. An admission that the references are "prior art" may create difficulty during prosecu-
tion.
The final paragraph of the Background section should be a punchline that summarizes the need for the in-
vention. Some examples:
• For the foregoing reasons, there is a need for synthetic human insulin that is of high purity and that
can be inexpensively manufactured.
• For the foregoing reasons, there is a need for a machine that can inexpensively produce perfectly
spherical ball bearings from stainless steel.
• For the foregoing reasons, there is a need for an easily processible polyimide resin that has temperat-
ure stability in excess of 700° F.
*7-66 Another approach to writing the Background is becoming more popular. According to that approach,
the Background should include almost nothing. The reason is that the Federal Circuit has in some cases narrowly
interpreted claims and limited the application of the doctrine of equivalents because of statements made in the
Background. Moreover, sometimes the invention involves identification of the shortcomings of the prior art. By
putting such shortcomings in the Background, it makes it appear that the shortcomings and disadvantages were
commonly known to the art. Using this approach, which does have merit, the Background includes no more than
an identification of the field of the invention, the prior art, and a generic statement that it is desirable to have a
better widget than what is disclosed in the identified references. [FN118.1]
[FN117.4]. In re Nomiya, 509 F.2d 566 (C.C.P.A. 1975).
[FN118]. M.P.E.P § 608.01(r).
[FN118.1]. This approach is advocated by Dale S. Lazar, The Impact of Recent Federal Circuit Decisions on
Crafting Patent Applications--Why Applications Drafted in the Traditional Style May Be Weaker Than You
Thought, paper presented at AIPLA Advanced Patent Prosecution Training Seminar, Minneapolis, MN (June 12,
2003).
END OF DOCUMENT


Jeffrey G. Sheldon

*7-66 § 7.5.8 Summary Section
§ 7.5.8.1 Heading
It is recommended that the heading for the Summary section be just "Summary" rather than "Summary of
the Invention." The reason for this, as discussed above, is that at the time the specification is written, it is usu-
ally not possible to know exactly what the "invention" truly is.
§ 7.5.8.2 Opening
The Summary section should specify the solution to the problems described in the Background section. The
following format is recommended for opening the Summary:
*7-67 The present invention is directed to an apparatus (device, process, chemical compound, machine,
etc.) that satisfies this need (the need defined in the Background section). The apparatus comprises . . .
In other words, whatever need was described in the closing portion of the Background section is described
as being satisfied at the beginning of the Summary section.
§ 7.5.8.3 Contents
The Summary section is a brief and general statement of the invention. It is different from the Abstract,
which is directed toward the disclosure as a whole, rather than the subject matter claimed. The Summary section
can identify the advantages of the invention and how the invention solves the problems described in the Back-
ground section. In chemical cases, it should point out in general terms the utility of the invention. [FN119]
There are, in general, three philosophies about how to write the Summary section. Many practitioners be-
lieve that at least the broadest claim should be presented in the Summary section verbatim to avoid any possible
problem in meeting the "description" requirement of 35 U.S.C. § 112, at least with regard to the broadest claim
in the invention. Another advantage of that approach is that some foreign countries require a one-to-one corres-
pondence between the Summary section and the broadest claims, and thus the application is already written in a
form that is satisfactory for foreign filing.
A second philosophy is that the Summary section should describe the invention in only very general terms,
relying totally on the Description section to satisfy the description requirement of 35 U.S.C. § 112.
*7-68 A third approach, and the one preferred by the author, is to rewrite at least the broadest claim of the
application "in English." In other words, convert the broadest claim into a series of sentences, using as little le-
galese as possible, so that the nature of the invention can be appreciated. For example, consider a patent with a
broadest claim as follows:

1. A grill scraper comprising:

a. a handle; and
b. a head attached to the handle, the head having a plurality of peripheral openings for receiving the
wires of a grill, the openings being spaced apart a sufficient distance so that at least two wires can be
cleaned simultaneously by the head, wherein the handle and head are substantially coplanar.
A suitable Summary for this invention is:
The present invention is directed to a grill scraper that satisfies these needs [needs identified in Back-
ground section]. A grill scraper having features of the present invention comprises a handle and a head, the
head being attached to the handle. The head has a plurality of peripheral openings sized to receive wires of a
grill. The openings are spaced apart a sufficient distance so that at least two wires can be cleaned simultan-
eously. For ease of manufacture and strength, the head and the handle are coplanar.
An advantage of writing the Summary section in understandable English is that this is a section that the
judge and jury could very well read. Therefore, by writing it in plain, understandable English, another opportun-
ity is provided to persuade the judge or jury to uphold the validity of the patent. The Summary section can be an
advocate's statement, something that can be taken into the jury room, where the infringer has no opportunity to
rebut the written words that appear in the Summary section.
How detailed the Summary section should be is a matter of personal preference. It is recommended that for
new practitioners, almost every claim that is in the application should *7-69 be summarized in the Summary sec-
tion. This will make certain that the description requirement of 35 U.S.C. § 112 is satisfied. For more skilled
practitioners, it is much less likely that anything in the claims will be left out of the specification, and that reas-
on for including everything in the Summary section does not apply.
It is good practice to include in the Summary section anything that is likely to be a basis for arguing the
nonobviousness of the invention. Thus, important dependent claims, and narrow independent claims specifying
important features of the invention, should be summarized in the Summary section.
It is also recommended that at least some of the advantages of the invention be discussed in the Summary
section. Again, this is a section that is more likely to be read by the jury than is the Description section of the
patent. Therefore, listing the advantages of the invention only in the Description section may not work, because
the jury may never wade through the technical description of the invention to read about the invention's advant-
ages.
When writing the summary, it is important that the invention not be limited to anything other than the
broadest claims. To the extent that features are not present in the broadest claim, it must be made clear that these
are optional features. Otherwise, there is a possibility that a court could interpret the claims by reading in these
features. [FN119.1]
In certain situations, it can be advantageous to write the Summary section using the first person rather than
the third person. Generally, patent applications are written in the third person, that is, "The invention is . . ." Oc-
casionally, particularly in working with individual inventors, it can be useful to write in the first person, that is,
"I have invented . . ." or "Our *7-70 invention is . . ." The first person is much more personal than the third per-
son, and in a trial regarding the patent, it is easier for a jury to identify with the inventor when the first person is
used.
One potential problem with using the first person rather than the third person is that if a change of inventor-
ship is required and the change is from sole to joint or from joint to sole, then the specification would have to be

amended to change from the singular to plural or plural to singular.
§ 7.5.8.4 Closing
If there are no drawings in the application, it is recommended that the following transition or its equivalent
be used in going from the Summary section to the Description section: "These and other features, aspects, and
advantages of the present invention will become better understood with reference to the following description
and appended claims."
If there are drawings in the application, no transition need be provided in the Summary section. As dis-
cussed below, a transition clause can be provided in the Drawings section.
[FN119]. See M.P.E.P. § 608.01(p); see also 37 C.F.R. § 1.73.
[FN119.1]. See Microsoft Corp. v. Multi-Tek Sys., 357 F.3d 1340 (Fed. Cir. 2004) (statements in the summary
used to narrowly interpret certain claim terms).
END OF DOCUMENT


Jeffrey G. Sheldon

*7-70 § 7.5.9 Drawings
The heading for the Drawings section can be "Drawings" or "Description of the Drawings" or "Brief De-
scription of the Drawings."
All this section should be is a very brief description of the drawings. Chapter 5 describes typical patent
drawings and different views that can be provided.
If color drawings are accepted by the Patent Office after a petition to do so has been granted, the first sen-
tence of the Drawing section must have language referring to the presence of color drawings. [FN120]
*7-71 There are a few concepts to bear in mind when describing the drawings. These are as follows:
§ 7.5.9.1 Transitional Clause
A suitable transitional clause from the Summary section to the Drawings section is as follows:
These and other features, aspects, and advantages of the present invention will become better under-
stood with regard to the following description, appended claims, and accompanying drawings where:
Fig. 1 shows . . .;
Fig. 2 shows . . .; and
Fig. 3 shows . . .
Each practitioner has his or her favorite transitional clause, and the choice is certainly not critical.
§ 7.5.9.2 Refer to "Version" of the Invention
It is recommended against describing any of the drawings as showing the "invention." Better terminology is
"version of the invention" or "embodiment of the invention," because the practitioner may not know exactly
what "the invention" is until the application has gone through the Patent Office, and in some instances, until a
jury has pronounced on the subject.
§ 7.5.9.3 Use of Suffixes for Similar Drawings
Sometimes drawings are very similar in that they show the same view of the same apparatus, but in different
configurations. This often occurs with drawings for machinery, where sequential drawings can show different
modes of operation of the machinery. It is recommended for clarity that drawings differing only in minor fea-
tures be given the same drawing numbers with different suffixes. For example: "Figs. 2A and 2B are vertical
sectional views of the machine of Fig. 1 taken *7-72 on line 22, showing the machine in resting position and op-
erating position, respectively; . . ."

§ 7.5.9.4 Cross-Reference the Drawings
It is best that each drawing after the first drawing refer to a prior drawing whenever possible. As shown by
the preceding example, Figures 2A and 2B were cross-referenced to Figure 1. Any subsequent drawings of the
machine of Figure 1 should always refer back to the "machine of Fig. 1."
§ 7.5.9.5 Refer to Different "Versions" of the Invention
An applicant is entitled to only one invention per patent. [FN121] Therefore, if different versions of the in-
vention are shown in an application, they should be referred as "versions" or "embodiments" and not separate in-
ventions. As an example:
Fig. 1 is a front plan view of a machine embodying features of the present invention for manufacturing
ball bearings; and
Fig. 2 is a front plan view of another version of a machine embodying features of the present invention
for manufacturing ball bearings.
[FN120]. 37 C.F.R. § 1.84(a)(2).
[FN121]. See 35 U.S.C. § 101; M.P.E.P. § 804.
END OF DOCUMENT


Jeffrey G. Sheldon

*7-72 § 7.5.10 Description of the Invention
§ 7.5.10.1 Caption
It is recommended that the caption for the Description section be merely "Description" rather than "Descrip-
tion of the Invention" or "Description of Best Mode." The term "Description" is more generic and avoids being
committed to what the invention is before the examiner has done a search.
*7-73 § 7.5.10.2 Purpose of the Description
The purpose of the Description section is to comply with the requirements of 35 U.S.C. § 112. As stated by
the Patent Office, "This detailed description . . . must be in such particularity as to enable any person skilled in
the pertinent art or science to make and use the invention without involving extensive experimentation."
[FN122] This is the most technical part of the application, and except for the claims, the most difficult part to
prepare.
§ 7.5.10.3 Outline of a Typical Description
This portion recommends an approach for writing the Description section. Ideas for solving certain common
problems in describing an invention, such as use of ranges, preferred versions of the invention, incorporation by
reference, reference numbers, and the like, are then discussed.
It is strongly recommended that before the Description section is written, it be outlined. Otherwise, the De-
scription will be disorganized, and important concepts and features of the invention may be missed.
Before writing the Description section, where there are drawings, all elements of the drawings should be
labeled, if that has not already been done. It is important to give each element a name and understand how all the
elements cooperate. By doing that, consistent terminology will be used as the description is written, and that will
save much time in writing the Description section.
The following is an outline of a typical Description section. When the Description section is lengthy, gener-
ally longer than fifteen double-spaced pages, it is recommended that headings be used to assist the reader in fol-
lowing the description.
*7-74 § 7.5.10.3.1 Definitions
Sometimes the application contains terms that are not used in their ordinary sense or terms whose specific
definition is critical, such as terms appearing in the claims. It is recommended that definitions for these terms be
provided in a single part of the Description section and not scattered throughout the specification. That way all

the definitions can easily be reviewed together for consistency.
The Federal Circuit, in the absence of a definition in the specification or prosecution history, typically inter-
prets claims by starting with a dictionary definition. [FN122.1]
If a dictionary definition is not satisfactory for a claim term, it makes sense to include in the specification an
explicit definition for a term. If the dictionary includes multiple definitions, only one of which is suitable, again
it makes sense to include a definition in the specification to be sure a court does not choose the wrong dictionary
definition. [FN122.2]
Similarly, terms of art such as "comprising," "consisting essentially of," and "consisting" may be an appro-
priate subject for a definition in the specification. This is particularly true if the application will be filed over-
seas, where such terms of art may not have the same meaning as generally accepted under U.S. patent law.
§ 7.5.10.3.2 Overview
After the definition section, there should be an overview of the main elements of the claimed invention and
how they cooperate together. This allows for preparation of an application *7-75 by a "hierarchial" approach,
one in which the description proceeds from the more general to the specific. When using an "overview or hierar-
chial" approach, the invention is broadly described by its elements, and then each element is described in detail.
As an example, the broad description of a grill scraper can be as follows:

As shown in Fig. 1, a grill scraper comprises a handle 12 and a head 14 attached to one end of the
handle 12. [Thus the two main elements of the invention have been described.] The handle 12 is shaped like
. . . and it comprises . . . The handle 12 can made of a material such as . . . The head 14 is generally circular
in shape, with semicircular recesses 16 . . .
This is a very simple example. The hierarchial approach has been followed with the main elements of the in-
vention being described, and then details of each of those main elements being provided, element by element.
The same approach can be used for process inventions. For example:
A process according to the present invention for making ethanol comprises the steps of fermenting
grain, thereby producing a mixture that contains solids and alcohol and water; separating the solids from the
alcohol and water; and then distilling the alcohol/water mixture to increase the concentration of alcohol.
Then the alcohol can optionally be aged in an oak cask.
In the fermentation step . . .
In the filtration step . . .
In the distillation step . . .
The optional aging step comprises . . .
Thus the four basic steps of the process are described, and then each of the four steps is described in detail.
*7-76 For more complex inventions, it is usually necessary to break the main elements into subelements us-
ing a hierarchial approach. For example, a patent for a copier, the main elements can be the feed mechanism, the
copy mechanism, and the sorting mechanism. Each of these three elements has its own subelements, which must
be described in detail. Thus, after introducing those three main elements, a preferred approach is to state that the
feeder comprises elements a, b, and c and then describe each of the elements a, b, and c in detail.
The same approach works for chemical inventions. The chemical compound is described generically, and

then each of the alternatives of the compound is described. An example is as follows:

A chemical compound embodying features of the present invention has the structure:
After introducing the generic formula, then the options for each of R , R , R , and R are described fol-
1 2 3 4
lowed by the method of making the composition and the method of using it.
§ 7.5.10.3.3 Detailed Description of the Elements (Including Means-Plus-Function Elements)
After presenting the overview, a detailed description of the main elements of the invention is provided. This
is straightforward technical writing, and the goal of this *7-77 description, in its extreme, is to allow someone to
be able to reproduce the invention. To get an idea of how much detail is required, the chapter on chemical inven-
tions, chapter 13, includes Exhibit 13-1, which provides a checklist for obtaining a full disclosure for a chemical
invention. That is the type of information that has to be provided.
It is much simpler to provide a full disclosure for mechanical inventions than for chemical inventions. Each
element shown in the Drawings is described and, as necessary, the following information can be provided for
each element:
1. Shape
2. Material used
3. Substitutes
4. Function
5. Cooperation with other elements
6. Size
7. Configuration
8. Orientation
Finding the proper terminology for describing the invention is extremely difficult. It is one of the most chal-
lenging tasks for the practitioner. The best place to start, of course, is with the inventor, because usually the in-
ventor has a name for everything. To the extent that that is unsatisfactory, Exhibit 7-1 provides a lengthy list of
terminology useful in describing inventions. This appendix provides terminology useful for describing structural
elements; shapes and forms; spacial relationships; fastening and joining elements; quantities; materials, includ-
ing characteristic properties, polymeric materials, ceramics and minerals, metals, textiles, and gases and liquids;
and processes. This list will prove invaluable in describing inventions.
It is important to include in the specification an adequate disclosure of structure corresponding to the func-
tion of a "means for" element in the claims, because if such structure *7-78 is not disclosed, the claim can be in-
valid. [FN123] Providing an adequate disclosure for a "means for" element is a challenge. Because "means"
clauses are interpreted with reference to the corresponding structure in the specification, it is important that the
corresponding structure be described in the description. It is valuable to explicitly specify in the description the
structure that corresponds to the "means" language in the claims, to avoid a court's improperly interpreting the
claim. Moreover, it is important to list all known equivalents to the corresponding structure in the description to
avoid reliance on the doctrine of equivalents in litigation, which is costly and not always successful. Thus time
should be taken with the applicant to obtain a comprehensive list of all structures that can perform the "means
for" function. Failure to do so can result in an unsatisfactory narrow interpretation of a claim, thereby providing
a potential infringer with an easy design around. [FN123.1] It may be desirable, when defining a "means for"
element in the specification, to include a statement that "applicant intends to encompass within the language any

structure presently existing or developed in the future that performs the same function."
According to the PTO, a means- (or step-) plus-function claim limitation satisfies paragraph 2 of 35 U.S.C.
§ 112 if (1) the written description links or associates particular structure, materials, or acts to the function re-
cited in a means- (or step-) plus-function claim limitation; or (2) it is clear based on the facts of the application
that one skilled in the art *7-79 would have known what structure, materials, or acts perform the function recited
in a means- (or step-) plus-function limitation. [FN124]
Failure to disclose any structure corresponding to a means-plus-function claim renders the claim indefinite
under 35 U.S.C. § 112 unless the structure is a standard component whose structure is well known in the art.
[FN124.1] Thus it is important to describe at least one structure corresponding to the means-plus-function
clause. Moreover, since a means-plus-function clause only literally covers the structure disclosed in the specific-
ation and equivalents thereto, it is desirable to describe a wide range of structures corresponding to the claim
element. For example, a "fastening means' can be defined in the specification to include: threaded fasteners such
as nuts and bolts, hook and pile fasteners, adhesives and epoxies, hooks, magnets, rivets, soldering, welding,
surface tension, and nailing." Another reason to include a comprehensive list of structures is that the doctrine of
equivalents is available only for new technology and not pre-existing technology in the context of means-
plus-function clauses. [FN124.2]
*7-80 It is not advisable to rely on incorporation by reference of an article to provide the structure for a
means-plus-function clause. Incorporation by reference does not satisfy the definiteness requirements of 35
U.S.C. § 112 with regard to defining the corresponding structure of a means-plus-function clause. There needs to
be a corresponding structure defined in the specification. [FN124.3]
It is important to clearly link or associate the function of the means-plus-function claim element with struc-
tures that perform the function. The claim element will not be interpreted to include disclosed structures that
perform the function, if those structures are not clearly linked or associated with the claim element. [FN124.4]
§ 7.5.10.3.4 How the Invention Is Used
The description of the structure of the invention is followed by an explanation of how the invention is used.
Many beginning practitioners attempt to combine the description of use with the description of the structure of
the invention, or precede the description of the structure with the description of use. That approach is usually un-
successful, resulting in a confusing description. It is much better to describe the structure of the invention in an
orderly and complete way and then describe how the invention is used with regard to its environment.
*7-81 § 7.5.10.3.5 Advantages of the Invention
After the method for using the invention is described, the advantages should be presented. At this point, ref-
erence should be made to the Background portion of the specification, where the need for the invention has been
identified. Using that section as a guide, the advantages of the invention should be described. The Description
section should explain exactly how each of the pre-existing needs has been satisfied. Moreover, the description
of the advantages should tie in with the structure of the invention.
For example, if the Background section states there is a need for a sturdy, inexpensive grill scraper, when
the advantages of the invention are presented, two of the advantages should be that the grill scraper is sturdy and
inexpensive. When identifying these as advantages, there should be a description of the structure of the grill
scraper that provides these advantages, such as: "By having the head and the handle coplanar, the entire scraper
can be stamped out from a sturdy piece of sheet metal in a single manufacturing step."

When presenting the advantages it is important not to state that all the advantages of the invention are being
listed, because it is possible to forget to describe an advantage, or there may be some advantages of the inven-
tion that are not yet realized. A good introduction to the advantages of the invention is: "The previously de-
scribed versions of the present invention have many advantages, including . . ." This introduction does not imply
that the advantages listed are completely inclusive of all the advantages of the invention.
It is also important to state that the invention does not require that all the advantageous features and all the
advantages need to be incorporated into every embodiment of the invention. Otherwise, a court may read an ad-
vantage into the claims and find a structure without the particular advantage *7-82 to be noninfringing. [FN125]
To be avoided is the situation where the Federal Circuit held that disclosure of two species of the shape for a cup
for an artificial hip did not support a claim to a generic shape, which would have encompassed prior art shapes
(and an alleged infringing product), because the specification touted an advantage of the specific shapes dis-
closed. [FN126] This unfortunate result may have been avoided by the simple statement that the particular cup
shape was preferred because of its advantages over the prior art, but not required in all versions of the invention.
Another approach being advocated is to not include any objects, purposes, or advantages in the application.
[FN126.1] A reason for this is that the claims may be interpreted to require such an advantage. For example, if a
purported "equivalent' element does not perform one of the specified advantages or functions of a feature of the
invention, the doctrine of equivalents may not be available against that element. [FN126.2]
§ 7.5.10.3.6 Specific Embodiments and Examples
Optionally, the details of a specific embodiment of the invention and examples can be provided. For mech-
anical inventions, the specific embodiment can provide such *7-83 details as the particular materials used to
make the structure and the dimensions. Whether or not such detail is required to comply with the requirement of
35 U.S.C. § 112 depends on the particular invention based on the guidelines provided in this chapter.
Working examples are commonly used in applications for inventions relating to chemistry, biotechnology,
and chemical processes to satisfy the "best mode" requirement and provide sufficient detail about various ver-
sions of the invention to be entitled to a generic claim. Applications for these types of inventions are described
in detail in the particular chapters relating to those inventions, namely, chapters 13 and 14.
In using examples, the guidelines below should be followed:

1. Sufficient detail should be provided in the example that it is reproducible; in other words, the de-
tailed information provided should be the same as is provided in a scientific paper.
2. The specification should not conceal unfavorable data, by failing to disclose the results of experi-
ments that do not support the applicant's claims. If there are unfavorable data, they should also be disclosed.
Otherwise, there is a risk that there will be a finding of inequitable conduct due to withholding material in-
formation from the Patent Office.
3. The purpose of each example should be included in the description of the example so that the reader
knows what the example is all about and whether it is worth reading in detail. Examples of this are the fol-
lowing:
• This example shows how to manufacture compound A using compounds B and C as starting ma-
terials.
• This example shows that compound A has better high-temperature stability than compound D.
*7-84 • This example shows that replacing chlorine with fluorine in compound A increases its wa-
ter solubility.

Simulated or predicted test results and prophetic examples (paper examples) are permitted in patent applica-
tions. Paper examples should not be described using the past tense. [FN127] It is standard practice when such an
example is reported in the specification to use the present or future tense. Moreover, it is recommended that any
hypothetical example be labeled as a "prospective" example to remove any doubt from the mind of the judge or
jury that no representation was made to the Patent Office that the experiments described in the example were ac-
tually performed. An example of a prospective example is:
Example 23 (prospective example: use of compound A as adhesive)
This prospective example demonstrates how compound A may be used as an adhesive.
Compound A is dissolved in solvent X by heating solvent X to 80° F and stirring compound A into
the solvent. The dissolved compound A is then applied to a piece of steel, allowed to dry to become
tacky, and then a piece of copper is placed on the tacky, dry compound A. Then compound A is cured at
200° F, with the result that the copper is strongly bonded to the steel.
*7-85 § 7.5.10.3.7 Alternatives and the Closing
It is important to include in the Description section as many alternate approaches to the invention as the in-
ventor can identify. One reason for doing this is to have support for generic language in the claims (see §§ 7.2
and 7.3.2.6). Another reason is to provide a basis for claims of a scope different than those originally presented
to encompass a competitor's design-around. Without sufficient alternatives in the disclosure, it may not be pos-
sible to draft such a claim. The Federal Circuit has held that the fact that a claim cannot be drafted at the time of
an amendment to literally encompass an alleged equivalent, because it would have drawn a new matter rejection,
does not avoid application of prosecution history estoppel under Festo. [FN127.1]
Another reason for having an extensive list of alternatives is to avoid a narrow interpretation of claim ter-
minology during a Markman hearing.
One technique to provide an alternate approach to an invention is to use generic terminology when describ-
ing an element of the invention, followed by identification of the specific species used. For example, when refer-
ring to a screw, language that can be used is: "Plate 86 is attached to beam 88 using a fastener such as screw
90." Another way of achieving the same result is to state: "Plate 86 is attached to beam 88 by a screw 90, or al-
ternatively by other fasteners such as bolts or nails."
Often, the inventor, after reviewing the Description section, identifies alternatives to the specific version of
the invention initially disclosed to the practitioner. It is recommended that a closing paragraph be used at the end
of the Description section that lends itself to adding these alternatives. This closing is as follows:
*7-86 Although the present invention has been described in considerable detail with reference to certain
preferred versions thereof, other versions are possible. For example . . . Therefore, the spirit and scope of
the appended claims should not be limited to the description of the preferred versions contained herein.
Immediately after "for example," a lengthy list of alternatives can be provided. Of course, if any of those al-
ternatives is claimed, then that alternative has to be shown in the drawings. [FN128]
Additional closing language is particularly useful when prosecuting applications before the European Patent
Office. The EPO is formalistic about changing the scope of the claims during prosecution of an application, and
including commonly known information in the specification and/or claims. Accordingly, European patent attor-
neys commonly use the following closing language or its equivalent: [FN129]
The reader's attention is directed to all papers and documents which are filed concurrently with his spe-
cification and which are open to public inspection with this specification, and the contents of all such papers

and documents are incorporated herein by reference.

All the features disclosed in this specification (including any accompanying claims, abstract, and draw-
ings) may be replaced by alternative features serving the same, equivalent or similar purpose, unless ex-
pressly stated otherwise. Thus, unless expressly stated otherwise, each feature disclosed is one example only
of a generic series of equivalent or similar features.
To avoid having a court or the PTO improperly interpret a claim element under paragraph 6 of section 112,
where that *7-87 is not the intent of the applicant, consider including in the closing the following language:
Any element in a claim that does not explicitly state "means for" performing a specified function, or
"step for" performing a specific function, is not to be interpreted as a "means" or "step" clause as specified
in 35 U.S.C. § 112, ¶ 6. In particular, the use of "step of" in the claims herein is not intended to invoke the
provisions of 35 U.S.C. § 112, ¶ 6.
The remainder of this chapter is directed to important concepts that help in the writing of a good descrip-
tion.
§ 7.5.10.4 Use of Prior Art Patents
It is recommended that the prior art patents be used as a guide in preparing the description of the invention.
Prior art patents can provide valuable information and ideas, including standard terminology in the art, how
much detail needs to be provided in order to adequately disclose the invention to one of ordinary skill in the art,
and various approaches for writing the Description section. Since the description of an invention that appears in
a patent is not copyrighted, descriptions prepared by other practitioners can be used verbatim.
§ 7.5.10.5 Ranges and Preferences
Whenever a numeric variable is used to describe an invention, ranges should be given for that variable,
rather than a specific number. For example, for a process comprising the step of dissolving a salt in water at a
temperature of from 60° C to 70° C, the inventor should identify ranges for the temperature that can be used. For
example, the inventor may disclose that the minimum temperature is 1° C, because at any lower temperature the
water freezes, and the maximum temperature is 99° C, because at a higher temperature the water *7-88 boils.
Therefore, a typical way to describe this in the specification is:
The process is conducted at a temperature of from 1° C to 99° C, and preferably from 60° C to 70° C.
At temperatures less than 1° C, the water used can freeze; at temperatures higher than 99° C, the water can
boil off. The preferred temperature is at least 60° C for fast reaction, but no more than 70° C because un-
desirable byproducts can form.
However, some examiners take the position that specifying a range does not support a claim that recites
only the bottom or the top of the range. For example, some examiners contend that an applicant is not entitled to
a claim that reads "at least 1° C" or "less than 99° C" if the specification only recites "from 1 to 99° C." Accord-
ingly, it is advisable to define a range as "preferably at least 1° C and preferably less than 99° C." Using this
technique, the first sentence of the above paragraph can be written:
The process is typically conducted at a temperature of at least 1° C and at a temperature no greater than
99° C, and preferably at a temperature of at least 60° C and preferably at a temperature of no more than 70°
C.
If possible, a reason for each numerical variable should be given. That provides support in the specification
for arguments that may need to be made during prosecution, such as why the range of 60° C to 70° C should be

allowable over prior art teaching a process at a temperature outside that range. Another reason to provide a reas-
on for each numerical value in the description of the invention is that the reason provides functional language
that can be used in the claims. For example, the preceding sample paragraph supports the following claim lan-
guage:
*7-89 2. The process of claim 1 wherein the step of dissolving the salt comprises dissolving the salt in
the water at a temperature of at least 1° C.
3. The process of claim 1 wherein the step of dissolving the salt comprises dissolving the salt in the wa-
ter at a temperature up to 99° C.
ter at a temperature of from 1° C to 99° C.
ter at a temperature of from 60° C to 70° C.
ter at a temperature of at least 60° C.
ter at a temperature sufficiently low that undesirable byproducts do not form.
8. The process of claim 1 or 7 wherein the step of dissolving the salt comprises dissolving the salt in the
water at a temperature of up to about 70° C.
Note: Claim 7 may be indefinite due to use of the word "undesirable," so multiple dependent claim 8 (claim
8 dependent on claim 7 or 1) is used as a backup to provide definiteness. See chapter 6 for a discussion of claim
definiteness.
One of the main reasons for providing different ranges in the description of an invention is that prior art
may develop during prosecution, where the prior art anticipates or renders obvious a broad range, but not a nar-
row range. During prosecution, claims containing the broad range of variables can be given up, with still a
chance to obtain allowance of claims directed to the narrow range.
However, there needs to be a technical or economic reason for the various ranges. Merely defining a range
without giving a reason for the range is of little value during prosecution, *7-90 unless data can be subsequently
developed to justify the criticality of the range.
It is foolish to be overprecise in defining the ranges. Pertaining to the above example, there is no reason to
state that the temperature is from "60.0° C to 70° C," or from "about 60.0° C to about 70.0° C." By being so ac-
curate, the range of available equivalents under the doctrine of equivalents is substantially narrowed. A court
will interpret "about 60.0° C" much more narrowly than "about 60° C."
Common standard terminology is used to describe the various ranges. The broadest range is usually de-
scribed as "what can be." As the ranges become narrower and narrower, they are described as "preferred," "more
preferred," "most preferred," and "optimum."
For example, when comparing the molar ratio of two ingredients, the language used can be:
The molar ratio of ingredient A to ingredient B is typically at least about 1:1 and no more than about
100:1; preferably is at least about 20:1 and no more than about 50:1; more preferably at least about 30:1 and
more preferably no more than about 40:1; and most preferably about 35:1.
§ 7.5.10.6 Use of Trademarks

The use of trademarks in patent applications creates problems. The relationship between a trademark and the
product it identifies is sometimes indefinite, uncertain, and arbitrary. The formula or characteristics of the
product can change from time to time, yet the product can continue to be sold under the same trademark.
In patent specifications, every element or ingredient of the product must be set forth in positive, exact, and
intelligible language so that there is no uncertainty as to what is meant. Arbitrary trademarks, which are liable to
mean different things at the whim of the manufacturer, do not constitute *7-91 such language. [FN130] For ex-
ample, a patent that claimed a computerized control system for machine tools was held invalid because it neg-
lected to fully disclose a crucial computer program. The inventors specified a particular program by trademark
as key to the invention. However, that program was available by purchase from only one source. Even though
the program was not itself the claimed invention, it was an integral part of the device and necessary to enable
those skilled in the art to practice the invention. The court held that the patent would have been valid if it had in-
dicated other equivalent programs that were known and available to those skilled in the art. [FN131]
Accordingly, whenever possible, if a product needs to be referred to by trademark, then the generic name
for the product should be provided. Appendix I of the M.P.E.P. provides a partial list of well-known trademarks
that can appear in patent applications. Appendix I of the M.P.E.P. provides a listing of the particular goods for
which each listed trademark is used.
The trademark should always be capitalized so that it is identified as a trademark. Suitable identification of
elements of an invention by trademark include the following:
1. "Band-Aid" type bandage.
2. Fluorinated hydrocarbon sold under the trademark "Freon."
3. Synthetic materials that adhere when pressed together, commonly sold under the trademark "Velcro."
Trademarks and trade names can be used in patent applications to describe an invention if:
*7-92 1. The meaning of the trademark is established by an accompanying definition that is sufficiently
precise and definite to be made part of a claim, or
2. In this country, the meaning is well known and satisfactorily defined in the literature.
Whenever a trademark is used, as much information as possible regarding the product referred to by the
trademark should be provided. If a patent issued on the product, the patent should be identified. If a generic
name is available, the generic name should be identified.
The use of trademarks should generally be avoided because such use might limit the life of a patent to the
life of a trademarked product. If a particular composition of the trademark product is critical to the invention,
and if the trademark product ever becomes unavailable, the validity of the patent is suspect.
§ 7.5.10.7 Incorporation by Reference
Incorporation by reference is used to avoid repeating information readily available in another source, partic-
ularly information known to those skilled in the art. A common use for incorporation by reference is for chemic-
al inventions, where the options for one of the ingredients is well known in the art, and a listing of the various
options is available in another document. Incorporation by reference is also used to indicate the background of
the invention and to illustrate the state of the art.
Exactly what can be incorporated by reference depends upon whether the material that is incorporated is "es-
sential material." According to the M.P.E.P. § 608.01(d), essential material is "that which is necessary (1) to
support the claims or (2) for adequate disclosure of the invention (35 U.S.C. § 112)."

If incorporated material is considered to be "essential," the only materials that can be incorporated by refer-
ence are
*7-93 (1) a United States patent,
(2) a published United States patent application, [FN131.1]
(3) a prior foreign application claiming priority under 37 C.F.R. § 1.55 or a prior filed U.S. applica-
tion from which priority is claimed under 37 C.F.R. § 1.78 [FN131.2] and
(4) an allowed United States patent application.
Incorporation of essential material based on a prior foreign application or prior U.S. application for which prior-
ity is claimed can be used only upon a showing that the material which is going to be incorporated in the applic-
ation was "inadvertently omitted." [FN131.3] A mere claim of priority without a statement of "incorporation by
reference" cannot be used as a basis for amending the specification. [FN131.4]
Moreover, for allowed United States patents, the applicant, prior to examination, must provide either a copy
of the printed United States patent once it has been printed or a copy of the referenced material with an affidavit
or declaration executed by the applicant (or the attorney or agent) stating that the copy consists of the same ma-
terial incorporated by reference.
Essential material cannot be incorporated by reference to

(1) foreign patents;
(2) patent applications published by foreign patent offices;
(3) nonpatent publications;

(4) a United States patent or application that itself incorporates "essential material" by reference; or
(5) a foreign application.
*7-94 For example, incorporation by reference of an article describing the structure corresponding to a means-
plus-function element was held not to satisfy the requirements of 35 U.S.C. § 112, and thus the claim including
that element was invalid. [FN131.5]
The ability to incorporate nonessential subject matter is much more liberal. The materials that can be incor-
porated by reference for nonessential subject matter are
(1) United States patents;
(2) foreign patents;
(3) patent applications published by United States or foreign patent offices;
(4) earlier filed, commonly owned United States patent applications; and
(5) nonpatent publications.
A mistake as to whether material incorporated by reference is essential or nonessential is not fatal. If it turns
out that the material that is incorporated by reference is considered to be essential and the reference is not to a
United States patent or allowed United States application, all is not lost. The only thing the applicant needs to do
is to amend the specification to include verbatim the material incorporated by reference.
The specification must clearly indicate that it is incorporating material by reference; a simple reference to
another source is not sufficient. [FN132] The specification should specifically state that the reference is "incor-
porated herein by reference." If the original application does not indicate an intent to incorporate material by ref-
erence, an amendment to incorporate by reference would be considered new material and *7-95 would therefore
change the filing date. [FN133] When incorporating material by reference, the specific portions of the refer-
enced patent or application that are being incorporated therein should be identified. [FN134]

Care must be taken when using incorporation by reference. For example, over the objection of a patentee,
the Federal Circuit interpreted a claim narrowly based upon a definition in a second patent incorporated by refer-
ence. [FN134.1]
Incorporation by reference must be used very carefully for applications that may be filed overseas. The
European Patent Office does not consider a claim element to be an essential part of an invention if it is only de-
scribed in a reference that is incorporated by reference. If a feature described in a reference may eventually be
included in a claim, it is recommended that incorporation by reference not be relied upon, or alternatively, the
reference be noted as including subject matter that may be essential to the invention. In fact, at least when filling
the application overseas, the documents incorporated by reference can be filed with the application, and the fol-
lowing language can be added to the closing of the specification:
The reader's attention is directed to all papers and documents which are filled concurrently with or pre-
vious to this specification in connection with this application and which are open to public inspection with
this specification, and the contents of all such appears and documents are incorporated herein by reference.
[FN135]
*7-96 § 7.5.10.8 Reference Numbers
The description of the invention and the drawings have to be correlated. This is accomplished by assigning
reference numbers to the elements in the drawings as described in chapter 5 above dealing with drawings, and
using the same numbers in the specification.
The following suggestions are provided with regard to the use of reference numbers.
§ 7.5.10.8.1 The Description Is Written As If No Reference Numbers Are Used
For style purposes, preferably the specification is written as if the reference numbers are not used. Rather
than referring to "piston 12," an article is used, so that it is "a piston 12" or "the piston 12." If two elements have
the same name, the elements are differentiated, for instance by using "first piston 12" and "second piston 14"
rather than "piston 12" and "piston 14." In other words, the specification should read as good English even
without the reference numbers.
§ 7.5.10.8.2 The Reference Numbers Should Be Kept Sequential
The reference numbers should be maintained in sequential order as the specification is prepared. It is much
easier to find the first reference to an element if the reference numbers increase sequentially from the beginning
to the end of the Description section. However, this is not a critical requirement. Usually it is inadvisable and
expensive to renumber many elements merely because some reference numbers are used out of order.
§ 7.5.10.8.3 Numbers Higher Than Drawing Numbers Should Be Used
It is advisable, for clarity, to start with a reference number higher than the last drawing number. This avoids
any confusion between the drawing numbers and reference numbers. *7-97 For example, if there are fourteen
drawings in the application, then the first reference number is a number higher than fourteen.
§ 7.5.10.8.4 Chart the Reference Numbers
A chart of the elements with the reference numbers applied should be prepared as the description of the in-
vention is prepared. Otherwise, different elements can inadvertently receive the same reference number, or the

same element can receive multiple reference numbers. Another advantage of this approach is that the same ele-
ment does not unintentionally receive different names. It is recommended that in the chart, the relationship
between the elements be indicated using the previously defined reference numbers. Exhibit 7-2 is an example of
a portion of such a chart, where each element is listed in terms of a previously defined element. This approach
makes it much easier to write the description.
Another approach to make it easier to write the description is by making a tree-type design listing the draw-
ing numbers. The elements of each main component will be listed under that component as tree limbs branch out
from a tree. This method enables the practitioner to easily visualize where each element belongs. See Exhibit
7-3.
§ 7.5.10.8.5 Skip Reference Numbers
As shown by Exhibit 7-2, it is recommended that only every other reference number is used. This is because
it is often necessary to go back and assign reference numbers to elements that were overlooked when the first
draft of the description of the invention was prepared. By skipping reference numbers, it is possible to do this
without having to assign new reference numbers to every element.
§ 7.5.10.8.6 Use Reference Numbers Consistently
The same elements in different versions of the invention should be given the same reference number. For
example, if there are three versions of the invention, but they all have the *7-98 same base 12, each version of
the invention should refer to the base as "base 12." Alternatively, primes can be used to distinguish similar ele-
ments. For example, the base in version one can be base 12, in version two it can be base 12, and in version
three it can be base 12.
§ 7.5.10.8.7 Use Suffixes to Distinguish Similar Elements
Suffixes can be used to distinguish elements that are substantially the same. For example, if an apparatus
has four legs, and when describing the invention, it is necessary to specify a particular leg, the legs can be re-
ferred to as "legs 12a, 12b, 12c, and 12d." If there is any special feature about leg 12d, then it is easy to refer to
that particular leg later on in the specification.
§ 7.5.10.8.8 Use Series of Numbers for Clarity
Series of numbers to describe different versions of the invention or different main elements should be used.
For example, if there are two versions of the invention, all reference numbers in the 100 series, that is, 102, 104,
106, etc., can be for version one, and reference numbers in the 200 series can be for version two.
Similarly, a copier that has as its main elements a feeder, a copy mechanism, and a sorter can use the 100
series for the feeder, the 200 series for the copy mechanism, and the 300 series for the sorter.
§ 7.5.10.9 Antecedent
The same rules that were described in chapter 6 (writing the claims) regarding having an antecedent for any-
thing discussed in the claims also apply to the Description section. Thus, the first time an element is introduced,
an indefinite article ("a" or "an") is used, and subsequently, the definite article ("the") is used.
*7-99 § 7.5.10.10 Use of Spatial Directions

A common mistake in describing an invention is to use spatial directions that do not universally apply. Con-
sider, for example, a tennis racket. It cannot be described in terms of "up" or "down" or "right" or "left." These
directions have no meaning with regard to the tennis racket and how it is used in a tennis match. Such directions
have meaning only with regard to the drawings, and the orientation of the tennis racket in the drawings is arbit-
rary. The tennis racket should be described with regard to the "handle portion" and the "head portion" and its
longitudinal axis.
It is better to use directions that are independent of the spatial orientation of the invention in describing the
invention. Such spatial directions are provided in Exhibit 7-1. The use of terms such as "radially outwardly,"
"proximal," "distal," "adjacent to," and the like is independent of the orientation of the invention, and thus is
preferable.
However, for some inventions, there is an up or down or a right or left. For example, a chair is only used in
one orientation, with the legs on the ground and the back extending upwardly. For such an invention, the use of
definite spatial terms is appropriate.
§ 7.5.10.11 Avoid Absolutes
The use of absolutes in the description of the invention should be avoided, unless the practitioner and the in-
ventor are "absolutely" sure that an absolute is correct. If a feature of the invention is described as being abso-
lutely required, such as by use of the words "must," "always," "mandatory," "essential," "critical," or the like,
the examiner may require that the absolute limitation be included in all the claims. That is particularly true if the
application is filed in a foreign country. It is much better to change an absolute to the expression "preferred," or
if really accurate, "optimum." That leaves some leeway to obtain broad claims.
*7-100 Moreover, the absolute may be incorrect. Inventors are known to make mistakes. It is best to provide
some leeway during prosecution of the application by avoiding absolutes.
§ 7.5.10.12 Use Present Tense
It is better whenever possible to use the present tense rather than the future tense. It makes for more power-
ful writing. Thus, use of the language "reaction of ingredient A with ingredient B results in production of chem-
ical C" is better than "reaction of ingredient A with ingredient B will result in production of ingredient C."
§ 7.5.10.13 Avoid "etc."
The use of "etc." or any equivalent should be avoided, since it adds nothing to the specification. In a list of
elements, if there are other elements that can be used, it is best to specifically identify those elements. For ex-
ample, when referring to a fastener 12 as a nail or screw, it is best not to say "nail, screw, etc." If there are other
fasteners that are also suitable, they should be specifically identified, such as in "nail, screw, glue, or bolt."
§ 7.5.10.14 Copyright or Mask Work Notice
It is possible to obtain copyright protection or mask work protection as well as patent protection for certain
designs and technologies. Accordingly, the Patent and Trademark Office permits inclusion of a copyright or
mask work notice in a design or utility patent application, and thereby any patent issuing therefrom, which dis-
closes material for which copyright or mask protection has previously been established. The conditions for the
notice are as follows:

1. The copyright or mask work notice must be placed adjacent to the copyrighted or mask work materi-
al.
*7-101 2. The content of the notice must be limited to only those elements required by law.
3. The following authorization must be included at the beginning of the specification:
A portion of the disclosure of this patent document contains material which is subject to [copyright or
mask work] protection. The [copyright or mask work] owner has no objection to the facsimile reproduction
by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office
patent files or records, but otherwise reserves all [copyright or mask work] rights whatsoever. [FN136]
§ 7.5.10.15 Line Numbers and Docket Numbers
Many practitioners put line numbers on the pages of the specification, generally every fifth line. This is not
required. An advantage of doing so, though, is that it allows easy identification of any line in which an amend-
ment is made during prosecution. Line numbers should be put in the left-hand margin.
Alternatively and preferably, the paragraphs of the specification, other than in the claims and abstract, may
be numbered individually and consecutively. At least four numbers are to be used and the numbers are to be en-
closed in square brackets. The numbers and enclosing brackets are to appear to the right of the left margin as the
first item in each paragraph, followed by a gap of about four spaces. These numbers are not to be used for non-
text elements such as tables, mathematical or chemical formulae, chemical structures, and sequence data.
[FN136.1] Some practitioners set off the numbering by using bold text. An example of this format is:
*7-102 [0005] The present invention satisfies this need by providing an article that . . .
[0006] An article according to the present invention preferably comprises . . .
It is also advantageous for the practitioner to include the practitioner's docket number for the application, at
least on the first page, and if desired, on every single page of the application as part of a header. This is permiss-
ible, and it makes certain that the pages of the specification are correctly identified with the relevant file.
Many practitioners also include the date of printing of each draft of the specification as part of a footer, and
save the drafts, to help prove diligence under 35 U.S.C. § 102(g) if necessary.
§ 7.5.10.16 Tabular Data
Tables of data can be submitted on a compact disc instead of submitting the information on paper if a single
table exceeds fifty pages or if the total number of pages of all the tables in the application exceeds 100 pages in
length. [FN136.2] If the table is in landscape orientation, that must be specified in a separate letter accompany-
ing the application. [FN136.3] Tables cannot be included both in the drawings and the specification. [FN136.4]
[FN122]. M.P.E.P. § 608.01(g).
[FN122.1]. Deering Precision Instruments v. Vector Distribution Sys., 347 F.3d 1314 (Fed. Cir. 2003); Tex. Di-
gital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002).
[FN122.2]. Deering Precision Instruments, 347 F.3d 1314 (for the fifth time the Federal Circuit interprets "sub-
stantially," which has numerous ordinary meanings including language of approximation and language of mag-
nitude).
[FN123]. In re Dossel, 115 F.3d 942, 42 U.S.P.Q.2d 1881 (Fed. Cir. 1997); Cardiac Pacemakers, Inc. v. St. Jude
Med., Inc., 296 F.3d 1106, 63 U.S.P.Q.2d 1725 (Fed. Cir. 2002) (claims invalid for indefiniteness because the

only entity referenced in the specification that could perform both functions required by a means clause is a
physician, which cannot be a "corresponding structure").
[FN123.1]. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205 (Fed. Cir. 2003) ("means for
converting" did not include computer software in the absence of a linkage to the software).
[FN124]. Interim Supplemental Examination Guidelines for Determining Applicability of 35 U.S.C. § 112, ¶ 6
(F.R. Doc. 99-19368, filed July 29, 1999), Fed. Reg. 41,392 (1999), 58 Pat. Trademark & Copyright J. (BNA)
443- 45 (Aug. 5, 1999) (also available at <www.uspto.gov>).
[FN124.1]. S3, Inc. v. nVIDIA Corp., 259 F.3d 1364, 59 U.S.P.Q.2d 1745 (Fed. Cir. 2001); Atmel Corp. v. Info.
Storage Devices, Inc., 198 F.3d 1374, 53 U.S.P.Q.2d 1225 (Fed. Cir. 2000); Cardiac Pacemakers, Inc. v. St. Jude
Med., Inc., 296 F.3d 1106 (Fed. Cir. 2002); Default Proof Credit Card Sys., Inc. v. Home Depot, U.S.A., Inc.,
412 F.3d 1291 (Fed. Cir. 2005).
[FN124.2]. Kraft Foods, Inc. v. Int'l Trading Co., 203 F.3d 1362, 53 U.S.P.Q.2d 1814 (Fed. Cir. 2000); Chi-
uminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 46 U.S.P.Q.2d 1752 (Fed. Cir. 1998).
[FN124.3]. Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 53 U.S.P.Q.2d 1225 (Fed. Cir. 2000); De-
fault Proof Credit Card Sys., Inc. v. Home Depot, U.S.A., Inc., 412 F.3d 1291 (Fed. Cir. 2005).
[FN124.4]. Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 58 U.S.P.Q.2d 1607 (Fed.
Cir. 2001) ("Means for connecting" does not include straight wire, hooks, or sutures that are capable of connect-
ing when these elements were not linked or associated with the claimed function and helical windings were).
[FN125]. Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1084, 54 U.S.P.Q.2d 1841 (Fed. Cir. 2000)
("consisting of two springs" not infringed by a structure with a single spring and a plug stuck in one end of the
spring, because the specification pointed out an increased reliability objective of two springs and the single
spring structure did not have the increased reliability, even though the inventor disavowed the increased reliabil-
ity objective).
[FN126]. Tronzo v. Biomet, 156 F.3d 1154, 47 U.S.P.Q.2d 1829 (Fed. Cir. 1998).
[FN126.1]. This approach is advocated by Dale S. Lazar, The Impact of Recent Federal Circuit Decisions on
Crafting Patent Applications--Why Applications Drafted in the Traditional Style May Be Weaker Than You
Thought, paper presented at AIPLA Advanced Patent Prosecution Training Seminar, Minneapolis, MN (June 12,
2003).
[FN126.2]. Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377, 54 U.S.P.Q.2d 1841 (Fed. Cir.
2000).
[FN127]. M.P.E.P. § 608.01(p); Hoffmann-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 66 U.S.P.Q.2d
1385 (Fed. Cir. 2003) (using past tense in an example to suggest falsely that test was performed resulted in find-
ing of inequitable conduct); Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 66 U.S.P.Q.2d 1341 (Fed.
Cir. 2003) (same); Purdue Pharma L.P. v. Endo Pharms., Inc., ___ F.3d ___, 2006 U.S. App. LEXIS 2412 (Fed.
Cir. Feb. 1, 2006).
[FN127.1]. Glaxo Wellcome, Inc. v. Impax Labs., Inc., 356 F.3d 1348 (Fed. Cir. 2004).

[FN128]. See 37 C.F.R. § 1.83(a).
[FN129]. Courtesy of Robert Hall, Dibb Lupton Broomhead, Sheffield, England, U.K.
[FN130]. M.P.E.P. § 608.01(v).
1983).
[FN131.1]. 37 C.F.R. § 1.57(c); M.P.E.P. § 608.01(p).
[FN131.2]. 37 C.F.R. § 1.57(a).
[FN131.3]. Id.
[FN131.4]. Ex parte Bondiou, 132 U.S.P.Q. 356 (B.P.A.I. 1961).
[FN131.5]. Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 53 U.S.P.Q.2d 1225 (Fed. Cir. 2000); De-
fault Proof Credit Card Sys., Inc. v. Home Depot, U.S.A., Inc., 412 F.3d 1291 (Fed. Cir. 2005).
[FN132]. In re Seversky, 474 F.2d 671, 177 U.S.P.Q. 144 (C.C.P.A. 1973).
[FN133]. Dart Indus., Inc. v. Banner, 636 F.2d 684, 207 U.S.P.Q. 273 (D.C. Cir. 1980).
[FN134]. M.P.E.P. § 608.01(p).
[FN134.1]. Cook Biotech v. ACell Inc., 460 F.3d 1365, 79 U.S.P.Q.2d 1865 (Fed. Cir. 2006).
[FN135]. Language provided by Robert Hall, Dibb Lupton Broomhead, Fountain Precinct, Balm Green, Shef-
field S1 1RZ, England.
[FN136]. 37 C.F.R. § 1.71(e); M.P.E.P. § 608.01(v).
[FN136.1]. 37 C.F.R. § 1.52(b)(6).
[FN136.2]. 37 C.F.R. § 1.58.
[FN136.3]. 37 C.F.R. § 1.52(e)(3)(ii).
[FN136.4]. 37 C.F.R. § 1.58(a).
END OF DOCUMENT


Jeffrey G. Sheldon

*7-102 § 7.5.11 Abstract
The Abstract generally goes at the very end of the specification, that is, immediately after the claims. The
Abstract must commence on a separate sheet. [FN137]
*7-103 The Abstract is directed to what is disclosed in the specification, and not necessarily the claims. The
Patent Office wants the applicant to use the heading "Abstract of the Disclosure," [FN138] although the Patent
Office does accept "Abstract."
The purpose of the Abstract is to enable the Patent Office and the public generally to determine quickly
from a cursory inspection the nature and gist of the technical disclosure. The Abstract is not used for interpreting
the scope of the claims. [FN139]
The patent Abstract is to be no more than a concise statement of the technical disclosure. It should include
that which is new in the art to which the invention pertains. Therefore, it is generally limited to a single para-
graph with 50 to 150 words. The Patent Office will reject the Abstract if it exceeds 150 words, because that ex-
ceeds the space provided for the Abstract on the computer tape used by the printer. [FN140]
The nature of the Abstract depends on the invention. If the invention is of a basic nature, the entire technical
disclosure may be new in the art, and the Abstract should be directed to the entire disclosure. Contrarily, if the
patent is in the nature of an improvement in an apparatus, process, product, or composition, the Abstract should
include principally the technical disclosure of the improvement.
In certain patents, particularly those for compounds and compositions, where the process for making and/or
using the composition is not obvious, the Abstract should set forth a process for making and/or using the com-
pound or composition.
*7-104 If the new technical disclosure involves modifications or alternatives, the Abstract should mention,
by way of example, the preferred modification or alternative.
The Patent Office does not want the Abstract to refer to purported merits or speculative applications of the
invention. Accordingly, to the Patent Office, the Abstract should not compare the invention with the prior art.
[FN141]
The Abstract should include the following:

1. If the invention is a machine or apparatus, its organization and operation;
2. If an article, its method of making;
3. If a chemical compound, its identity in use, the general nature of the compound;
4. If a mixture, its ingredients;

5. If a process, the steps.
In writing the Abstract, formal legal phrases and terminology often used in patent claims, such as "means"
and "said," should be avoided.
Abstracts should be concise and not repeat information given in the title. Also, the Abstract should avoid us-
ing phrases that can be implied, such as "the disclosure concerns" and "the disclosure defined by this invention."
Many practitioners do not consider the Abstract to be important and do not give it much attention. This
would be a mistake, because the Federal Circuit has held that it is proper to look to the Abstract in interpreting
the meaning of the claims. [FN142] Thus the Abstract deserves as much attention as the written description.
[FN137]. 37 C.F.R. § 1.72(b).
[FN138]. Id.
[FN139]. Id.
[FN140]. Id.
[FN141]. M.P.E.P. § 608.01(b).
[FN142]. Jeneric/Pentron, Inc. v. Dillon Co., 205 F.3d 1377, 54 U.S.P.Q.2d 1086 (Fed. Cir. 2000) (construction
of the term "cushion" determined from both the abstract and the written description portion of the patent); Hill-
ROM Co., Inc. v. Kinetic Concepts, Inc. & KCI Therapeutic Servs., Inc., 209 F.3d 1337 (Fed. Cir. 2000) (prior
PTO rule that the abstract "shall not be used for interpreting the scope of the claims," does not govern the pro-
cess by which courts construe claims in infringement actions).
END OF DOCUMENT


Jeffrey G. Sheldon

*7-105 § 7.6 Strategic Writing of the Specification for Broad Claim Interpretation
An issue commonly facing courts in interpreting claims is whether to limit the claims to a specific embodi-
ment disclosed in the application or to interpret the claims broadly. The following recommendations help avoid
having a court narrowly interpret a claim:
1. Do not use the term "present invention" unless it is accompanied with a statement that the element or
version discussed is only an example of the invention.
2. Provide alternatives to any limitation that appears in the claims.

3. Specify that it is not necessary for all embodiments of the invention to have all the advantages of the
invention or fulfill all the purposes of the invention.
4. In describing specific structures, state explicitly that the structure is just one example of elements op-
erable in the invention.
5. Where limited numbers of embodiments are disclosed, use express definitions of key claim terms
with broad functional definitions.
6. Avoid statement of objects of the invention, but if they are used, describe them in a nonlimiting man-
ner. For example, use language such as "preferred benefits" or "preferred advantages."
PLIREF-PATAPP s 7.6
END OF DOCUMENT


Jeffrey G. Sheldon

*7EX-1 Exhibit 7-1: Terminology
Introduction
One of the more difficult tasks of drafting the patent specification is finding words that adequately describe
the structure of the invention. The Patent Office will reject a patent application under 35 U.S.C. § 112 if the
claim language is indefinite or overly broad. For example, words describing quantities such as "at least" or
"greater than" may be rejected as indefinite disclosures. Words specifying broad categories of chemical com-
pounds such as "acids" or "alcohols" may be regarded as overly broad. Imprecise words can also limit or distort
the scope of the claims in subsequent litigation.
This exhibit provides words and phrases that are commonly used to describe inventions. Many of these
words were obtained from issued patents published in the Official Gazette of the Patent and Trademark Office,
to guarantee their acceptability to the Office. The words are arranged alphabetically under distinct functional
categories, such as words describing materials and processes, words describing qualities, and words describing
spatial relationships. The key words and equivalent alternatives are intended to provide an illustrative, not ex-
haustive, list.
In using these words, keep in mind that "a patentee may be his own lexicographer." Coined terminology or
terms commonly used in the trade may be used to provide a more accurate or a more flexible description of the
invention, provided the terms are defined in the specification. The coined terminology, however, should not be
misdescriptive.
*7EX-2 A. Structural Elements

Arm; appendage
Array; matrix
Band; belt; strap
Bail
Band
Barbs
Barrel; tube
Base; pedestal; foundation

Beam - cantilever beam
Bearing; bushing
Belt
Blade
Blower
Body; frame
Boom
Box; container; casing
Brace; strut; buttress
Bracket
Brake
Branch
Cable; wire; line; strand
Cam; cog
Cap; lid
Carriage
Casing; housing; shell
Chain
Chamber; container; box
Chamfer
Chute
Circuit
Clutch; centrifugal; sprag; toothed; one-way
Coil; spiral
Collar
Column
Container

Conveyor
Core; nucleus; center
Cover
Cylinder
Device; embodiment
Diaphragm; membrane
Die; mold
Disc
Drive - belt; pulley; sheave; toothed
Drum; canister; barrel
Edge; skirt; rim; lip
Elbow; L-section
Element; component; constituent; member
Elongate; stretch; extend
Enclosure
Film; coating; layer
Finger
Flange;
Friction
Fork
Fiber; filament
Filament; wire; strand
File
Fin
Frame; skeleton; support
Fulcrum
Gauges

Gear - bevel gear; gear pinion; sprocket; spur gear; worm gear
Gusset; support
Handle
Head
Helical; spring
Holder; grasp; grip
Hole; bore; core; orifice; opening
Hollow; cavity
Housing; case; covering
Hub; center
Hydraulic
Index; catalogue; list
Intermittent; escapement;
Jaw
Journal
Knob; grip; handle
Label; tag; ticket
*7EX-3 Laminate; ply
Layers; laminate; stratum; wafers
Ledge; edge; skirt
Leg; foot
Lever
Line; cord; twine; wire
Loop; circle; coil; spiral; twist
Machine
Mechanical
Medium

Member
Membrane; diaphragm
Mesh; grid; web; knit; weave
Mold; form; fashion
Motor
Neck
Needle; pin
Notch; gouge
Nozzle; nose; spout
Object; article; device
Pad; cushion
Panel; divider; partition
Particle; fragment; trace
pattern; design; configuration
Pedal
Pipe; conduit; duct; tube
Piston; cylinder
Plate; platen; platter
Platform
Plug; lid; stopper
Plunger
Pole; post
Preform; form; shape
Probe
Projectile
Prong
Pulley

Rib
Ring
Rod
Ratchet
Reactor; kettle; tank
Reducer
Regulator
Release
Reservoir; tank
Restriction; restrictor
Ridge; edge; skirt
Rib
Ribbon; band; strap
Ring; circle; hoop; link
Rod; bar; pole
Roller
Saddle
Screen; barrier; divider; filter
Seat
Segment; piece; portion
Sensor; sensing device
Serration; notch
Shaft; beam; rod; shank
Shape; figure; form
Sheet
Shell; sheath
Shield

Shoe
Shoulder
Skirt; border; edge
Sleeve
Slit; slot
Spike
Spine; frame
Spoke; spindle
Spool
Spring; coil
Sprocket
Stack; pile
Step
Storage; store
Strap; strand
Strip; band; belt
Strut
Substrate; base
Switch
System; plan; procedure
Tab
Tack
Tank; vessel
Tap
Taper; narrow; reduce
Teeth
Tension; pressure; strain

Terminal
Textile
Thread; line; cord
Throat; neck
Tilt; angle
Tongue
Toroid; coil
Tool; implement
Transducer
Trap; catch
*7EX-4 Trigger; switch
Trough; tank; vessel
Tube; hose; pipe; shaft
Turbine
Track
Truss
Union; union tees
Upright
Utensil
Valve
Variable speed
Vent; aperture; outlet
Wall
Washer
Web; mesh; screen
Wedge
Window

Wire; cord; line; string
Yoke
B. Shapes and Forms

Annular; tubular
A-shaped; C-shaped
Arch
Arcuate
Barrel
Bucket
Channel
Circle; circular
Concave; convex
Conical
Corrugated
Cup
Cube; block
Cylinder
Depression
Disc
Dome
Elliptical
Ellipse
Ellipsoid
Fin
Flange
Fold
Fork

Form; shape
Helical
Helix
Hexagon
Hook
Hyperbola
Hyperboloid
Involute
Lines
Notch
Oblong
Octagon
Oval
Parabola; parabolic
Paraboloid
Pentagon
Plane
Polyhedron
Prism
Pyramid
Rectangular
Rhombohedral
Round
Sheet
Shelf
Sinusoidal
Spherical

Square
Taper
Torus
Trapezoid
Triangular
Trough
Tubular
Twist
Web
Wedge
C. Spatial Relationships
Access; opening; ingress
Adjoining; adjacent
Aligned; oriented
Arranged; configured; assembled
Axially
Base; pedestal
Bind
Center
Circumference; boundary
Column
Curvature
Cut
Edge; lip; rim
Engaging; touching
Extend; overhang; project
Face

Fixed; attached
*7EX-5 Head; peak; tip
Heel; foot
Hermetic seal; sealed
In; inside; within
Incident
Incline
Including
Inhibit
Integral
Invert
Junction; joint
Lateral
Line/linear
Longitudinal
Motion
Narrow; fine; slender
Oblique
Offset; compensate; counter
Opening; aperture; entrance
Opposed
Orientation
Oscillating; fluctuating
Parallel
Partition; divider
Passage; path; pathway
Peak; tip; head

Perimeter; circumference; boundary
Peripheral; outlying; periphery
Perpendicular
Planar; plane
Ply; laminate
Point
Position; location
Profile
Proximate; proximal
Quadrant
Radial; radiate; radius
Rear; back; posterior
Reference
Region
Relation; relationship
Relative
Remote; obscure
Retainer
Retract
Reverse
Root; foundation; base
Row
Sectional
Separate
Series
Shoulder
Side; sidewall

Skin; shell
Stand
Support
Surface
Surround
Suspend
Symmetry
Twist
Upper
D. Fastening & Joining

Aperture; opening
Anchored; attached
Bolt; dowel; pin
Bore; hole; opening
Cavity; hole
Channel; conduit
Clamp; fastener; clip
Clip
Coupled; joined; mated
Connection; joint
Demountably
Dowel; pin
Engage
Fix
Fastener; bolt; rivet; screw
Gap; break; void
Gluing; joining

Groove; channel
Guide
Hinge; joint; pivot
Hold
Hook; clip; clasp; fastener
Inlet
Ingress
Interconnect; interlock
Interface
Joint; seam; connection; coupling; juncture; union
Keeper
Key; latchkey; securing means
Latch; lock; secure
Link; linkage
Lock; bolt; closure; latch
Mate; joint; coupled
Mount; position; place
Nail; pin; dowel
Nut
*7EX-6 Paste; adhesive; glue
Peg; nail; pin; post
Pin; dowel; peg
Pivot; axis; fulcrum; hinge
Port; opening; ingress
Recess; cavity; niche
Rivet; bolt; fastener; screw
Screw; bolt; fasten; rivet

Seal; fasten; secure
Seam; joint; weld
Secure
Set
Slit; slot
Station; base; install
Stitch
Tape; bind; bond; fasten
Track; channel
Welding
E. Quantities
Alternate
Amount; aggregate
Content; extent; volume
Cyclic; sinusoidal; alternate
Dosage; measure; portion
Effective; competent
Greater; vast
Interval
Large; bulky; massive
Lean; meager
Least
Long-lead
Metered
Minor; insignificant; slight
Measure
Micro

Minima
More
Multiplicity; numerous
Number; multiplicity; numerous
One of; one or more
Only; alone; solely
Periodic
Plural; multiplicity; plurality
Portion; fragment; piece; segment
Proportion; ratio; fraction
Quantity; amount
Range; limit
Significant number; sizable number
Sinusoidal
Size; dimensions; measurements
Stoichiometric
Sum; aggregate; whole
Threshold; minimum
Trace; hint
Unit; unitary; dimension, element; section
Volume; quantity
Zero
F. Materials
1. Characteristic Properties
Brittle; rigid; inflexible; fragile
Conductive
Ductile; compliant; malleable; pliable

Elastic; flexible; pliant; supple; yielding
Fine; minute
Firm; rigid; stiff; fixed
Flat; level
Fluid; liquid; aqueous
Full; saturated; ample; entire; whole
Hard; firm; rigid
Heavy; dense; massive
Homogeneous; consistent; uniform
Hydrophilic
Hydrophobic
Incompressible
Inert; unreactive; inactive; stable
Insoluble
Insulative; shielding
Liquid; fluid
Lubricative
Mechanical
Organic; natural; living
Solid; dense
Opaque; impenetrable
Pitch; tone; sound
Plasticize
Porous; penetrable; permeable
Radiant; bright; luminous
*7EX-7 Random; arbitrary
Reactive

Refractory; insulative
Resilient; elastic; flexible; springy
Resistant; repellant
Rigid; fixed; hard; stiff
Rough; rugged
Sensitive; delicate
Smooth; level
Soft; supple; pliable
Soluble
Stable; unreactive; inert
Tactile
Thick; broad
Thin; slender; narrow
Tight; constricted; close
Tilt; angle; grade; incline; slope
Transmitting; relaying
Translucent
Transparent; clear
Weak; frail; fragile
2. Polymeric Materials
Acetal
Acrylic
Acrylonitrile-butadiene-styrene (ABS)
Alkyd resins
Butadiene
Cellulose acetate
Engineered plastics

Epoxy resins
Fluroplastics
Foam plastics
Foam rubber
Furane
Isoprene
Latex
Nylon
Phenolic resins
Phenoxy
Phenylene oxide
Polyacetal
Polycarbonate
Polyester
Polyethylene
Polyimide
Polyphenylene oxide (PPO)
Polypropylene
Polystyrene
Polysulfone
Polyurethanes
Polyvinylchloride (PVC)
Rubber
Silicone resins
Styrene
Thermoplastics
Thermosets

Urethanes
Vinyl chloride
3. Ceramics & Minerals

Alumina
Alumino-silicates
Carbides
Concrete
Glass
Granite
Graphite
Magnesia
Marble
Mica
Mullite
Nitrides
Oxide ceramics
Plaster
Quartz
Silica
Spinel
Talc
Zircon
4. Metals
Aluminum
Brass
Bronze
Copper

Chromium
Gold
Iron
Lead
Mercury
Nickel
Platinum
Steel; stainless steel; carbon steel
Tin
Titanium
*7EX-8 5. Textiles
Cotton
Felt
Flax
Hemp
Jute
Linen
Nylon
Polyester
Rayon
Silk
Weave; satin weave; plain weave
Wool
6. Common Gases and Liquids

Acetylene
Acids
Air

Alcohols
Ammonia
Bases
Benzene
Butane
Carbon dioxide
Carbon monoxide
Chlorine
Diesel
Ethane
Glycerine
Helium
Hydrogen
Natural gas
Methane
Oils
Oxygen
Petroleum
Phenol
Propane
Thinner Toluene
Turpentine
Water
G. Processes
1. Common Processes
Assembly
Brazing

Casting; forming molding
Chemical vapor deposition
Condensation; polycondensation
Cooling; thawing
Decomposition
Distillation
Dispensing; dispersing; disseminating
Drying; heating; warming
Electroplating
Encapsulating
Evaporation
Extrusion
Filtration; separation
Freezing; chilling; frosting
Grinding
Heating; baking; warming
Hot pressing
Hydrolysis
Impregnating
Injection molding
Ion-implantation
Ion plating
Isostatic pressing
Machining
Mixing; blending; stirring
Physical vapor deposition
Pressing; stamping

Reacting; synthesis
Sandblasting
Separation; isolation; segregation
Sputtering
Transfer molding
Vacuum forming
Washing; cleansing; scrubbing
2. Fluid Flow
Accumulator
Aspirator
Bellows
Conduit
Connector
Convection
Cylinder - piston; rod
*7EX-9 Dashpot
Diaphragm
Discharge
Dispenser
Filter
Fitting
Flue
Gasket
Hose
Hydraulic
Medium
Nozzle

Outlet
Pipe
Plunger
Port - inlet; outlet
Pump - centrifugal; gear; piston; vane
Reservoir
Seal
Siphon
Tank
Tube
Valve; control; gate; shutoff

END OF DOCUMENT


Jeffrey G. Sheldon

*7EX-11 Exhibit 7-2: Chart of Elements
10 Apparatus
12 Base of apparatus 10
14 Housing of apparatus 10
16 Motor of apparatus 10
18 Legs of base 12
20 Bottom portion of legs 18

END OF DOCUMENT


Jeffrey G. Sheldon

*7EX-11 Exhibit 7-3

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 8: Information Disclosure Statement
It is a very rare patent application that is not accompanied by an information disclosure statement. This is
because the Patent Office and the courts impose upon inventors and their attorneys and agents a duty of candor
and good faith toward the Patent Office. That duty requires the attorney and agent to disclose to the Patent Of-
fice any information known to them that is material to the patentability of the application. [FN1] The duty also
extends to any other individual who is involved in the substantive preparation or in the prosecution of the applic-
ation. [FN2]
Even if the Patent Office did not explicitly require disclosure of material information, a good practitioner
should voluntarily disclose that information. It is usually in the best interest of any inventor to have the most rel-
evant art before the Patent Office when the examiner examines the application. This is because any resulting
patent is much stronger and much less vulnerable to collateral attack if the Patent Office considered all material
prior art and still allowed the patent to issue. In any subsequent patent infringement action, the accused infringer
will have a difficult time at trial trying to persuade the trial judge or jury that the Patent Office made a mistake
in issuing the patent when the infringer can find no art more pertinent than that already considered by the exam-
iner.
The consequences of failing to comply with this duty to disclose material information can be substantial.
For example, it becomes much easier for an accused infringer to overcome the presumption of validity of the
patent at trial by producing documents that are more material to the patentability of an invention than those cited
by the patent holder *8-3 than it is without such documents. Moreover, intentional withholding of material prior
art can result in a finding of inequitable conduct, even if at least some of the claims of the patent would have is-
sued the patent had the prior art been disclosed to the Patent Office. [FN3] A finding of inequitable conduct can
have the following disastrous consequences:
1. Unenforceability of the entire patent, even if the inequitable conduct occurred in relation to fewer
than all the claims in the patent. [FN4] Moreover, inequitable conduct can render related patents unenforce-
able. [FN5]
2. Awarding of attorneys' fees: a finding of inequitable conduct can result in the case's being considered
exceptional, resulting in an award of attorneys' fees under 35 U.S.C. § 285. [FN6]
3. Antitrust liability if the inequitable conduct amounts to fraudulent procurement of a patent. [FN7]
4. Suspension, disbarment, or both suspension and disbarment of the attorney or patent agent respons-
ible for the inequitable conduct under 35 U.S.C. § 32.
At a minimum, even if the patentee ultimately prevails in persuading the court that the uncited prior art need
not have been brought to the attention of the Patent Office, substantial sums will have been spent litigating the
issue.
[FN1]. 37 C.F.R. § 1.56.

[FN2]. Id.
[FN3]. Merck & Co. v. Danbury Pharmacal, Inc., 873 F.2d 1418, 1421, 10 U.S.P.Q.2d 1682 (Fed. Cir. 1989).
[FN4]. Kingsdown Med. Consultants, Ltd. v. Hollister, 863 F.2d 867, 9 U.S.P.Q.2d 1384, 1392 (Fed. Cir. 1988).
[FN5]. Consol. Aluminum Corp. v. Foseco Int'l Ltd., 910 F.2d 804 (Fed. Cir. 1990) (concealment of best mode
rendered related patents unenforceable).
[FN6]. J.P. Stevens & Co. v. Lex Tex, Ltd., 822 F.2d 1047, 233 U.S.P.Q. 1089 (Fed. Cir. 1987).
[FN7]. Walker Process Equip., Inc. v. Food Mach. & Chem. Corp., 382 U.S. 172, 147 U.S.P.Q. 404.
PLIREF-PATAPP s 8.1
END OF DOCUMENT


Jeffrey G. Sheldon

§ 8.2 What Information Must Be Disclosed
*8-4 § 8.2.1 The Pre-1992 Standard
According to 37 C.F.R. § 1.56, all information that is material to the examination of the application must be
disclosed. According to 37 C.F.R. § 1.56, as it existed prior to March 16, 1992, information is material "where
there is substantial likelihood that a reasonable examiner would consider it in deciding whether to allow the ap-
plication to issue as a patent." This is not a "but for" test. Under a "but for" test, information would need to be
disclosed to the Patent Office only if the Patent Office would not have issued the patent, as it issued, had the
Patent Office been aware of the withheld information. As discussed above, even if the patent would have issued
had the uncited information been disclosed to the Patent Office, there may be a violation of 37 C.F.R. § 1.56 if
the nondisclosed information is found to be material.
END OF DOCUMENT


Jeffrey G. Sheldon

*8-4 § 8.2.2 The Current Patent Office Standard
By a notice published in the Federal Register on January 17, 1992, 37 C.F.R. § 1.56 and related rules were
changed. These changes included a change in the standard of materiality. The new rules are effective with re-
spect to all applications and re-examination procedures pending or filed after March 16, 1992. Under the new
standards, the test for materiality is much closer to a "but for" test. Under this standard, information is material
if:
1. the information establishes by itself or in combination with other information a prima facie case of
unpatentability of a claim; or
2. the information refutes, or is inconsistent with, a position the applicant takes in either
(a) opposing an argument of unpatentability relied on by the Patent Office, or
*8-5 (b) asserting an argument of patentability.
The new rule also includes a definition of "prima facie case of unpatentability." A prima facie case of unpat-
entability "is established when the information compels a conclusion that a claim is unpatentable under the pre-
ponderance of evidence, burden-of-proof standard." This standard is applied by "giving each term in the claim
its broadest reasonable construction consistent with the specification, and before any consideration is given to
evidence which may be submitted in an attempt to establish a contrary conclusion of patentability." [FN8]
Information is not material when the information is cumulative with respect to information already of record
or being made of record in the application.
[FN8]. 37 C.F.R. § 1.56.
END OF DOCUMENT


Jeffrey G. Sheldon

*8-5 § 8.2.3 Recommendations
The author recommends that a "rule of doubt" be followed when deciding whether certain information
should be disclosed to the Patent Office. Even if there is doubt as to whether particular information is "material"
under either old or new Rule 56, it should nevertheless be cited to the Patent Office. It is better to cite a refer-
ence than incur the risk of a finding of inequitable conduct.
The change in the definition of "materiality" should not be relied upon as a basis for not citing information.
There are two reasons for this recommendation.
First, the Court of Appeals for the Federal Circuit has not endorsed a change to Rule 56. The Federal Circuit
has only endorsed the old materiality standard. [FN9] It is uncertain if the *8-6 Federal Circuit will endorse a
rule that allows an applicant to refrain from citing information to the Patent Office that a reasonable examiner
would consider important but that does not establish a prima facie case of unpatentability.
Second, the Patent Office endorses this rule of doubt:

When in doubt, it is desirable and safest to submit information. Even though the attorney, agent, or ap-
plicant does not consider it necessarily material, someone else may see it differently and embarrassing ques-
tions can be avoided. . . . In short, the questions of relevancy in close cases, should be left to the examiner
and not the applicant. [FN10]
Another reason to use a rule of doubt is that the filing of an information disclosure statement is not con-
strued as an admission that the information cited in the statement is, or is considered to be, material to the pat-
entability of the invention. [FN11]
This "rule of doubt" means that in most situations, even when the practitioner preparing or prosecuting an
application believes that the information does not affect the patentability of a particular invention, the practition-
er should let the Patent Office make the decision. Exemplary of situations that can arise are the following:
1. Nonanalogous art: The examiner should be given the opportunity to determine whether a partic-
ular reference is analogous or nonanalogous.
2. "Prior" art or nonprior art: Even if the publication date of a reference is after the filing date
of a parent or foreign application from which priority is claimed, the reference should be cited to the
Patent Office. [FN12] *8-7 That allows the examiner to independently determine whether the applicant
is entitled to the benefit of the filing date of the parent application or foreign priority application. Simil-
arly, even if the applicant can swear behind the filing date of a United States patent or publication date
of a reference with a declaration under 37 C.F.R. § 1.131, the Patent Office should determine that the
showing complies with the requirements of 37 C.F.R. § 1.131.

3. On sale, publicly known, or experimental uses: Sufficient relevant facts and documents should
be presented to the Patent Office to let the examiner reach his or her own conclusion regarding whether
a particular activity amounts to an "on sale" or "public use," or whether the experimental use exception
applies. The Patent Office's position on this issue is very much in favor of disclosure. The Patent Office
believes it is desirable to submit information about prior uses and sales even if it appears that they may
have been experimental, did not specifically involve the claimed invention, or did not encompass a
complete invention. [FN13]
4. Inventorship: Because facts relating to inventorship issues can be material, even if inventorship
is correct, [FN13.1] consider presenting facts relating to inventorship to the PTO. This is particularly
true where there may be a motive for misjoinder of an inventor or nonjoinder of an inventor, such as
where a potential inventor has no obligation to assign the invention to the client.
*8-8 If information is specifically considered and discarded as not being material, that should be noted in
the attorney's or applicant's file, along with the reasons for discarding it. An honest and excusable mistake can
help prevent a finding of fraud or inequitable conduct. [FN14]
A good practitioner expends extra effort in identifying information that should be brought to the attention of
the Patent Office. Not only will this ensure that the practitioner complies with the duty of good faith and candor
under 37 C.F.R. § 1.56, but it also allows for preparation of a better patent application. It is much easier to write
a strong patent application knowing all the prior art. The following checklist is useful for identifying material in-
formation:
[ ] Publications and patents that belong to the inventor(s). It is very difficult for an inventor charged
with inequitable conduct to deny knowledge of his or her own publications or patents.
[ ] Other documents known to the inventor.
[ ] Information obtained by the inventors and others at conventions, plant visits, in-house reviews,
etc.
[ ] Any references developed by any search in the technology, including prior art, novelty, state-
of-the-art, infringement, and patentability searches.
[ ] References cited in related United States applications, including parent and sister applications.
According to the Patent Office, prior art references from one application must be made of record in an-
other, subsequent application. [FN15]
[ ] References cited in related foreign applications. [FN16] The Patent Office believes there is a
strong inference that prior art or other information is material when it has *8-9 been used in rejecting
the same or similar claims in a related foreign application or is the only prior art cited in a related for-
eign application. [FN17] It is recommended that any search report issued by a foreign patent office be
included with the documents cited.
[ ] Published related foreign applications.
[ ] Related United States applications or patents, including parent and sister applications and pat-
ents. These applications and patents can raise double-patenting issues, and a parent patent can be the
closest prior art for claims not supported by the parent patent. Practitioners cannot assume that the ex-
aminer of a particular application is necessarily aware of other applications that may be material. This
situation can arise when a particular inventor has different applications pending with patentably indis-
tinct claims present. [FN18] Moreover, failure to disclose the rejection of claims in a copending applic-
ation before a different examiner that are substantially similar to the claims present can constitute in-
equitable conduct. [FN18.1]

[ ] Any commercial activity relating to the invention. This can result in an "on sale" or "publicly
known" bar under 35 U.S.C. § 102. Once an attorney is on notice that a possibly material event, such as
a sale, public use, publication, or issuance of a patent, occurred about one year before the filing date of
the application, there is a duty to investigate that event. [FN18.2]
*8-10 [ ] Information that may be deemed prior art under 35 U.S.C. §§ 102(f) and 102(g) can be
combined with 35 U.S.C. § 103. Developments by coworkers can qualify as prior art under 35 U.S.C. §
102(g) as inventions "by another." Under many circumstances this would not be "prior art" under 35
U.S.C. § 103 because 35 U.S.C. § 103 disqualifies §§ 102(e)/ 103, 102(f)/103, and 102(g)/103 prior art
that was, at the time the second invention was made, owned by or subject to an obligation of assignment
to the person who owned the first invention. [FN19] Also, 35 U.S.C. § 103 can disqualify as prior art
certain subject matter when the invention is made as a result of a joint development agreement. At a
minimum, a practitioner should assure himself or herself of the applicability of these exceptions and, if
there is any doubt, provide an opportunity for the Patent Office to make the determination. If the subject
matter that does not qualify as prior art under 35 U.S.C. § 103(c) is the subject matter of a separate pat-
ent application, it is advisable to bring that application to the attention of the Patent Office for a pos-
sible double patenting rejection.
[ ] Information from related litigation, [FN20] such as art cited by the opposing party, motions filed
by the opposing party and any claim construction by the court.
[ ] Information relating to claims copied from a patent. When claims are copied or are substantially
the same as claims from a patent, 37 C.F.R. § 1.607(c) requires the applicant to identify the patent and
the numbers of the patent claims. [FN21]
*8-11 [ ] Information relating to a potential priority conflict, even if the information is not prior art.
It can be dangerous to unilaterally determine that such information is not prior art. [FN21.1]
[ ] Information that is relevant to enablement, even if it is not prior art. [FN21.2]
[ ] Any translation available for foreign prior art submitted. Partial translations can be troublesome.
It is best to get a full translation, because an opponent in litigation can allege that the partial translation
was deceptive. [FN21.3]
[ ] Information relating to the claimed invention submitted to government agencies such as the
FDA, and particularly prior art so identified. [FN21.4]
[FN9]. Merck & Co. v. Danbury Pharmacal, Inc., 873 F.2d 1418, 1421, 10 U.S.P.Q.2d 1682 (Fed. Cir. 1989)
(disclosure standard is whether a reasonable examiner, after he was aware of the particular document, would
consider it important in deciding whether to reject one or more claims).
[FN10]. M.P.E.P. § 2004(10) (citing U.S. Indus. v. Norton Co., 210 U.S.P.Q. 94, 107 (N.D.N.Y. 1980)).
[FN11]. 37 C.F.R. § 1.97(h).
[FN12]. This does not apply in the situation of divisional and continuation applications, since the specifications
of the parent and subsequent application are supposed to be identical.
[FN13]. M.P.E.P. § 2004(11).
[FN13.1]. Perspective Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315 (Fed. Cir. 2000).
[FN14]. M.P.E.P. § 2004(18).
[FN15]. M.P.E.P. § 2001.06(b).

[FN16]. 37 C.F.R. § 1.56(a)(1).
[FN17]. M.P.E.P. § 2001.06(a).
[FN18]. Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 66 U.S.P.Q.2d 1801 (Fed. Cir. 2003);
M.P.E.P. § 2001.06(b).
[FN18.1]. Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 66 U.S.P.Q.2d 1801 (Fed. Cir. 2003).
[FN18.2]. Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp., 267 F.3d 888 (Fed. Cir. 2001).
[FN19]. 35 U.S.C. § 103(c).
[FN20]. M.P.E.P. § 2001.06(c).
[FN21]. M.P.E.P. § 2001.06(d).
[FN21.1]. GFI Inc. v. Franklin Corp., 60 U.S.P.Q.2d 1141 (Fed. Cir. 2001).
[FN21.2]. Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226, 66 U.S.P.Q. 2d 1481 (Fed.
Cir. 2003) (non-prior-art article by the inventors reporting unsuccessful use of compounds specifically taught in
the patent as being successful was material as to enablement).
[FN21.3]. Semiconductor Energy Lab. Co. v. Samsung Elec. Co., 204 F.3d 1368 (Fed. Cir. 2000).
[FN21.4]. Bruno Indep. Living Aids, Inc. v. Acorn Mobility Servs. Ltd., 394 F.3d 1348 (Fed. Cir. 2005) (failure
to cite to the PTO prior art submitted to the FDA resulted in a finding of inequitable conduct and exceptional
case).
END OF DOCUMENT


Jeffrey G. Sheldon

*8-11 § 8.3 When Should the Information Disclosure Statement Be Filed
Whenever possible, the information disclosure statement should be filed with the patent application. This
makes certain that the information is brought to the attention of the examiner at the time the application is ori-
ginally examined. *8-12 Moreover, the prior art is fresh in the mind of the practitioner when the application is
filed. The practitioner of course had to consider the prior art when drafting the claims in the application, and it is
much easier to discuss the relevance of the references, as is required under 37 C.F.R. § 1.56, when the references
are fresh in mind.
Whether or not an information disclosure statement is timely depends on when it is filed. A filing is timely
if the statement is filed within three months of the filing date of the application or before the mailing date of a
first office action on the merits, whichever event occurs last. The three-month period does not apply to contin-
ued prosecution applications because of their expedited examination. [FN22] Thus, it is still possible to make a
timely filing when it is not possible to file the information disclosure statement with the application, such as
when copies of references are not available or when the filing is done on short notice to avoid a statutory bar
date.
A late filed information disclosure statement will be considered by the Patent Office if certain requirements
are met. For the Patent Office to consider an information disclosure statement that is not timely filed but that is
filed before a final action or a notice of allowance, the applicant must pay an extension fee as set forth in 37
C.F.R. § 1.17(b), or provide a statement as to why the information disclosure statement was not filed in time.
[FN23]
The statement must state that the information was cited in a communication from a foreign patent office in a
counterpart foreign patent application within the past three months, or that the information was not known to
any individual associated with the filing or prosecution of the patent application within the three months prior to
filing the information disclosure statement. [FN24] These individuals include the inventor(*8-13 s), the attorney
or agent who prepares or prosecutes the application, and "every other person who is substantively involved in
the preparation or prosecution of the application, and who is associated with the inventor, with the assignee or
with anyone to whom there is an obligation to assign the application." [FN25]
No extensions of time for filing an information disclosure statement are permitted under section 1.136. If a
bona fide attempt is made to comply with section 1.98, but part of the required content is inadvertently omitted,
additional time may be given to enable full compliance. [FN26]
It is very difficult to get the Patent Office to consider information after the issuance of a final action or a no-
tice of allowance. To have the information disclosure statement considered, it is necessary to
(1) provide the statement regarding lateness discussed above,
(2) provide the fee specified, and

(3) file the statement before the issue fee is paid. [FN27]
It is strongly recommended that before submitting any nontimely information disclosure statement, a tele-
phone call be placed to the examiner to let the examiner know that additional information is being transmitted. It
is very frustrating for an examiner to examine an application or amendment and issue an office action that
crosses in the mail with the submission of information more material than what the examiner had before him. It
is not in the best interest of a practitioner or inventor to have a frustrated examiner. If the identity of the exam-
iner is not known, the secretary or clerk of the group identified on the filing receipt can be contacted. The secret-
ary can then identify the examiner assigned to an application.
[FN22]. 37 C.F.R. § 1.97(b).
[FN23]. 37 C.F.R. § 1.97(c).
[FN24]. 37 C.F.R. § 1.97(e).
[FN25]. 37 C.F.R. § 1.56(c).
[FN26]. 37 C.F.R. § 1.97(f).
[FN27]. 37 C.F.R. § 1.97(d).
PLIREF-PATAPP s 8.3
END OF DOCUMENT


Jeffrey G. Sheldon

*8-14 § 8.4 Content of Information Disclosure Statement
The information disclosure statement itself is composed of two parts: (1) a list of patents, publications, or
other information and (2) a concise explanation of the relevance of each listed item that is not in the English lan-
guage. [FN28] It is recommended that the listing of the information be provided on Form PTO-1449 or a form
substantially in the same format. A completed form is provided as part of Exhibit 8-1. [FN29] The form has
been modified by providing a coded designation, that is, AA, AB, AC, and so on, for each document. This
provides an easy way to refer to each listed reference. The code letters can also be written on each document
submitted to the Patent Office to help the examiner coordinate the documents with the information.
Nothing submitted to the PTO, including the form listing the disclosed information and the accompanying
statement, should refer to the information as being "prior art." This avoids the information becoming prior art by
admission. [FN29.1] There can be information that is submitted that does not qualify as prior art, and it is im-
portant to retain the ability to prove that. For example, it may be possible to swear behind an issued patent, or
the information submitted may be partly the work of the named inventor.
*8-15 Whether or not the PTO form is used, all United States patents should be identified by their patent
number, patent date, and inventor. Each foreign published application or patent should be cited by identifying
the country or office that issued it, the document number, and the publication date indicated in the document.
Printed publications should be identified by author (if any), title of the publication, relevant pages, publisher,
and the date and place of publication. [FN30]
There is no longer a requirement to write a discussion of the relevance of the references in English. There-
fore, beyond what is required on Form PTO-1449, nothing should be stated about English-language references,
unless the statement would help achieve allowability of the application. When the reference is a non-Eng-
lish-language reference, its relevance has to be discussed.
As little as possible should be stated about the references. Moreover, the references should not be inter-
preted, because whatever is stated could come back to haunt the applicant in litigation. Statements made in the
information disclosure statement can be a basis for interpreting the scope of the claims and can create an estop-
pel that precludes a finding of infringement under the doctrine of equivalents. [FN31] Thus say as little as pos-
sible about prior art references in an information disclosure statement. For example, when discussing the relev-
ance of the document, it is best to quote language from the document, such as the Abstract or the Summary por-
tion of a patent. If a search report discusses the reference (and is accurate), then quote the search report.
*8-16 The explanation of the relevance of each listed item need not be elaborate. It can consist of nothing
more than identification of a particular figure or paragraph of the patent or publication that has some relation to
the claimed invention. It might be a simple statement pointing out the similarities between the item of informa-
tion and the claimed invention. Even a statement that an item is listed because it was cited during the prosecu-

tion of a counterpart foreign application and is not considered material to the examination of the United States
application is considered to satisfy the concise explanation requirement. [FN32] If there is a portion of a refer-
ence that is particularly relevant, the examiner can be referred to that portion by column and line number or by
page and paragraph number.
Arguments about the patentability of the invention over the cited information should not be included in the
information disclosure statement. By arguing and distinguishing a reference, the practitioner can create a prosec-
ution history estoppel situation. Why do that prematurely? Arguments should wait until the examiner actually re-
lies on the reference. Often the examiner may not consider a reference as material as does the practitioner who
prepared the application and will not apply the reference against the claims.
When there are a large number of references, in excess of about fifteen, it is best to identify to the examiner
those documents that are believed to be the most significant. [FN33] Failure to do that could result in a charge
by an accused infringer that the inventor "buried" the most relevant art by citing a large number of obscure refer-
ences.
It is recommended that an explicit reference be made to the file history of any related U.S. patent or pending
application in the information disclosure statement. "Related" applications are applications from which the
present application claims priority, and applications that claim priority from the *8-17 same application from
which the present application claims priority. As noted above in § 8.2.3, related patents and applications can
raise double-patenting issues. Also, rejection of similar claims in a co-pending application, not disclosed to the
Patent Office, can give rise to a charge of inequitable conduct. The author has also noted that in litigation there
can be charges of inequitable conduct for not disclosing the Patent Office's reason for allowance in a related ap-
plication. There can also be a charge of inequitable conduct for not disclosing an objection in a related applica-
tion. To avoid these types of charges, it is prudent not to rely solely on disclosure of the related application or
patent, but also, in a separate line, to make reference to the file history of that related application or patent.
[FN28]. 37 C.F.R. § 1.98.
[FN29]. PTO-1449 is provided by the Patent Office in M.P.E.P. § 609.
[FN29.1]. Riverwood Int'l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 66 U.S.P.Q.2d 1331 (Fed. Cir. 2003)
(discusses the law regarding prior art by admission and holds that an inventor's own work, even though labeled
prior art, is not prior art by admission); Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 67
U.S.P.Q.2d 1191 (Fed. Cir. 2003).
[FN30]. 37 C.F.R. § 1.98(b).
[FN31]. Ekchian v. Home Depot, Inc., 104 F.3d 1299, 41 U.S.P.Q.2d 1364 (Fed. Cir. 1997).
[FN32]. M.P.E.P. § 609.
[FN33]. M.P.E.P. § 2004(13).
PLIREF-PATAPP s 8.4
END OF DOCUMENT


Jeffrey G. Sheldon

*8-17 § 8.5 Submission of Listed Documents
The information disclosure statement must be accompanied by a copy of each patent or publication or other
item or information listed, or at least the portions that are considered to be pertinent. [FN34] There are three ex-
ceptions to this rule. The first exception is that issued U.S. patents and published U.S. patent applications need
not be submitted. The second applies when two or more patents or publications are substantially cumulative, and
that is stated; in this situation only a representative document has to be provided. [FN35] The third exception ap-
plies when copies are in the file of the applicant's prior application, provided the earlier application is identified
in the information disclosure statement and is relied on for an earlier effective filing date under 35 U.S.C. § 120.
Reference to the submission in the prior application is sufficient for the continuing application. [FN36]
*8-18 A translation of the pertinent portions of foreign language patents or publications is to be transmitted
if an existing translation is readily available to the applicant. [FN37]
Whenever possible, provide clean copies of the references, that is, copies not having any markings on them.
Markings can unduly attract an examiner's attention to portions of a document. It can be particularly trouble-
some if the marked or highlighted portions are the less pertinent portions of the references. An accused infringer
can argue that the examiner's attention was distracted from the more significant portions of the references.
[FN34]. 37 C.F.R. § 1.98(a)(2).
[FN35]. 37 C.F.R. § 1.98(c).
[FN36]. 37 C.F.R. § 1.98(d); M.P.E.P. § 609(2).
[FN37]. 37 C.F.R. § 1.98(c).
END OF DOCUMENT


Jeffrey G. Sheldon

*8-18 § 8.6 Electronic Filing of an Information Disclosure Statement
It is possible to file an information disclosure statement ("IDS") electronically. This is effective for up to
fifty references, and the references are limited to U.S. patents and U.S. published applications. For other refer-
ences, it is necessary to file a paper IDS. If there are more than fifty references, it is necessary to file multiple
IDSs.
The software for filing an electronic IDS is obtainable at the PTO website. [FN38] It can be filed when the
filing receipt is received, or by obtaining the application confirmation number using the PAIR system. [FN39]
An advantage of electronic filing is that it avoids the delays associated with the PTO mailroom.
[FN38]. The PTO website address is <www.uspto.gov>.
[FN39]. Carl Oppedahl, Electronic Filing of Information Disclosure Statements, INTELL. PROP. TODAY, Oct.
2002, at 10.
PLIREF-PATAPP s 8.6
END OF DOCUMENT


Jeffrey G. Sheldon

*8-19 § 8.7 Example
An annotated sample information disclosure statement is provided as Exhibit 8-1.
It is recommended that the explanation of relevance of English language references not be included in in-
formation disclosure statements submitted under the current rules. Anything that is said about the references can
provide an opening during litigation for an opponent to argue noninfringement, invalidity, or inequitable con-
duct. The only exception to this recommendation occurs when a large number of references are provided. Under
these circumstances, the examiner should be advised as to the most pertinent references. This would be helpful
to the examiner and would avoid an argument during litigation that the most pertinent references were "buried."
PLIREF-PATAPP s 8.7
END OF DOCUMENT


Jeffrey G. Sheldon

*8EX-1 Exhibit 8-1: Annotated Sample Information Disclosure Statement
(A) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re application of: ) Group Art Unit: 101
) (prior application)
JOHN SMITH )
) Examiner: Jones
(B) Serial No.: CIP of 555,553 ) (prior application)
)
Filed: Herewith )
)
For: ELECTRICAL METER )
) Pasadena, California
INFORMATION DISCLOSURE STATEMENT

Honorable Commissioner of Patents and Trademarks
Washington, D.C. 20231
Sir:
Attached hereto is Form PTO-1449 listing documents believed relevant to the subject application. It is respectfully
requested that these documents be considered by the examiner and an initialed copy of each form be returned to the un-
dersigned.
(C) By submitting this information disclosure statement, no representation is made that: (i) a search has been per-
formed or the extent of any search that may have been performed; (ii) more relevant information does not exist; (iii) the
information is, or is considered to be, material to patentability as defined in 37 C.F.R. § 1.56(b); *8EX-2 (iv) the inform-
ation is prior art or otherwise relevant to the patentability of the claimed invention; (v) the order of presentation of the in-
formation is an indication of the importance of the information; or (vi) if this is an e-IDS, any gap in the numbering of
the information is an indication that information was deleted.
(D) It is believed that this disclosure complies with the requirements of 37 C.F.R. §§ 1.56, 1.97, and 1.98, and the
Manual of Patent Examining Procedures § 609. If for some reason the examiner considers otherwise, it is respectfully re-
quested that the undersigned be called so that any deficiencies can be remedied.
(E) A copy of each document is enclosed, except for any published U.S. Patent Applications and U.S. Patents, docu-
ment 4, which is substantially identical to document 5, and document 6 and 7, which can be found in the patent applica-

tion Serial No. 555,553.
(F) Some of the documents may have markings thereon. No significance is meant to be attached to the markings.
(G) An English language abstract of documents 9 and 10 is provided. Applicant cannot vouch for the accuracy of the
English language abstracts.
(H) These documents are not necessarily analogous art.
(I) The relevance of each foreign-language document will now be discussed.
(J) Document 9 discusses an electrical meter for measuring resistance of plastics, the meter having *8EX-3 temperat-
ure control circuitry. The examiner's attention is directed to page 3, lines 5-15 and Fig. 2.
(K) The relevance of Document 10 is discussed in the background portion of the specification.
(L) Documents 8, 9, and 10 were cited in the partial European Search Report for European Patent Application 97
903935.7, filed May 4, 1999 from PCT US87 00990, which correspond to the present application. These documents are
believed relevant because they were cited in a search report under Rule 45 of the European Patent Convention. Both doc-
uments were identified as "technological background." Also enclosed is a copy of the European Search report.
OTHER INFORMATION
(M) Applicant wishes to advise the examiner that a prototype meter as described and claimed in the present applica-
tion has been under test by officials of Los Angeles County since about July 30, 1999. Letters dated June 15, 1999 and
June 30, 1999, from officials of Los Angeles County regarding the tests are attached as Exhibits A and B. No monies
were received from Los Angeles County for the meter, and the evaluation of the prototype is still underway.
Respectfully submitted,
*8EX-4 ANNOTATIONS
(A) It is recommended that the attorney docket number be placed on all correspondence with the Patent Office
for ease in internal filing in the practitioner's office and for ease in communicating with the Patent Office.
(B) There is no serial number or filing date because the information disclosure statement is being submitted with
the application.
(C) The first portion of this disclaimer paraphrases language from 37 C.F.R. § 1.97(b). The remainder of this
disclaimer provides protection against an examiner's misconstruing the information disclosure statement and against
an infringer's misusing it during litigation.
(D) Some examiners will follow up on the suggestion to identify any deficiencies in the information disclosure
statement and call the applicant. It cannot hurt to ask the examiner to do so.
(E) "Substantially identical" documents need not be submitted pursuant to 37 C.F.R. § 1.98(d), and copies of
documents submitted in a prior application need not be resubmitted. M.P.E.P. § 609(2). However, often an examiner
does not have easy access to the documents in the parent application, and thus as a convenience the applicant may
wish to submit extra copies of the documents.
*8EX-5 (F) Sometimes it is impossible to obtain clean copies of all the documents. It is best to include this dis-
claimer. This disclaimer is worded so that it can be included with every information disclosure statement, whether or
not the documents actually have markings.
(G) It is safest to make a disclaimer about the accuracy of any translation. Sometimes the translation of a single
word can greatly affect the relevance of a particular reference. This disclaimer provides the opportunity to provide a
verified translation that differs from the translation provided with the information disclosure statement.
(H) A disclaimer helps to preserve the right to argue that a particular document cited was not analogous art. For

example, a searcher may cite a document in a search report that the practitioner does not believe should really have
been cited. It is safest to cite the document to the Patent Office, and subsequently argue nonanalogous art if neces-
sary.
(I) Under current Patent Office rules, the relevance of English language documents need not be explained. 37
C.F.R. § 1.98.
(J) A specific reference to page and line numbers of Document 8 is included to assist the examiner.
(K) The background portion of the specification is referred to when a document is discussed there.
*8EX-6 (L) It is recommended that any search report available on a corresponding foreign application be sub-
mitted.
(M) Although this possible "public use" is probably experimental, it is safest to let the Patent and Trademark Of-
fice know about it.
SHEET 1 OF 1
-------------------------------------------------------------------------------
FORM PTO-1449 U.S. DEPARTMENT ATTORNEY DOCKET SERIAL
OF NO.: 5234:JGS NO.:
COMMERCE PATENT AND
TRADEMARK OFFICE
INFORMATION DISCLOSURE CITATION

(Use Several sheets if necessary)
-------------------------------------------
APPLICANT: JOHN
SMITH
-------------------------------------------
FILING DATE: GROUP: 101
HEREWITH (PRIOR
APPLICATION)
-------------------------------------------------------------------------------
-------------------------------------------------------------------------------
Examiner DOCUMENT NUMBER DATE NAME CLASS SUBCLASS FILING DATE
Initial IF
[FNa1] APPROPRIATE
-------------------------------------------------------------------------------
1 3 7 0 3 3 4 4 11-72 Tow 418 61
-------------------------------------------------------------------------------
2 3 7 0 3 3 4 4 07-74 Reitt- --- ---
er

-------------------------------------------------------------------------------
3 3 7 0 3 3 4 4 10-78 Sarich 418 61
-------------------------------------------------------------------------------
3 4 5 2 2 6 1 6 11-91 Brown 419 50
-------------------------------------------------------------------------------
4 4 5 2 2 6 1 7 11-92 Jones 500 10
-------------------------------------------------------------------------------
5 4 4 4 4 1 1 1 10-93 Patton 300 61
-------------------------------------------------------------------------------
6 4 4 4 4 1 1 1 10-94 Patton 300 61
-------------------------------------------------------------------------------
7 4 4 4 4 1 1 2 10-95 Patton 300 61
-------------------------------------------------------------------------------
-------------------------------------------------------------------------------
-------------------------------------------------------------------------------
-------------------------------------------------------------------------------
FNa1. EXAMINER: Initial if reference considered, whether or not citation is
in conformance with MPEP 609; Draw line through citation if not in
conformance and not considered. Include copy of this form with next
communication to applicant.
FOREIGN PATENT DOCUMENTS
-------------------------------------------------------------------------------
DOCUMENT NUMBER DATE COUNTRY CLASS SUBCLASS TRANSLATION
------------
YES NO
-------------------------------------------------------------------------------
8 1 1 3 7 7 2 9 06-65 UK 418 63 x
-------------------------------------------------------------------------------
9 5 0 - 3 1 0 6 11-79 UK 260 424 X
-------------------------------------------------------------------------------

10 1 1 3 7 7 2 9 06-79 Fed.Rep. of 418 63 x

Germany
-------------------------------------------------------------------------------
-------------------------------------------------------------------------------
-------------------------------------------------------------------------------
OTHER ART (Including Author, Title, Date, Pertinent Pages, Etc.)
-------------------------------------------------------------------------------
Kovach, et al, "Simple Precision RC Oscillator," IBM Tech. Disclosure
Bulletin, Vol. 16, No. 16, No. 10, 3/74-p.p. 3174-3175
11 ---------------------------------------------------------------------
-------------------------------------------------------------------------------
---------------------------------------------------------------------
-------------------------------------------------------------------------------
---------------------------------------------------------------------
-------------------------------------------------------------------------------
EXAMINER DATE CONSIDERED
-------------------------

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 9: Design Patent Applications [FNa1]
§ 9.1 Patentable Subject Matter
*9-2 § 9.1.1 Patentable Designs
The right to patent a design arises from 35 U.S.C. § 171. Under this statute, any person who invents any
new, original, and ornamental design for an article of manufacture may obtain a design patent. [FN1] Design
patents are made available to encourage the ornamental and decorative arts. In general, design patents are gov-
erned by the same rules as utility patents. However, they are much simpler and easier to draft, being subject to
fewer written requirements.
*9-3 The design of an object of "manufacture" can be defined as the visually perceptible characteristics or
features of the object. [FN2] It is the visual impact created by the appearance of an object upon the mind of the
observer. [FN3] Since the appearance of the object is the basis of the design patent, the design claimed can en-
compass (1) the external shape of an object, such as the shape of the photograph display shown in Exhibit 9-2;
[FN4] (2) aspects of an object's surface ornamentation, such as a painting on a vase [FN5] or the ornamental
design of the glass panel shown in Exhibit 9-3; or (3) some combination of the two. Patentable designs include
the designs of television sets and radio cabinets, patterns on fabric and clothing, toys and games, jewelry
designs, and a myriad of other useful articles.
However, a design patent cannot claim a scheme of decoration or ornamentation that exists independently of
any article. [FN6] The design is inseparable from the object to which it is applied and cannot exist merely as a
scheme of surface ornamentation. [FN7] For example, a line drawing by itself cannot be patented because it is
not a design for an article or object. That is why a design for a decorative glass panel and not the detached
design by itself is claimed in Exhibit 9-3. Applying this standard, the Patent Office has rejected applications
seeking design patents for computer software-related icons on the basis that "a picture standing alone is not pro-
tectible by a design patent." [FN8] However, in dicta, the Patent Office has *9-4 suggested that a design that is
described as an "information icon for display screen of a programmed computer or the like" would be statutory
subject matter for design patents on the basis that an icon "is an integral part of the operation of a programmed
computer," which is an article of manufacture. [FN9] The Patent Office has followed up the dicta with
guidelines that allow patenting computer-generated icons and type fonts, if they are embodied in an article of
manufacture such as a computer screen, monitor, other display panel, or portion therof. [FN10]
On the other hand, the mere dependence of the design on something outside the article of manufacture itself
does not preclude patentability. In an unusual case, the C.C.P.A. held that the design formed by a stream of wa-
ter flowing through a novel water fountain system was patentable even though maintenance of the design was
dependent on the flow of water through the fountain. [FN11] The court reasoned that many articles, such as in-
flatable objects, stockings, and wallpaper, were dependent on something outside of the article itself, namely air,
legs, and a wall, respectively, for the design to be visible.
[FNa1]. The author acknowledges the assistance of Ashok Janah.

[FN1]. 35 U.S.C. § 171.
[FN2]. M.P.E.P. § 1502.
[FN3]. Id.
[FN4]. Exhibit 9-1, discussed in § 9.2 below, is an assignment for a design patent.
[FN5]. M.P.E.P. § 1502.
[FN6]. Id.
[FN7]. Id.
[FN8]. Ex parte Tayama, 24 U.S.P.Q.2d 1614 (Bd. Pat. App. & Interf. 1992); Ex parte Donaldson, PTO Appeal
No. 92-0546 (Bd. Pat. App. & Interf. Apr. 2, 1992); Ex parte Donoghue, PTO Appeal No. 92-0539 (Bd. Pat.
App. & Interf. Apr. 2, 1992); Ex parte Strijland, PTO Appeal No. 92-0623 (Bd. Pat. App. & Interf. Apr. 2,
1992); Ex parte Donoghue, PTO Appeal No. 92-0543 (Bd. Pat. App. & Interf. Apr. 2, 1992).
[FN9]. Ex parte Strijland, PTO Appeal No. 92-0623 (Bd. Pat. App. & Interf. Apr. 2, 1992).
[FN10]. Guidelines for Examination of Design Patent Applications for Computer-Generated Icons, 61 Fed. Reg.
11,380 (Mar. 20, 1996); PTO Notice on Design Patent Applications for Computer-Generated Icons, Pat. Trade-
mark & Copyright J. (BNA) (Mar. 21, 1996); A. Hugo Word, The New Guidelines on Protection of Computer-
Generated Icons and Typeface, 24 AIPLA Q.J., 2, 3, 4, 415-25 (1996).
[FN11]. In re Hruby, 373 F.2d 997, 153 U.S.P.Q. 61 (C.C.P.A. 1967).
END OF DOCUMENT


Jeffrey G. Sheldon

*9-5 § 9.1.2 The Ornamentality Requirement
Design patents replace the "usefulness" requirement of utility patents with an ornamentality requirement.
[FN12] To be ornamental, the design must include some primarily nonfunctional feature or characteristic.
[FN13] The design cannot be dictated solely by mechanical or functional considerations. A design is purely
functional when "every part or substantially every part of the shape is dictated by the utility to be performed."
[FN14] Designs that do not disclose any surface ornamentation or configuration that can be attributed to orna-
mental or decorative considerations will be rejected by the examiner. [FN15] For example, a soap dish whose
only nonfunctional design feature comprised a few horizontal lines was not patentable, since the design was
primarily functional. [FN16]
Although a purely functional design is not patentable, a design that incorporates functional features can still
be patentable if it has ornamental features that can exist independently of its functional features. [FN17] Func-
tional and utilitarian aspects of a design do not make the design unpatentable per se. [FN18]
The Federal Circuit, in holding that the district court did not commit clear error in finding that an ornament-
al athletic shoe design "was primarily ornamental," provided the following guidelines as to the distinction
between ornamentality and functionality:
*9-6 1. If a particular design is essential to the use of the article, it cannot be the subject of a design pat-
ent;
2. The utility of each of the various elements that comprise the design is not the relevant inquiry with
respect to a design patent;
3. When there are several ways to achieve the function of an article's manufacture, the design of the art-
icle is more likely to serve a primarily ornamental purpose; and
4. In today's marketplace, the primacy of appearance in the design of shoes cannot be ignored when
analyzing functionality. [FN19]
Another example of a product with functional features that qualified for design patent protection was an
automobile license plate holder with decorative features, even though the holder was designed primarily to
provide advertising space and to hold a license plate. [FN20]
Similarly, the functional aspects of a wooden whistle, such as its length and the position of holes, do not
make it unpatentable, when alternative designs would be functionally equivalent. [FN21]
A design can also be rejected on grounds that it discloses subject matter that could be offensive to any race,
religion, sex, ethnic group, or nationality. [FN22] Offensive caricatures and depictions are rejected as not meet-
ing the ornamental requirements. Such designs are considered frivolous and against public policy and, therefore,
improper subject matter for design patent protection. [FN23]

[FN12]. 35 U.S.C. § 171.
[FN13]. M.P.E.P. § 1504.
[FN14]. Ex parte Levinn, 136 U.S.P.Q. 606, 607 (Pat. Off. Bd. App. 1962).
[FN15]. In re Carletti, 328 F.2d 1020, 140 U.S.P.Q. 653 (C.C.P.A. 1964).
[FN16]. Hygienic Specialties Co. v. H.G. Salzmann, Inc., 302 F.2d 614, 133 U.S.P.Q. 36 (2d Cir. 1962).
[FN17]. In re Schilling, 421 F.2d 747, 164 U.S.P.Q. 576 (C.C.P.A. 1970); Read Corp. v. Portec, Inc., 970 F.2d
816, 23 U.S.P.Q.2d 1426 (Fed. Cir. 1992).
[FN18]. Landes Mfg. Co. v. Chromodern Chair Co., 203 U.S.P.Q. 337 (C.D. Cal. 1978).
[FN19]. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 25 U.S.P.Q.2d 1913 (Fed. Cir. 1993).
[FN20]. Robert W. Brown & Co. v. De Bell, 243 F.2d 200, 113 U.S.P.Q. 172 (9th Cir. 1957).
[FN21]. Moore v. Stewart, 600 F. Supp. 655, 225 U.S.P.Q. 313 (W.D. Ark. 1985).
[FN22]. M.P.E.P. § 1504.01(d).
[FN23]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

*9-7 § 9.1.3 "Concealed During Normal Use" Limitation
If the design of an article is concealed during its normal and intended use, the design cannot be patented,
under the rationale that a concealed design is presumed to lack ornamentality. [FN24] However, the definition of
what constitutes "normal and intended use" has been broadly construed. A 1990 Federal Circuit decision held
that normal use includes the period beginning immediately after complete assembly of the article and ending
with the article's ultimate destruction or disappearance. [FN25] It includes those incidents in the life of the art-
icle that are not integral to its function or purpose. [FN26] As long as (1) the article is visible at some point dur-
ing its life, such as in advertisement or displays, and (2) the appearance of the article affected its design, it is
patentable even if the article is concealed during its final use. This test is decided on a case-by-case basis.
Thus, the design of a hip prosthesis device was held to be patentable subject matter because the device was
displayed in advertisements and trade shows. [FN27] Although the device was concealed during its final use, the
likelihood that the shape of the device would be observed during its commercial life substantially influenced its
design and ornamentality. [FN28]
Similarly, the design of shotgun shell cartridges that were sold in clear plastic bags with their visual config-
uration clearly visible to the buyer was held patentable subject matter because the aesthetic appearance of the
shells was an important influence on the sale. [FN29] Another decision held that *9-8 the design of the bead of
an automobile tire (that is hidden from view when the tire is mounted) is patentable subject matter because the
design was visible when the tire was purchased and the aesthetic appearance of the design may have influenced
sales of the tire. [FN30]
[FN24]. Elec. Molding Corp. v. Mupac Corp., 529 F. Supp. 300, 217 U.S.P.Q. 288 (D. Mass. 1981).
[FN25]. In re Webb, 16 U.S.P.Q.2d 1433 (Fed. Cir. 1990).
[FN26]. Id.
[FN27]. Id.
[FN28]. Id.
[FN29]. Ex parte Cole, 18 U.S.P.Q.2d 1175 (Pat. Off. Bd. App. 1990).
[FN30]. Ex parte Wolfer, 121 U.S.P.Q. 319 (Pat. Off. Bd. App. 1958).

END OF DOCUMENT


Jeffrey G. Sheldon

*9-8 § 9.1.4 Point of Novelty Test
In view of how the Federal Circuit applies the "point of novelty" test for patent infringement, the author has
concluded that an enforceable patent for a design requires that the design have some feature not present in the
prior art.
In particular, to find infringement of a design patent, a court must apply two distinct tests, both of which
must be satisfied. The first is the "ordinary observer" test, which requires comparison of two designs from the
viewpoint of the ordinary observer to determine whether the patented design as a whole is substantially the same
as the accused design. Under the second test, the point of novelty test, the court must determine whether the ac-
cused device appropriates the novelty in the patented device that distinguishes it from the prior art.
The Federal Circuit has ruled that if all the features of the patented design are found in the prior art, there
can be no infringement under the point of novelty test. The Federal Circuit refused to accept that a point of nov-
elty can be the combination in a single design of prior art features. Thus, even if the combination of features of
the prior art is unobvious and therefore the patent is valid, according to the Federal Circuit, there can never be
infringement. [FN30.1]
[FN30.1]. Lawman Armor Corp. v. Winner Int'l, LLC, 449 F.3d 1192 (Fed. Cir. 2006).
END OF DOCUMENT


Jeffrey G. Sheldon

*9-9 § 9.1.5 Relationship Between Design Patents, Copyright, and Trademark
§ 9.1.5.1 Overlap of Design Patent and Copyright
It is possible to secure both a copyright and a design patent in the same design. A copyright notice can be
included in a design patent if (1) the notice is placed adjacent to the copyrighted material and, if on the drawing,
the notice is limited in size to between 1/8 and 1/4 inch and (2) the following waiver is included in the specifica-
tion:
A portion of the disclosure of this patent document contains material to which a claim for copyright is
made. The copyright owner has no objection to the facsimile reproduction by anyone of the patent document
or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but reserves
all other copyright rights whatsoever. [FN31]
§ 9.1.5.2 Overlap of Design Patent and Trademark
It is possible to secure both a copyright and a trademark in the same design. Registered trademarks can be
used in the drawing disclosure. [FN32]
[FN31]. M.P.E.P. § 1512.
[FN32]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

*9-9 § 9.2 Parts of the Application
Design patent applications are generally governed by the same rules as those for utility patents. [FN33]
Consequently, design patent applications contain the same components as their utility counterparts.
A design patent application includes all of the parts of a utility patent application as discussed in
chapter 2. The same *9-10 oath or declaration can be used for both utility and design patents. [FN34]
However,
• a different transmittal form is used (see Exhibit 9-1),
• a different assignment can be used (see Exhibit 9-1A),
• the specification and claims are much simpler, and
• the drawings are much more important and more extensive in content.
The design patent has special rules that govern the form and substantive content of its drawings, specifica-
tions, and claims. [FN35] The essential requirements of those rules are discussed below. Exhibit 9-2 is used to
illustrate some of the rules. It shows a design patent for a magnetically supported display unit.
[FN33]. 37 C.F.R. § 1.151.
[FN34]. See 37 C.F.R. § 1.153(b).
[FN35]. 37 C.F.R. §§ 1.152-1.155.
PLIREF-PATAPP s 9.2
END OF DOCUMENT


Jeffrey G. Sheldon

§ 9.2 Parts of the Application
*9-10 § 9.2.1 Specification
Under 37 C.F.R. § 1.154, the following arrangement should be used in drafting the specifications of a
design patent:
a. preamble, stating the title of the design and the name of the applicant;
b. description of the figure or figures of the drawing;
c. description of the design (optional);
d. claim; and
e. signed oath or declaration.
§ 9.2.1.1 Preamble and Title
The preamble should give the name of the applicant, the title of the design, and optionally a brief descrip-
tion of the nature and intended use of the article in which the design is embodied.
*9-11 The title of a design patent is important because it often serves as the only form of written description
for the claimed design. The title must be based on the name generally used by the public to describe or refer to
the article, because it is the primary means by which the public can locate prior art designs. [FN36]
The title identifies the subject of the patent by specifying either the use of the article or the structural type of
the article. [FN37] For example, a title specifying the use for a bottle would read "bottle for perfume"; a title
specifying the structural type of the article would read "vacuum bottle." However, if the category of use or struc-
tural type is overly broad, it results in an indefinite categorization of the object. For example, a title that reads
"an article of manufacture" is too broad. [FN38] Similarly, a stove should be called a "stove" and not a "heating
device." Likewise, "vacuum bottle" is preferable to "bottle"; "microwave oven" is preferable to "cooking appli-
ance"; and "alarm for an automobile" is preferable to "electronic device." [FN39]
The title identifies the article in which the design is embodied by the name generally known and used by the
public, but it does not define the scope of the claim. For example, the title may be directed to the entire article
embodying the design, while the claimed design as shown in full lines in the drawings may be directed to only a
portion of the article, in that a portion of the article is shown in broken lines.
When the design is embodied in an article having multiple functions or comprises multiple independent
parts or articles that interact with each other, the title must define them as a single entity, for example, combined
or combination, set, pair, unit assembly, etc. [FN40]
*9-12 Generally the title is stated in singular form. Sometimes, it is desirable to claim a design that can be
used for more than one article of manufacture. To achieve such a latitude of construction, practitioners some-
times added to the title a phrase such as "or similar article." For example, the title of Exhibit 9-4 reads "Dial

Top-Housing for Telephone Handset or Similar Article." The Patent Office allows use of language such as "or
the like" or "or similar article" for the environment of the article, but not the article per se. Thus an acceptable
title is "Door For Cabinets, Houses, or the Like" while the title "Door or the Like" is unacceptable and the claim
would be rejected under 35 U.S.C. § 112, second paragraph. [FN41]
The language of the title and the claim must correspond. [FN42]
In the illustrative example of Exhibit 9-2, the title describes the use of the article as a "Photograph Display."
While the title of the corresponding utility patent describes the structure of the same article as a "Magnetically
Supported Display," the former title of "Photograph Display" is more appropriate for the design patent, because
it is the name by which the article would be generally known and used by the public, thereby allowing the public
to identify the subject of the design patent more easily.
For computer-generated icons, a title like "computer icon" or "icon" is unacceptable. On the other hand, the
following titles are acceptable: "computer screen with an icon;" "display panel with a computer icon"; "portion
of a computer screen with an icon image"; and "portion of a monitor displayed with a computer icon image."
[FN43]
*9-13 § 9.2.1.2 Description
A brief description of each figure is required for design patents. The description should describe the type of
views shown in the drawings, as previously discussed in chapter 5. The type of view, for example, perspective,
top plan, and side elevation, must be specified for each drawing.
No written description, other than the description of the drawings, is ordinarily required in a design patent.
[FN44] It is not necessary to describe by words the appearance of an object that is perceived immediately from
its drawing. Consequently, the use of descriptive words in a design patent would serve to confuse rather than en-
lighten the public. Any verbal description should be kept to a minimum or eliminated entirely from the specific-
ation.
However, in certain situations, statements are permissible in the written description when necessary to clari-
fy the subject of the drawings. The following types of statements are permissible: [FN45]
• A description of the appearance of any portion of the claimed design that is not illustrated in the draw-
ings. This includes language that disclaims portions of the article not shown in the drawing as forming no
part of the claimed design.
• A statement that indicates that any broken-line illustration in the drawing disclosure is not a part of
the design sought to be patented.
• A description denoting the nature and environmental use of the claimed design in situations where an
appropriate title cannot satisfy this requirement.
• A "characteristic" feature statement describing a particular novel or nonobvious feature of the claimed
design.
*9-14 The characteristic feature statement can be used to limit the scope of the claim to specific aspects of
the design and not the design as a whole. [FN46] Consequently, it should be used only when the examiner will
not permit a claim on the whole design. The following language should be used: "The characteristic feature of
the design resides in [brief but accurate description]." [FN47] For an application directed to a computer-gener-
ated icon it is recommended that there be included a characteristic statement that describes the claimed subject
matter as a computer-generated icon embodied in a computer screen, monitor, other display panel, or portion

thereof. Examiners look for it. [FN48]
If environmental structures are shown (by the use of broken lines as explained below), they must be clearly
designated as the environment in the specification. [FN49] The following statement is used to describe the envir-
onmental structures in the drawing: "The broken lines showing [name of structure] are for illustrative purposes
only and form no part of the claimed design." [FN50] Such a statement is used in the description of Figure 1 of
Exhibit 9-4.
In certain situations, discussed below, multiple embodiments of a design invention can be presented in the
drawings of a single design patent. In that case, the specification should make it clear that multiple embodiments
are disclosed and should particularize the differences between each embodiment. [FN51] Multiple embodiments
are presented in Exhibit 9-2.
*9-15 Three types of statements are not permissible in the specification: [FN52]
1. A disclaimer statement directed to any portion of the claimed design that is shown in solid lines in
the drawings.
2. Statements which describe or suggest modification of the claimed design which are not illustrated in
the drawing disclosure.
3. Statements describing matters which are constructions unrelated to the design.
§ 9.2.1.3 Claim
A design patent contains only a single claim, drafted in formal terms, claiming the ornamental design for the
article shown. [FN53] The claim should read: "The ornamental design for a [insert name of article as specified in
the title] as shown." When there is properly included written descriptive matter in the specification, the words
"as shown" should be replaced with the words "as shown and described." [FN54]
Even if multiple embodiments of a design are shown in the drawings, it is not necessary to assert additional
claims. [FN55]
Since only a single claim is allowed, it becomes difficult to claim the design configuration of several similar
articles that are not patentably distinct over one another. In that situation, the claim can be properly extended to
cover several articles. For example, to claim a design that can be applied to a group of associated items (such as
surface ornamentation on a set of dishes), the applicant can draft the claim to cover the more generic form of the
articles or simply state in the specification that the design can be used on other articles. It *9-16 is not necessary
to obtain separate design patents for each object within the set of articles. [FN56] This is allowed on the follow-
ing rationale: "The principal value of many of the most beautiful designs resides exactly in the adaptability of
the design to several forms of articles." [FN57] For example, to claim a design on saucers, dishes, cups, and sim-
ilar items that are made of glass, the claim could read "the ornamental design for a glass article as shown." Sim-
ilarly, "Handle for an article of flatware" could claim the design for use on spoons, forks, and knives shown in
Exhibit 9-5.
[FN36]. M.P.E.P. § 1503.01.
[FN37]. Id.; see also 37 C.F.R. § 1.153(a) ("the title of the design must designate the particular article").

[FN38]. Ex parte Root, 7 U.S.P.Q. 311 (Comm'r Pat. 1930).
[FN39]. M.P.E.P. § 1503.01.
[FN40]. M.P.E.P. §§ 1503.01 and 1504.01(b).
[FN41]. M.P.E.P. § 1503.01.
[FN42]. Id.
11380 (Mar. 20, 1996); PTO Notice on Design Patent Applications for Computer-Generated Icons, Pat. Trade-
mark & Copyright J. (BNA) (Mar. 21, 1996).
[FN44]. 37 C.F.R. § 1.153(a).
[FN45]. M.P.E.P. § 1503.01.
[FN46]. McGrady v. Aspenglas Corp., 487 F. Supp. 859, 208 U.S.P.Q. 242 (S.D.N.Y. 1980).
[FN47]. M.P.E.P. § 1503.01.
11,380 (Mar. 20, 1996); PTO Notice on Design Patent Applications for Computer-Generated Icons, Pat. Trade-
[FN49]. M.P.E.P. § 1503.02.
[FN50]. Id.
[FN51]. M.P.E.P. § 1504.05.
[FN52]. M.P.E.P. § 1503.01.
[FN53]. 37 C.F.R. § 1.153.
[FN54]. M.P.E.P. § 1503.01.
[FN55]. In re Rubinfield, 270 F.2d 391, 123 U.S.P.Q. 210 (C.C.P.A. 1959).
[FN56]. Ex parte Andrews, 1917 Dec. Comm'r Pat. 13, 234 Off. Gaz. Pat. Office 373 (Comm'r Pat. 1917).
[FN57]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

§ 9.3 Drawings
*9-16 § 9.3.1 Unitary Design Concept
In general, the drawings of a design patent can present multiple embodiments of a design. [FN58] The
C.C.P.A. rejected the argument that the singular form of the language of 35 U.S.C. § 171, which grants design
patents only for "an article of manufacture" (emphasis added), should be judicially construed to signify that only
a single article can be presented in a design patent, not a plurality of articles. [FN59]
Under the unitary design concept rule, multiple articles or embodiments of a design can be shown in a single
application if (1) the articles present a unitary design concept and (2) the designs are not sufficiently distinct
from each other to allow separate patents to issue. [FN60] For example, two book-*9-17 ends representing the
head and tail of a dog form a unitary design concept even though they are separate objects. If either book-end
were missing, the complete effect of the design--that of a dog with an excessively long body--would be lost.
Similarly, the individual letters of a complete type set can be shown in a single application (Exhibit 9-6), since
they are part of a unitary design concept.
The drawings cannot present independent or distinct designs. [FN61] Designs are independent if there is no
apparent relationship between the two or more subjects shown in the drawings, that is, they are unconnected in
both design and operation. For example, a pair of eyeglasses and a door handle, or a bicycle and a camera, are
unconnected in either design or operation. Designs are distinct if the two or more subjects presented, although
related, are patentably distinct (novel and nonobvious) over each other. For example, the alternative embodi-
ments of the photograph display that are presented in Exhibit 9-2 are not patentably distinct from each other.
However, a combination of segregable parts that form patentably distinct inventions cannot be claimed in a
single design patent. [FN62] The only way to protect the distinctive design of each part is to file separate design
patent applications for each segregable part. [FN63]
[FN58]. In re Rubinfield, 270 F.2d 391, 123 U.S.P.Q. 210 (C.C.P.A. 1959), cert. denied, 362 U.S. 903 (1960).
[FN59]. Id.
[FN60]. M.P.E.P. § 1504.05. These provisions are not in the 1995 versions of the M.P.E.P. Thus it is uncertain if
the Patent Office will continue to follow this guideline.
[FN61]. Id.
[FN62]. Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 U.S.P.Q. 562 (D.D.C. 1965).
[FN63]. Ex parte Sanford, 1914 Dec. Comm'r Pat. 69 (Comm'r Pat. 1914).

END OF DOCUMENT


Jeffrey G. Sheldon

§ 9.3 Drawings
*9-17 § 9.3.2 Requirements for Adequate Drawings
The actual article embodying the design must be shown in the drawings. The drawings cannot merely show
an abstract design theme that is separate and apart from the particular article to which the ornamentation is ap-
plied. [FN64] For example, if the surface ornamentation on a bathing cap is claimed, the *9-18 drawings must
present an actual bathing cap bearing the claimed design. To emphasize that it is the surface ornamentation and
not the cap that is claimed, broken lines can be used to outline the cap itself and solid lines used to outline the
surface ornamentation on the cap. [FN65] The broken lines of Exhibit 9-4 signify the environment of the dial
top-housing.
It is important that the drawings show all the external features of the claimed design. If the whole exterior or
all of the surface ornamentation of the article is not shown in the drawings, the disclosure can be inadequate.
[FN66] Design patents protect the distinctive appearance of the whole article of manufacture, not the appearance
of dissected individual elements of a design or article. [FN67] For example, a television receiver design patent
was declared invalid because it did not contain any drawings of the back of the receiver. [FN68] The court found
the disclosure inadequate because (1) it was necessary to reveal the design of the back of the TV set for a com-
plete disclosure of the whole receiver and (2) the complete aesthetic design of the receiver would remain un-
known until a specific form of back panel was shown. The fact that the back of a television receiver is unimport-
ant because it is not seen in advertisements or in the home was found to be irrelevant to the completeness of the
disclosure. Nor did the court find persuasive the argument that the back of the set need not be disclosed because
it was unornamented. [FN69]
The adequacy of the disclosure of the drawings is determined also by reference to the scope of the invention
that is claimed. [FN70] In the television set case, the patent claimed an ornamental design for "television receiv-
ers." Consequently, *9-19 the whole receiver had to be shown in the drawings. Drawings that showed only the
front, top, and sides of the receiver but not the back were deemed inadequate, since the design for the whole
television receiver was claimed. Thus, the breadth of the disclosure of the drawings must match the breadth of
the claimed design.
The lesson learned from this case is that it is better to have too many than too few drawings in the patent ap-
plication. It is better to spend a few extra dollars and have too many drawings than to lose the value of a patent
that is held invalid because in the name of economy a sheet of drawings was not ordered. Note the number of
drawings shown in the illustrative example of Exhibit 9-2. A total of seven drawings are shown for the square
design and five for the rectangular embodiment. Similarly, Exhibit 9-7 shows numerous views of the claimed
design.
A design patent will not be invalidated for failure to show sides of an article that are identical to sides
shown. It is not necessary to disclose these views if the symmetry of the article can be deduced from the views

shown. [FN71] In Exhibit 9-2, Figure 4 shows a side view of the claimed design. Since the article is symmetrical
about this view, it was necessary to show only one side. However, the top and bottom plan views of the article
of Exhibit 9-2 are not symmetrical, that is, the top surface is beveled and the bottom is flat. Consequently, it was
necessary to show both the top and bottom of the article.
[FN64]. Ex parte Guinzburg, 1925 Dec. Comm'r Pat. 159 (Comm'r Pat. 1925).
[FN65]. Id.
[FN66]. Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 U.S.P.Q. 413 (D. Del. 1961).
[FN67]. Id.
[FN68]. Id.
[FN69]. Id.
[FN70]. Id.
[FN71]. Moore v. Stewart, 600 F. Supp. 655, 225 U.S.P.Q. 313 (W.D. Ark. 1985).
END OF DOCUMENT


Jeffrey G. Sheldon

§ 9.3 Drawings
*9-19 § 9.3.3 Drawing the Invention
As with utility patents, perspective, plan, and elevation views are used to illustrate the invention. Since the
drawings form the entire disclosure of the patent, they must contain a sufficient number of views to constitute a
complete disclosure. *9-20[ FN72] Normally, drawing figures should be provided showing the article, at a min-
imum, from each of its six normal views. Additional perspective views should also be provided if helpful in dis-
closing the design. [FN73]
However, views that are merely duplicative of other views, and views that are plain and include no orna-
mentality, may be omitted if the specification makes this clear. Thus if the left and right sides of an article are
identical or symmetrical, only one side needs to be shown in the drawings, and a statement can be included in
the description that the other sided is identical or symmetrical. [FN74] Accordingly, single views of the orna-
mental design of the glass panel in Exhibit 9-3 and the scarf of Exhibit 9-8 are sufficient disclosure.
Likewise, if an article has a plain bottom, a view of the bottom can be omitted if the description includes a
statement that the bottom is plain and unornamented. [FN75] In fact, it is critical to draw features of the article
that are not part of the invention in dashed lines as shown in Exhibit 9-4 and describe them as being "for illus-
trative purposes only and forming no part of the claimed design." Otherwise, an infringer can avoid liability by
not incorporating into his design the nonornamental features shown in the drawings. [FN75.1]
Sectional views are not generally illustrated in a design patent. Design patents concern the subject matter of
the exterior of the structure and not its interior. Consequently, sectional views presented for the purpose of
showing functional features of the interior of the article are irrelevant and *9-21 rejected. [FN76] However, they
are allowed in unusual cases where a sectional view brings out the claimed design more clearly, [FN77] such as
to show the cross-section of the flatware handle of Exhibit 9-5.
For computer-generated icons, the Patent Office accepted the view that a single drawing may be insufficient
to show the claimed invention. The Patent Office requires a sufficient number of views to constitute a complete
disclosure of the appearance of the monitor, display panel, or the like. [FN78] However, the central processing
unit that generates the icons need not be shown. [FN79]
Broken lines are used to disclose the environment related to the claimed design and to define the bounds of
the claim. Thus portions of an article that do not contribute to the patentability of the design, that is, do not add
novelty to the article or do not render the design nonobvious, should be shown in broken lines. [FN80]
[FN72]. 37 C.F.R. § 1.152.

[FN73]. M.P.E.P. § 1503.02.
[FN74]. Id.
[FN75]. Id.
[FN75.1]. Door-Master Corp. v. Yorktowne, Inc., 258 F.3d 1308, 59 U.S.P.Q.2d 1472 (Fed. Cir. 2001) (rear fea-
tures of door not shown when door is closed are part of design since not shown in dashed lines, and thus there is
no infringement because allegedly infringing design did not include the rear features).
[FN76]. M.P.E.P. § 1503.02.
[FN77]. Ex parte Lohman, 1912 Dec. Comm'r Pat. 336, 1184 Off. Gaz. Pat. Office 287 (Comm'r Pat. 1912).
11380 (Mar. 20, 1996); PTO Notice on Design Patent Applications for Computer-Generated Icons, Pat. Trade-
[FN79]. Id.
[FN80]. Saidman, Design Patentees: Don't Get Unglued by Elmer, or the Single Most Important Thing to Know
About the Preparation of Design Patent Applications, 78 J. PAT. & TRADEMARK OFF. SOC'Y 311 (1996).
END OF DOCUMENT


Jeffrey G. Sheldon

§ 9.3 Drawings
*9-21 § 9.3.4 Formal Requirements
The drawings must conform to the same formal rules defined for utility patents. [FN81] They must meet
identical requirements regarding the type and size of paper, margins, scale of illustrations, and arrangement of
views. The necessity for design patent drawings to be well-executed, clear, *9-22 and complete cannot be over-
emphasized, since the drawing constitutes the entire disclosure. [FN82]
The ornamental appearance of an article includes any indicia, lettering, or other ornamentation. [FN83]
However, surface indicia per se are not proper subject matter for a design patent; they must be embodied in an
article of manufacture. The presence of surface indicia in a design drawing will normally be considered prima
facie evidence that the inventor considered the surface indicia shown in the drawing to be an integral part of the
claimed design. [FN84]
Black and white photographs are permitted in design patent applications. Color photographs and color draw-
ings are not permitted in design applications in the absence of a granted petition pursuant to 37 C.F.R. § 1.84(b).
Photographs and ink drawings cannot be combined as formal drawings in one application. Photographs are not
allowed to disclose environmental structure. [FN85] Exhibit 9-8 shows a photograph of a design claimed in a
patent for scarves.
[FN81]. 37 C.F.R. § 1.152.
[FN82]. M.P.E.P. § 1503.02.
[FN83]. Id.
[FN84]. Id.
[FN85]. 37 C.F.R. § 1.152.
END OF DOCUMENT


Jeffrey G. Sheldon

§ 9.3 Drawings
*9-22 § 9.3.5 Illustrative Styles and Symbols
The drawings of a design patent are governed by the same illustrative styles that are used for utility patents.
As with utility patents, the drawings should be appropriately shaded to clearly show the character and contour of
the surfaces represented. [FN86] Shading is particularly important when showing three-dimensional articles or
when it is necessary to delineate plain, concave, convex, raised, or depressed surfaces, or to distinguish between
open and closed areas of the design. [FN87]
*9-23 The ornamental design that is claimed must be shown in solid lines. However, broken lines can be
used to depict the unclaimed environment surrounding the claimed design. These lines allow the claimed design
to be distinguished from the environment that is not part of the claims. [FN88] The environmental structure
should be shown only when the nature and intended application of the claimed design cannot be otherwise indic-
ated adequately by a reasonably concise title or statement in the specifications. [FN89] Exhibit 9-4 shows a
design patent claiming the design of a telephone dial top-housing; the unclaimed structure of the whole tele-
phone is shown in broken lines. Similarly, the broken lines of Exhibit 9-5 also show the unclaimed environment.
Environmental broken lines should not obscure or confuse the appearance of the claimed design. They
should be drawn thinner than the lines used to depict the claimed design. In addition, broken lines should not in-
trude upon or cross the design of the claimed article. If the broken lines must necessarily cross or intrude upon
the lines of the claimed design, the illustration should be included as a separate figure. [FN90]
[FN86]. 37 C.F.R. § 1.152.
[FN87]. M.P.E.P. § 1503.02.
[FN88]. Id.
[FN89]. Id.
[FN90]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

*9-23 § 9.4 Information Disclosure Statement
As with utility patents, the applicant for a design patent has a duty to disclose to the Patent Office all prior
art references that negate the novelty or nonobviousness of the design and that present potential statutory bars.
Both 35 U.S.C. §§ 102 and 103 apply with full force to design patents. These disclosure requirements are essen-
tially the same as those for utility patents as described in chapter 8.
*9-24 However, the definitions of novelty and nonobviousness for design patents are different for design
patents than for utility patents. Claiming priority under 35 U.S.C. § 119, and the time for a bar under 35 U.S.C.
§ 102(d), is six months rather than twelve months. [FN91] These differences affect the scope of the prior art that
needs to be cited in an information disclosure statement, and thus are discussed below.
[FN91]. 35 U.S.C. § 172.
PLIREF-PATAPP s 9.4
END OF DOCUMENT


Jeffrey G. Sheldon

§ 9.4 Information Disclosure Statement
*9-24 § 9.4.1 Novelty
For a design to be considered novel, the ordinary observer must find that the overall appearance of the
design at issue is different from any single prior art design. [FN92] Unlike the novelty test for utility patents, the
structure or function of the article is not considered, and the inventive novelty of the design must reside in the
article's external shape or surface ornamentation. [FN93] The design is not novel if a single prior art reference
shows a substantially identical design. [FN94] Prior art references cannot be combined to determine the question
of novelty.
[FN92]. In re Bartlett, 300 F.2d 942, 133 U.S.P.Q. 204 (C.C.P.A. 1962).
[FN93]. M.P.E.P. § 1504.
[FN94]. In re Bartlett, 300 F.2d 942, 133 U.S.P.Q. 204 (C.C.P.A. 1962).
END OF DOCUMENT


Jeffrey G. Sheldon

*9-24 § 9.4.2 Nonobviousness
For a design to be considered nonobvious, the appearance of the claimed design cannot be an obvious deriv-
ation of prior art references to the ordinary designer. [FN95] The ordinary designer is a designer of ordinary
capabilities who designs articles of the type presented in the application. [FN96] Prior art references can be
combined to determine the question of obviousness if the references are "so related that the *9-25 appearance of
certain ornamental features in the one would suggest the application of those features in the other." [FN97]
[FN95]. Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 U.S.P.Q. 97 (Fed. Cir. 1984).
[FN96]. Id. at 1443; In re Nalbandian, 661 F.2d 1214, 1216 (C.C.P.A. 1981).
[FN97]. In re Boldt, 344 F.2d 990, 991 (C.C.P.A. 1965).
END OF DOCUMENT


Jeffrey G. Sheldon

*9-25 § 9.4.3 Scope of Prior Art
The scope of the prior art that negates the novelty or nonobviousness of a design is much broader than that
for utility patents. In utility patents, the scope of the search extends to cover only those analogous arts that re-
flect the essential function or utility of the invention. For example, a tea mixer and a concrete mixer are of ana-
logous arts, since the utility of both lies in their ability to perform the task of mixing. [FN98]
However, in design cases, the definition of analogous art is much broader than for utility applications. In the
design cases, the definition encompasses any art that is so related that the appearance of certain ornamental fea-
tures in that art would suggest the application of those features in the art at issue. [FN99] In a design patent, any
article with a substantially similar appearance to that of the claimed design is prior art, regardless of the use or
function of the article, since the use of the article has no bearing on its patentability as a design. [FN100] Thus, a
wallpaper design can anticipate the design on a piece of crockery. [FN101] Similarly, the ornamental design of
the glass panel of Exhibit 9-3 can be anticipated by the same ornamental design placed on the door of an oven or
other article.
Consequently, the scope of art disclosed in an information disclosure statement for a design patent is very
broad. It is recommended that, at the very least, all mechanical classes encompassing inventions of the same
general type be disclosed. [FN102] Both design and utility patents should be *9-26 disclosed, since either type
of patent can anticipate the claimed design. Similarly, information in catalogs and trade journals should also be
disclosed. [FN103]
[FN98]. M.P.E.P. § 904.01(c).
[FN99]. In re Boldt, 344 F.2d 990 (C.C.P.A. 1965).
[FN100]. M.P.E.P. § 1504.
[FN101]. In re Glavas, 230 F.2d 447 (C.C.P.A. 1956).
[FN102]. M.P.E.P. § 1504.
[FN103]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

*9-26 § 9.5 Expedited Examination
It is possible to obtain expedited examination of design applications. The procedure is available to all ap-
plicants who first conduct a preliminary examination search and file a request for expedited treatment. The re-
quirements for such a request are (1) a statement that a preexamination search was conducted, which must also
indicate the field of search; (2) an information disclosure statement in compliance with 37 C.F.R. § 1.98, (3) the
fee specified in 37 C.F.R. § 1.17, and (4) formal drawings. [FN104] A form for requesting expedited examina-
tion of a design application is shown as Exhibit 9-9.
[FN104]. 37 C.F.R. § 1.155.
PLIREF-PATAPP s 9.5
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*9EX-1 Exhibit 9-1

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Jeffrey G. Sheldon

*9EX-3 Exhibit 9-1A: Assignment for Design Patent
ASSIGNMENT
WHEREAS, I, ______________________________ residing at ________________________________________
have invented certain new, original, and ornamental design disclosed in an application for United States Letters Patent
titled _________________________, and executed by me, on even date herewith.
AND WHEREAS ____________________, a __________ corporation (hereafter, together with any successors, legal
representatives of assign thereof, called "Assignee"), wants to acquire the entire right, title and interest in and to said im-
provements and application.
and interest in and to said design, and said application and all divisions, substitutions, continuations and continuations-
in-part thereof, and all United States Letters Patents which may be granted thereon and all reissues and extensions there-
of, and all priority rights under the International Convention for the Protection of Industrial Property for every member
country, and all applications for patents (including related rights such as utility-model registrations, inventor's certific-
ates, and the like) heretofore or hereafter filed for said design in any foreign countries, and all patents (including all ex-
tensions, renewals and reissues thereof) granted for said design in any foreign countries; and I hereby authorize and re-
quest the United States Commissioner of Patents and Trademarks, and any officials of foreign countries whose duty it is
to issue patents on applications as aforesaid, to issue all patents for said design to Assignee in accordance with the terms
of this assignment;
said design, and testify in any legal proceeding, sign all lawful papers, execute all divisional, continuation, continuations-
in-part, substitute and reissue applications, make all rightful oaths and generally do everything possible to aid Assignee
to obtain and enforce proper patent protection for said design in all countries.
IN TESTIMONY WHEREOF, I hereunto set my hand this _____ day of ________, 19 ___.
____________________
STATE OF )
) SS.
COUNTY OF )

On __________, 19 ___, before the undersigned, a Notary Public for the State and County aforesaid, personally ap-
peared __________, known to me or proved to me on the basis of satisfactory evidence to be the person whose name is
subscribed to the above assignment, and acknowledged that he executed the same.
_______________
Notary Public

END OF DOCUMENT


Jeffrey G. Sheldon

*9EX-5 Exhibit 9-2: Photograph Display Design Patent
United States Patent [19] [11] Patent Number: Des. 306,377

Cotutsca [45] Date of Patent: ** Mar. 6, 1990
---------------------------------------------------------------
[54] PHOTOGRAPH DISPLAY
[76] Inventor: Peter Cotutsca, 1637 W. El Segundo

Blvd., Gardena, Calif. 90249
[**] Term: 14 Years
[21] Appl. No.: 320,560
[22] Filed: Mar. 13, 1989
[52] U.S. Cl.......................................... D6/301; D6/470; D11/131

[58] Field of Search D6/300, 310, 301, 470; D11/131, 184, 157; 40/661, 152.1;
D20/10
D. 226,797 5/1973 Schneider ...... D6/301

D. 227,001 5/1973 Dembar ......... D6/301
D. 227,051 6/1973 Snyder ......... D6/301
2,702,191 2/1955 Lemelson ...... 273/103
3,609,606 9/1971 Podesto ....... 335/209
3,774,332 11/1973 Schneider .... D6/301 X
3,955,315 5/1976 Goodman ........ 46/238

4,414,775 11/1983 Jensen ......... 46/241

4,432,151 2/1984 Morris ......... 40/661
4,568,301 2/1986 Hawley, Jr..... 446/134
OTHER PUBLICATIONS
McCoy Coop Co. ©1979 2nd p. 9; Pedestals on center of page.
Popular Science, Apr. 1988, p. 94, illustrates magnetic attraction suspending a globe, with a position sensor below
the sphere regulating power to the overhanding electromagnet.
Primary Examiner-Carmen H. Vales-Lado
Attorney, Agent, or Firm-Sheldon & Mak
[57] CLAIM
The ornamental design for a photograph display, as shown and described.
DESCRIPTION
FIG. 1 is a front elevational view of a photograph display showing my new design;
FIG. 2 is a top plan view thereof;
FIG. 3 is a bottom plan view thereof;
FIG. 4 is a side elevational view thereof;
FIG. 5 is a top plan view of FIG. 4;
FIG. 7 is an end elevational view thereof;
FIG. 8 is a perspective view of an alternate embodiment of the photograph display shown in FIG. 1;
FIG. 9 is a top plan view thereof;
FIG. 11 is a front elevational view; and
FIG. 12 is a side elevational view thereof.


END OF DOCUMENT


Jeffrey G. Sheldon

*9EX-9 Exhibit 9-3: Decorative Glass Panel Design Patent

Shaffer [45] Date of Patent: ** Jan. 2, 1990
---------------------------------------------------------------
[54] DECORATIVE GLASS PANEL
[75] Inventor: B. Jeremiah Shaffer, Worthington,

Ohio
[73] Assignee: Pease Industries, Inc., Fairfield, Ohio
[**] Term: 14 Years
[21] Appl. No.: 882,819
[22] Filed: Jul. 7, 1986
[52] U.S. Cl.............................................. D25/103

[58] Field of Search .. D25/103-111, D25/138, 157-163; 428/38, 130
329,771 11/1885 Pease ..... D25/160 X

1,490,407 4/1924 Vallely ... D25/103 X
1,524,998 2/1925 Russell ... D25/103 X
3,420,730 1/1969 Ellefson .. D25/103 X
Primary Examiner-A. Hugo Word

Attorney, Agent, or Firm-Biebel, French & Nauman
[57] CLAIM
The ornamental design for a decorative glass panel, as shown and described.
DESCRIPTION
The FIGURE is a front elevational view of a decorative glass panel embodying my design. The glass panel is of con-
ventional thickness, and the rear is like the front shown.

END OF DOCUMENT


Jeffrey G. Sheldon

*9EX-11 Exhibit 9-4: Dial Top-Housing for Telephone Handset or Similar Article Design Patent

Wong et al. [45] Date of Patent: ** Apr. 2, 1991
---------------------------------------------------------------
[54] DIAL TOP-HOUSING FOR TELEPHONE HANDSET OR SIMILAR ARTICLE
[75] Inventors: Allen Wong, Streamwood; Leonid

Sorea, Lincolnwood; Phillip E.
Lindeman, Roselle, all of Ill.
[73] Assignee: Motorola Inc., Schaumburg, Ill.
[**] Term: 14 Years
[21] Appl. No.: 438,914
[22] Filed: Nov. 17, 1989
[52] U.S. Cl........................................ D14/247; D14/138

[58] Field of Search .. D14/138, 147, 148; 379/58, 59, 60; 455/89, 90
D. 246,043 10/1977 Taylor .......... D14/53

D. 246,103 10/1990 Taylor .......... D14/53
D. 248,758 8/1978 Krolopp ......... D14/53
D. 260,518 9/1981 Larson .......... D14/53
D. 270,835 10/1983 Taylor .......... D14/64

D. 271,491 11/1983 Taylor .......... D14/76

D. 286,778 11/1986 Beaumont ........ D14/64
D. 291,199 8/1987 Watanabe ....... D14/147
D. 292,578 11/1987 Taylor .......... D14/62
D. 292,920 11/1987 Taylor .......... D14/62
D. 295,973 5/1988 Nagele .......... D14/66
D. 295,975 5/1988 Taylor et al..... D14/64
D. 299,136 12/1988 Taylor .......... D14/63
D. 304,830 11/1989 Sutoh .......... D14/147
D. 304,939 12/1989 Sutoh .......... D14/138
D. 306,441 3/1990 Taylor et al.... D14/138
OTHER PUBLICATIONS
NEC M3500 Cellular Mobile Phone; Ad at paper 6, on 5/5/86.
General Electric CF200 TM Carphone; Pulished Oct. 1986/ECR 3350.
Primary Examiner-Horace B. Fay, Jr.
Attorney, Agent, or Firm-Rolland R. Hackbart
[57] CLAIM
The ornamental design for a dial top-housing panel for telephone handset or similar article.
DESCRIPTION
FIG. 1 is a rear, top, and right side perspective view of an operative dial top-housing panel for a handset telephone or
similar article showing my new design in full lines with the broken line showing of environmental association matter be-
ing for illustrative purposes only and forming no part of the claimed design;
FIG. 2 is a left side elevational view of the dial top-housing panel in full lines, and the environmental matter shown
in broken lines; and;
FIG. 3 is a front elevational view of the dial top-housing panel shown in full lines and the environmental matter
shown in broken lines.

END OF DOCUMENT


Jeffrey G. Sheldon

*9EX-15 Exhibit 9-5: Handle for an Article of Flatware Design Patent

Robinson et al. [45] Date of Patent: ** Jan. 2, 1990
---------------------------------------------------------------
[54] HANDLE FOR AN ARTICLE OF FLATWARE
[75] Inventors: William W. Robinson, Rowayton,

Conn.; Clark L. Lofgren, Taunton,
Mass.
[73] Assignee: Scientific Silver Service Corporation,

Hamden, Conn.
[**] Term: 14 Years
[21] Appl. No.: 83,303
[22] Filed: Aug. 10, 1987
[52] U.S. Cl................ D7/150

[58] Field of Search .. D7/137, 150
D. 191,010 8/1961 Hayes .. D7/150
OTHER PUBLICATIONS
Jeweler's Circular-Keystone, 3rd down from top r.

Tableware International, Aug., 1985, p. 70, Panel #1, top left, "Galleria" from Wilkens-Stainless Steel.
Tableware International, Aug., 1986, p. 17, middle r. panel, "Octa" Pattern Deriving from the Obelisk.
Primary Examiner-Winifred E. Herrmann
Attorney, Agent, or Firm-I. Stephen Samuels
[57] CLAIM
The ornamental design for a handle for an article of flatware, as shown and described.
DESCRIPTION
FIG. 1 is a top plan view of a handle for an article of flatware showing our new design.
FIG. 2 is a left side elevational view thereof.
FIG. 3 is a right side elevational view thereof.
FIG. 4 is a bottom plan view thereof.
FIG. 5 is a sectional view taken along line 5-5 on FIG. 1.
The broken line showing of the fork tines in FIGS. I-4 is illustrative of environmental structure only and forms no
part of the claimed design.

END OF DOCUMENT


Jeffrey G. Sheldon

*9EX-17 Exhibit 9-6: Font of Type Design Patent

Wendling [45] Date of Patent: ** Jan. 9, 1990
---------------------------------------------------------------
[54] FONT OF TYPE
[76] Inventor: Leonard W. Wendling, #161 River

Forest Village, Punta Gorda, Fla.
33950
[**] Term: 14 Years
[21] Appl. No.: 318,947
[22] Filed: Mar. 6, 1989
[52] U.S. Cl.......................... D18/24; D18/29; D18/30; 101/399

[58] Field of Search .. D18/24, 25, 26, 27, D18/28, 29, 30, 31, 32, 33
D. 11,955 8/1880 Zeese ............ D18/29

D. 12,111 1/1881 Rogers ........... D18/29
D. 12,492 9/1881 Giesecke ......... D18/29
D. 12,493 9/1881 Giesecke ......... D18/29
D. 14,885 3/1884 Giesecke ......... D18/29
D. 16,643 4/1886 Ruthven .......... D18/29
D. 39,466 8/1908 Robinson ......... D18/29

D. 39,467 8/1908 Robinson ......... D18/29

D. 39,976 5/1909 McComb ........... D18/29
D. 51,373 10/1917 Gaunt ............ D18/24
D. 51,374 10/1917 Gaunt ............ D18/24
D. 97,155 10/1935 Chernow .......... D18/24
D. 97,156 10/1935 Chernow .......... D18/24
D. 97,432 11/1935 Chernow .......... D18/24
D. 97,840 12/1935 Chernow .......... D18/24
D. 117,443 11/1937 Bickner .......... D18/24
D. 144,979 6/1946 Owen ............. D18/29
D. 212,408 10/1968 Fishback ......... D18/29
D. 221,718 8/1971 Fishback ......... D18/29
3,444,319 5/1969 Artzt et al....... D18/26
4,315,748 2/1982 Frascara et al.... D18/29
OTHER PUBLICATIONS
Alphabet Thesaurus, vol. 2; E. Rondthaler, Editor; p. 861, Example 'XX 1472 and 'XX 0491-1; p. 685 ex. 'XX
1472-4; Reinhold Publishing Corp; copyright 1960; 2nd printing 1970.
Letraset-Graphics Art Materials Reference Manual 1983; p. 134 Example-Baby Teeth; p. 76 Example Futura Black;
p. 54 Example Compacts Bold Outline.
Primary Examiner-James R. Largen
Assistant Examiner-Cathy Anne MacCormac
Attorney, Agent, or Firm-Frank A. Lukasik
[57] CLAIM
The ornamental design for a font of type, as shown and described.
DESCRIPTION
The FIGURE is a face view of a font of type showing my new design.

END OF DOCUMENT


Jeffrey G. Sheldon

*9EX-19 Exhibit 9-7: Automobile Design Patent

Doyle et al. [45] Date of Patent: ** Jan. 23, 1990
----------------------------------------------------------------
[54] AUTOMOBILE
[75] Inventors: David P. Doyle, Mission Viejo, Calif.;

Tokno Fukuichi, Toyota, Japan
[73] Assignee: Toyota Jidosha Kabashild Kaisha,

Toyota, Japan
[**] Term: 14 Years
[21] Appl. No.: 138,012
[22] Filed: Dec. 24, 1987
[52] U.S. Cl........................ D12/90

[58] Field of Search .. D12/90, 91; 296/185
D. 295,392 4/1988 Machida et al.... D12/90
OTHER PUBLICATIONS
Motor Trend, 1/86, pp. 36,39 & 41, Ford Aerostar & Toyota Van Respectively.

Motor Trend, 8/86, pp. 36 & 39, Pontiac Trans Sport.
Primary Examiner-James M. Gandy
Attorney, Agent, or Firm-Fred Flam
[57] CLAIM
The ornamental design for an automobile, as shown.
DESCRIPTION
FIG. 1 is a front perspective view of an automobile incorporating our new design;
FIG. 2 is a rear perspective view thereof;
FIG. 3 and 4 are, respectively, front and rear elevational views thereof;
FIG. 5 is a top plan view thereof; and
FIG. 6 is a left side elevational view thereof.

END OF DOCUMENT


Jeffrey G. Sheldon

*9EX-23 Exhibit 9-8: Scarf Design Patent

Gentilli [45] Date of Patent: ** Apr. 2, 1991
---------------------------------------------------------------
[54] SCARF
[75] Inventor: Bruno Gentilli, Come, Italy
[73] Assignee: S. T. Dupont, Paris, France
[**] Term: 14 Years
[21] Appl. No.: 86,654
[22] Filed: Aug. 17, 1987
[30] Foreign Application Priority Data
Mar. 2. 1987 [FR] France ............................................. 871172

[52] U.S. Cl..................................................... D5/16
[58] Field of Search .... D2/500, 502, 503, 507, D2/508; D5/48, 16, 32,
59, 63
D. 9,812 3/1877 Horan ....... D5/16

D. 10,207 9/1877 Horan ....... D5/16
D. 14,530 1/1884 Cochran ..... D5/32
D. 69,599 3/1926 Knight ...... D5/16

D. 124,080 12/1940 Schuessler .. D5/32

D. 161,135 12/1950 Seeman ...... D5/16
Primary Examiner-Louis S. Zarfas
Assistant Examiner-R. T. Seifert
Attorney, Agent, or Firm-Ladas & Party
[57] CLAIM
The ornamental design for a scarf, as shown.
DESCRIPTION
The single FIGURE is a top plan view of a scarf showing my new design, the opposite side being a mirror image.

END OF DOCUMENT


Jeffrey G. Sheldon

*9EX-25 Exhibit 9-9

END OF DOCUMENT

PLIREF-PATAPP § 9A.1.1 FOR EDUCATIONAL USE ONLY Page 1
How to Write Pat. Application s 9A.1.1
(Cite as: PLIREF-PATAPP s 9A.1.1)

Jeffrey G. Sheldon

Chapter 9A: Provisional Patent Applications
§ 9A.1 Introduction
*9A-2 § 9A.1.1 The Nature of Provisional Applications
In December 1994, the United States adopted legislation implementing various provisions of GATT
(General Agreement on Tariff and Trade). [FN1] Though not required under the GATT, the legislation included
provisions that created provisional patent applications. The provisional patent application was intended to
provide domestic applicants with an easy and less expensive entry into the patent system, and as a mechanism to
place domestic applicants on equal terms with foreign applicants with respect to the length of terms of issued
patents.
As discussed in this chapter, filing a provisional patent application has certain advantages and disadvantages
compared with filing a regular, nonprovisional application. Clients who are considering filing a provisional ap-
plication need to be advised to weigh these advantages and disadvantages carefully before filing a provisional
application. Exhibit 9A-1 is a sample notice that can be used to provide information about provisional patent ap-
plications to clients.
For the reasons detailed below, it is the author's opinion that provisional applications ordinarily should not
be used.
A provisional patent application is a document filed with the United States Patent and Trademark Office
that allows an inventor to establish a priority date against potential prior art, and to establish a priority date on
which subsequent United States and foreign patent applications can be based. The priority date can be main-
tained for up to one year from the provisional application's filing date. [FN2] Because provisional patent applic-
ations were established under *9A-335 U.S.C. § 111(b), they are also referred to as "section 111(b) applica-
tions." Regular, nonprovisional applications, the type of utility applications previously available in the United
States, are now referred to as "section 111(a) applications."
Advantageously, the governmental filing fees for provisional patent applications are substantially less than
the filing fees for regular, nonprovisional applications. Also advantageously, the priority term for a provisional
application does not affect the term of any patent which may issue based on an application taking priority from
the provisional application. [FN3] This aspect of provisional patent applications potentially places domestic ap-
plicants on equal terms with foreign applicants who file United States applications which take priority from na-
tional applications filed outside the United States.
A provisional application can remain pending for up to one year from its effective filing date with the Patent
and Trademark Office. No extensions are allowed, including by file wrapper continuation (FWC) applications.
After the one-year period, a provisional application is automatically abandoned and cannot be revived. [FN4]
The term of a provisional application is extended to the next business day if the one-year term ends on a Sat-
urday, Sunday, or holiday. [FN5]

It is not necessary that a regularly filed application be copending with a provisional application to claim the
benefit of priority from that application. The copendency requirement was eliminated by the American Inventors
Protection Act of 1999. It has been recommended by one author that provisional applications should be ex-
pressly abandoned upon their filing to maintain maximum flexibility for foreign filing purposes, since their pen-
dency is not needed for U.S. *9A-4 priority rights. [FN6] Otherwise, to obtain the benefit of the Paris Conven-
tion it is necessary that any foreign filing be effected within one year of the filing date of earliest filed, nonaban-
doned provisional application. [FN7] By abandoning the provisional application, the applicant retains the flexib-
ility of claiming priority from any of multiple provisional applications or the filing date of the first regular ap-
plication.
Two conditions must be met for a regular, nonprovisional patent application to take priority from a provi-
sional application, besides being filed within one year of the filing date of the provisional application. The two
conditions are that the regular application (a) must claim the benefit of the earlier filed provisional application,
and (b) must contain one or more claims which find support in the provisional application disclosure. [FN8] If
these conditions are satisfied, the later-filed, regular patent application is accorded an effective filing date of the
filing date of the provisional application.
A provisional application can be used to establish priority for a foreign patent application filed according to
the Paris Convention or the Patent Cooperation Treaty (PCT) and within one year of the filing date of the provi-
sional application. Obtaining an early filing date by prompt filing can be crucial to avoid the effects of various
patentability bars and potential prior art, to preserve the ability to pursue foreign patent protection, and, in an in-
terference, to be accorded senior party status. [FN9] The European Patent Office (EPO) has determined that a
provisional application gives rise to a priority date for a subsequent, normal national application. [FN10]
*9A-5 If additional disclosure is included in the section 111(a) application, priority of the provisional ap-
plication is limited to the common subject matter, as is the case with continuation-in-part applications.
Filing provisional applications can be appropriate, for example, if an inventor attempts to commercialize an
invention, and only if commercialization is successful, pursue patent protection. Another example would be the
filing of a provisional patent application before publication of an article about the invention to preserve priority,
and by claiming priority to the provisional application in a later-filed foreign application filed within one year of
the provisional application. In such a case, the inventor may preserve the ability to pursue foreign patent protec-
tion which otherwise would have been lost by public disclosure prior to the filing date of the foreign patent ap-
plication. The priority date of the provisional application can also be used to avoid the rejection of claims due to
patents whose filing dates (or any claimed priority dates) are after the provisional filing date. Further, the filing
of the provisional application provides the earliest possible filing date without shortening the twenty-year patent
term for any later-filed section 111(a) application which matures into a patent.
One or more provisional patent applications can be referenced for purposes of priority in a later, regular
nonprovisional domestic or foreign utility patent application for purposes of filing-date priority.
Provisional patent applications have many limitations. They cannot mature into a patent. They are examined
to make sure they comply with the filing requirements for provisional applications, [FN11] but they are not ex-
amined for patentability, and cannot be placed in an interference. Provisional applications cannot themselves
claim priority under 35 U.S.C. § 119 and § 120 of any earlier-filed domestic or foreign *9A-6 filed application,
nor can they claim the benefit of any earlier-filed provisional application. Provisional applications cannot serve
as a basis for a continuation or continuation-in-part patent application. Provisional patent applications cannot be
used to obtain any type of priority for design patents, because they are directed specifically to utility applica-

tions.
Priority is claimed in the same manner that references to earlier filed applications are made under section
120. Provisional applications are assigned for reference purposes a provisional "code" of "60" followed by a six-
digit number.
[FN1]. Uruguay Round Agreements Act (Pub. L. No. 103-465).
[FN2]. 35 U.S.C. § 111(b); 37 C.F.R. § 1.9(a)(2).
[FN3]. 35 U.S.C. § 154.
[FN4]. 37 C.F.R. § 1.139.
[FN5]. 35 U.S.C. § 119(e)(3).
[FN6]. Armitage, Robert A., Prior Art Patents, Published Applications for Patent Provisional Priority Practices
& Related Matters Arising from the American Inventors Protection Act of 1999, available at
<Rarmitage@Lilly.com>.
[FN7]. Article 4C(4) of the Paris Convention; see also Article 87.4 of the European Patent Convention.
[FN8]. 35 U.S.C. § 119(e); New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 63 U.S.P.Q.2d
1843 (Fed. Cir. 2002).
[FN9]. See § 1.5.1.
[FN10]. Official Journal of the EPO (OJ/EPO), No. 1-2/1996, at 81.
[FN11]. Claims are not required in provisional applications.
END OF DOCUMENT


Jeffrey G. Sheldon

*9A-6 § 9A.1.2 Conversion of Regular Applications
A regular filed section 111(a) nonprovisional application having a filing date after June 8, 1995, can be con-
verted to a provisional application within one year from its filing date. [FN12]
Conversion is done to take advantage of the fact that a provisional application's term is not counted toward
the twenty-year term of any patent claiming priority from the provisional application. Accordingly, it may be de-
cided subsequent to filing a regular application to convert the regular application to a provisional application in
order to increase the term of the patent that eventually issues.
If the section 111(a) application to be converted claims the benefit of a foreign application, a section 111(b)
domestic application, or a provisional application, conversion results in deletion of reference to those other fil-
ings, since a provisional application cannot claim priority from any other application. This can cause loss of an
important filing date.
A notice to send to clients regarding conversion of a regular application to a provisional application is

provided as Exhibit 9A-2.
[FN12]. 35 U.S.C. § 111(b)(6); 37 C.F.R. § 1.53(b)(2)(ii).
PLIREF-PATAPP s 9A.1.2
END OF DOCUMENT


Jeffrey G. Sheldon

*9A-7 § 9A.1.3 Secrecy
Filing of a provisional application is not a public disclosure. Unless a provisional application serves as a
basis for a claim of priority in a later-filed section 111(a) application, the provisional application remains secret
and public access is not permitted. However, provisional applications relied upon to claim the benefit of the pro-
visional filing date in a later-filed section 111(a) application becomes part of the public file and accessible if the
later-filed application matures into a patent.
END OF DOCUMENT


Jeffrey G. Sheldon

*9A-7 § 9A.1.4 Inventorship
A provisional application must be made or authorized by the inventors. [FN13] The cover sheet accompany-
ing the filing of a provisional application must identify the inventor(s). Exhibit 9A-3 is a copy of the cover
sheet.
Each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed
in the provisional application. [FN14] This departs from the requirements for a regular, nonprovisional applica-
tion where each inventor must have made a contribution to the subject matter of at least one claim in the applic-
ation. Accordingly, care should be exercised in deciding the scope of the subject matter of the disclosure. A
broadly written provisional disclosure including reference to an article written by another or a patent issued to
another, perhaps a competitor or an employee of a competitor, may require the naming of these others as invent-
ors.
*9A-8 It remains to be determined whether the intentional omission of a provisional inventor invalidates the
filing of a provisional application (and any priority claimed in a later-filed section 111(a) application).
Moreover, the effect of the omission of an inventor (that is, a person who contributed to the disclosed subject
matter) of a provisional application on the validity of a patent issuing on a section 111(a) application claiming
priority from the provisional application is unknown. It would be a harsh result to have a patent declared invalid
because an inventor was omitted from the provisional application when the inventor did not contribute to the
claimed subject matter of the issued patent. This issue remains for further legislation or interpretation by the
courts.
Inventorship can be changed if the original inventorship was incorrect and there was no deceptive intent.
[FN15]
A section 111(a) application claiming priority from a provisional application must have at least one inventor
in common with the provisional application. [FN16]
[FN13]. 35 U.S.C. § 111(b).
[FN14]. 35 U.S.C. § 116; 37 C.F.R. § 1.45(c).
[FN15]. 37 C.F.R. § 1.48(d) and (e).
[FN16]. 35 U.S.C. § 119(e)(1).
END OF DOCUMENT


Jeffrey G. Sheldon

*9A-8 § 9A.1.5 Section 102(e) Date of Provisional Application
If a patent issues that claims the benefit of a priority date of a provisional application, there remains an issue
as to what is the effective date for this patent as a prior art reference.
The Patent Office has taken the position that pursuant to 35 U.S.C. § 102(e), a patent issued on a section
111(a) application is an effective reference as of its priority date, including the filing date of a provisional ap-
plication from which the issued patent takes priority. If the reference patent was issued on an international ap-
plication under the Patent Cooperation Treaty, then the effective reference date is when the requirements of 35
U.S.C. § 371(c)(1), (2), and (4) have been met.
*9A-9 At least one author has argued that the provisional application filing date should not be the effective
priority date. [FN17] This issue will have to be resolved.
Provisional patent applications which have been assigned a filing date (complied with the minimum filing
requirements) and which have gone abandoned for failure to comply with, for example, a notice from the Patent
Office to supply missing parts, can be revived by petition within one year from the date of the filing of the pro-
visional application. The one-year limitation is imposed since provisional patent applications automatically go
abandoned one year from the filing date.
[FN17]. Andrew Patch, Provisional Applications and 35 U.S.C. Section 102(e) in view of Milburn, Hilmer and
Wertheim, 77 J. PAT. & TRADEMARK OFF. SOC'Y 339 (Apr. 1995).
END OF DOCUMENT


Jeffrey G. Sheldon

*9A-9 § 9A.2 Requirements for a Provisional Application
The requirements for filing a complete provisional patent application are: [FN18]
• a written specification containing a written description of the invention to enable any person skilled in
the art to make and use the invention and setting forth the best mode for carrying out the invention in com-
pliance with the first paragraph of 35 U.S.C. § 112; [FN19]
• drawing(s) when necessary for the understanding of the invention;
*9A-10 • a cover sheet, which can be the cover sheet required by 37 C.F.R. § 1.51(c)(1), identifying the
application [FN20] as a provisional patent application, the inventors, the name and registration number of
the patent practitioner, the docket number, and the correspondence address (see Exhibit 9A-3);
• if the invention was made by an agency of the U.S. government or under a contract with an agency of
the U.S. government, the name of the agency and contract number; [FN21] and
• a filing fee. [FN22]
The minimum requirements for obtaining a provisional application filing date are a specification in compli-
ance with 35 U.S.C. § 112 (and drawings if necessary to an understanding of the invention), identification of the
application as a provisional application, and the naming of the inventor(s). The specification need not be in Eng-
lish. However, if appropriate, the applicant will receive a notice to supply missing parts, a notice to pay a fee,
and a notice to provide a translation of the specification into English. [FN23] Failure to provide the missing
parts of the provisional application can lead to abandonment of the provisional application.
Where appropriate, the filing should also include a power of attorney to allow the attorney access to the pro-
visional application file, the name and registration number of the agent or attorney, a verified statement claiming
small entity status, as well as an assignment.
*9A-11 Unlike a regular, nonprovisional application under 35 U.S.C. § 111(a), a provisional application
does not require, but can include, claims [FN24] and an oath. [FN25] Further, since there is no particular format
required, a provisional application need not include the Background, Summary, Description of the Drawings,
and Abstract included in the specification for a nonprovisional application. [FN26] Patent application disclos-
ures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications. [FN27]
Although a provisional application does not need a declaration or oath, under certain circumstances it may
be desirable to include a declaration or oath. If the provisional application will serve as the basis for filing a PCT
application without filing a U.S. national application concurrent, in order for the U.S. application claiming prior-
ity from the PCT application to have a 102(e) date as of the filing date, it may be necessary to file a declaration
or oath for the Provisional application. [FN27.1]
The formal format requirements for provisional applications are the same as those for regular patent applica-
tions [FN28] (see § 2.5). Thus submission of a single-spaced, two-sided paper without appropriate margins pre-

pared by the inventor with just a cover sheet is not acceptable--it most likely will be awarded a filing date, but
the PTO will require replacement with a properly prepared specification. The provisional application must be
filed in or translated into the *9A-12 English language if a claim for priority is made from the provisional ap-
plication. Any translation can be filed at the time priority is claimed. [FN28.1]
For a provisional application to serve as a basis for priority, it must disclose the invention in a manner suffi-
cient to meet the requirements of the first paragraph of 35 U.S.C. § 112. [FN28.2] That is, for the provisional ap-
plication to serve as a basis for a later-filed regular application, it must contain a written description of the in-
vention, be enabling, and satisfy the best mode requirement. [FN29] Accordingly, care should be exercised in
preparing the provisional application if it is to serve as a basis for priority. Cost savings for a provisional applic-
ation compared with a regular application may not be realized due to the requirement that the provisional applic-
ation be enabling and set forth the best mode just like a regular application.
Moreover, disclosing the best mode of carrying out the "invention" and enabling the "invention," as required
by 35 U.S.C. § 112, can be a difficult challenge without claims identifying the "invention."
There is no procedure for filing an information disclosure requirement with respect to provisional applica-
tions, since these applications are not examined. [FN30] If a provisional application includes an information dis-
closure statement, the statement will be returned by the Patent Office. [FN31]
*9A-13 Provisional applications go through licensing and review, and foreign filing licenses can be issued
since the provisional application can form the basis for foreign filing.
No amendments can be made to a pending provisional application unless it is in response to a Patent Office
requirement. [FN32] Additional disclosure or changes to the originally submitted provisional application can be
handled by filing additional provisional application(s).
[FN18]. 37 C.F.R. § 1.51(c); see also M.P.E.P. § 601, "Guidelines for Drafting a Provisional Application under
35 U.S.C. § 111(b)."
[FN19]. See chapter 7.
[FN20]. An application not identified as a provisional patent application will be received and processed by the
Patent Office as a regular, nonprovisional application. 37 C.F.R. § 1.53(c)(1).
[FN21]. 37 C.F.R. § 1.51(c)(1)(viii).
[FN22]. The filing fee may be omitted and the provisional application will still be accorded a filing date.
However, the applicant will be notified of missing parts and will have to transmit the fee and an additional sur-
charge.
[FN23]. 37 C.F.R. § 1.53.
[FN24]. 35 U.S.C. § 111(b)(2).
[FN25]. 35 U.S.C. § 111(b)(8).
[FN26]. See § 2.5, supra.
[FN27]. 37 C.F.R. § 1.53(c)(4).

[FN27.1]. File Provisional Applications with Declarations, APLF PAT. L. UPDATES, Issue 18, May 10, 2002
(Association of Patent Law Firms), available at <http://www.aplf.org>. (This approach has not been tested in
any court, so the safest approach remains to file the U.S. National Phase application concurrently with the PCT
application.)
[FN28]. M.P.E.P. § 601.
[FN28.1]. 37 C.F.R. § 1.78(a)(5)(iv).
[FN28.2]. New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 63 U.S.P.Q.2d 1843 (Fed. Cir.
2002).
[FN29]. The best mode need not be updated when the § 111(a) regular application is filed unless the § 111(a) fil-
ing contains additional disclosure. See Transco Prods., Inc. v. Performance Contracting, Inc., 32 U.S.P.Q.2d
1077 (Fed. Cir. 1994) (regarding updating best mode in continuation-in-part applications).
[FN30]. 35 U.S.C. § 111(b)(8).
[FN31]. See M.P.E.P. § 601.
[FN32]. 37 C.F.R. § 1.53(c).
END OF DOCUMENT


Jeffrey G. Sheldon

*9A-13 § 9A.3 Advantages and Disadvantages of Filing a Provisional Application
Filing a provisional patent application (instead of immediately filing an actual section 111(a) patent applica-
tion) has the following potential advantages:
1. Slightly Lower Initial Cost. The initial cost of preparing and filing a provisional patent application
generally is slightly lower than that of preparing and filing an actual patent application. This is because of
the lower Patent Office filing fees. There may also be some additional cost savings stemming from the more
limited requirements of a provisional application. As discussed above, the provisional application requires
no particular format, and no Information Disclosure Statement is required. Further, no claims are required.
However, such additional cost savings are usually small, since the application must be prepared carefully to
make sure it complies with the requirements of 35 U.S.C. § 112 that the disclosure be enabling and set forth
the best mode for practicing the invention.
2. Delay of Examination Costs. Since a provisional application is not examined by the Patent Office,
examination costs are delayed during the pendency of the provisional application.
*9A-14 3. Shift of Patent Term. One of the most significant advantages of filing a provisional applica-
tion is the shift of the patent term. A United States patent has a term that begins when the patent issues and
expires twenty years after the effective filing date of the application that resulted in the patent. By initially
filing a provisional application, an applicant can establish and retain the priority of an early filing date for
up to one year before having to file an actual application, without affecting the twenty-year term. Because
of this, an applicant who initially files a provisional application can effectively shift the term of any result-
ing patent into the future by up to one year. The period in which the provisional application is pending is not
counted toward the term of the patent.
4. Improve the Regular Application Without Estoppel. By delaying the filing of the regular application,
it is possible to develop additional prior art that was not available when the provisional application was
filed. This can include published U.S. and foreign applications. With such additional art in hand, additional
limitations can be added to the specification as necessary to distinguish the art. Moreover, claims can be
tailored to distinguish over the art without risking the estoppel that can arise from narrowing broad claims
presented in a regular application. By this strategy, an extra year of prior art can be developed. This strategy
can be made more effective by taking advantage of the Special Search Program of the European Patent Of-
fice, which can provide an expedited search in three to six weeks based on a U.S. patent application. The
strategy can be optimized by ordering the search near the end of the one-year priority term.
*9A-15 5. Resolve Problems. By delaying the filing of a regular application, it is possible to resolve
problems that cannot be resolved prior to filing. These can include ownership issues, inventorship determin-
ation issues, an inventor unwilling to sign the formal papers, and confidential information of third parties
that needs to be disclosed for best mode reasons. Multiple provisional applications can be filed to reflect the
possible outcomes of further developments. For example, one application can be filed with the third party's
confidential information and one can be filed without it.
6. Earlier Patent Marking. In many instances, a provisional application can be filed earlier than a regu-

lar application. This allows earlier marking of "patent pending."

7. Avoidance of 102(b) Events for Foreign Applicants. The last clause of 35 U.S.C. § 119(a) results in
Paris Convention priority being ineffective to overcome an on-sale bar under 35 U.S.C. § 102(b). Thus if
there has been a confidential offer for sale in the United States prior to the filing date of a priority applica-
tion, and the applicant waits the full priority year before filing a PCT application or a nonprovisional U.S.
application, patentability can be barred. This problem can be avoided by filing a provisional application,
which can be the same as the foreign filed application, without any translation into English. The provisional
application can then serve as a priority basis for any further filings. [FN32.1]
*9A-16 Filing a provisional patent application has the following potential disadvantages:
1. Delay in Issuance of a Patent. A provisional application cannot result in a patent--an actual applica-
tion will eventually have to be filed. Accordingly, the initial filing of a provisional application, instead of
the immediate filing of a regular application, necessarily delays the issuance of any resulting patent.
2. Higher Total Cost. The overall cost of initially filing a provisional application and then following up
with the filing of an actual application will necessarily be more than the immediate filing of a regular ap-
plication.
3. Risk of Inadequate Disclosure. If the provisional application inadequately discloses the invention
eventually claimed in the related actual application, the actual application may not be accorded the priority
of the provisional application filing date. This could prove fatal to any potential patent. As stated above, to
provide a sufficient basis for a later claim of priority the provisional application must contain an enabling
disclosure and must set forth the best mode. Accordingly, the same time and effort may be required to ad-
equately prepare the provisional application resulting in no cost savings. [FN32.2]
*9A-17 4. Accelerated Foreign Filing Costs. Filing a provisional patent application starts the one-year
period within which foreign patent protection must be applied for. For example, should an applicant file a
section 111(b) provisional application and, within one year, file a regular, nonprovisional section 111(a) ap-
plication claiming the benefit of the provisional application, a foreign filing based upon the section 111(a)
application may not claim the benefit of the filing date of the provisional application. [FN33] The only way
to avoid this problem is to abandon the provisional application before filing the next section 111(b) provi-
sional application or regular, nonprovisional section 111(b) application.
5. Earlier Publication. For applications subject to eighteen-month publication pursuant to 35 U.S.C. §
122, filing an early provisional application will result in early publication, and thus loss of any trade secret
rights in trade secrets included in the application. This is because publication is triggered by the "expiration
of a period of 18 months from the earliest filing date for which a benefit is sought." [FN34] Of course this is
balanced by the availability of damages for infringement occurring after publication but before issuance
pursuant to 35 U.S.C. § 154(d).
6. Inventorship Uncertainty. Another disadvantage of a provisional application concerns inventorship.
As discussed above, the requirement to name as an inventor anyone who, individually or jointly, contributed
to the subject matter of the disclosure can lead to curious situations where, for example, the disclosure refers
to *9A-18 articles written by third parties or prior patents. If such materials are included in the application,
the rules suggest that the authors and inventors be named as inventors in the provisional application.
Moreover, once a regular application is filed, the inventors can very well change depending upon the
claimed subject matter of the regular application. Any change in inventorship can result in significant issues
in litigation.
7. Potential Prosecution History Estoppel. If the provisional application is filed with claims (which is
recommended), and one of the claims is relatively broad (which is not recommended), and it is necessary to
narrow the claim during preparation or prosecution of the nonprovisional application, prosecution history
estoppel can result.

[FN32.1]. Advantages 4-7 were extracted from William B. Slate, In Defense of the Misunderstood Provisional
Application, J. PAT. & TRADEMARK OFF. SOC'Y, Mar. 2003, at 219-30.
[FN32.2]. New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 63 U.S.P.Q.2d 1843 (Fed. Cir.
2002) (provisional application does not provide a written description of the claimed invention and therefore the
issued patent is not entitled to priority); see Irving N. Feit & Laurent T. Emr, Provisional Patent Application,
Reality and Myth, INTELL. PROP. TODAY, Dec., 2002, at 8.
[FN33]. The Paris Convention, Article 4(C)(4) treats the subsequently filed § 111(a) application as the first-filed
application for purposes of priority.
[FN34]. 35 U.S.C. § 122(b)(1).
END OF DOCUMENT


Jeffrey G. Sheldon

*9A-18 § 9A.4 The Claim(s)
The author recommends that a provisional application include one, very narrow claim. The reason to include
at least one claim is that there is uncertainty as to whether foreign countries will give priority to a provisional
application without a claim, on the basis that a provisional application cannot be a patent application without a
claim. There is at least one decision to that effect.
However, a broad claim can be ill advised. Under the Festo [FN35] decision, if the claims presented in a
regular application claiming priority from the provisional application are narrower in any way than the claim of
the provisional application, there is a possibility no doctrine of equivalents will be available for any element nar-
rowed. Therefore it is recommended that a narrow claim like one of the following be used:
*9A-19 An (article, method, combination, machine, apparatus) having all of the features specified.
An (article, method, combination, machine, apparatus) having all of the features shown in Figs.
___.
For safety, the following statement can be included before any claim used:
Insofar as the description above and the accompanying drawing disclose any additional subject matter
that is not within the scope of the single claim below, the inventions are not dedicated to the public and the
right to file one or more applications to claim such additional inventions is reserved.
It is also recommended that the following language be included in the specification, explaining the basis for
a narrow claim to avoid an accusation that the inventor did not possess broader subject matter when the provi-
sional application was filed.
Although a very narrow claim is presented herein, it should be recognized the scope of this invention is
much broader than presented by the claim. It is intended that broader claims will be submitted in an applica-
tion that claims the benefit of priority from this application.
Many practitioners recognize that it is easier to write a full specification when there is a complete set of
claims. Rather than putting the claims at the end of the application and creating prosecution estoppel problems,
the same result can be effected, with the claims being available for prosecution in a nonprovisional application,
by including the claims in the specification in the form of statements. They can be presented as follows:
The following statements A1-15 and B1-4 summarize certain aspects of the invention described in this
provisional specification. They are not the claims in the sense of 35 U.S.C. § 112:
Statement A1
Statement A2
*9A-20 . . .
Statement B1
Statement B2
...

Statement B4
[FN35]. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 122 S. Ct. 1831, 62 U.S.P.Q.2d 1705 (2002).
END OF DOCUMENT


Jeffrey G. Sheldon

*9A-20 § 9A.5 Marking
Since a provisional patent application constitutes entering into the patent system by taking a step toward ob-
taining a patent, the applicant can mark the product subject to the disclosure with "patent pending" or its equi-
valent. However, if the provisional application becomes abandoned and there is no other application (provisional
or regular) directed to the product, marking would not be appropriate.
END OF DOCUMENT


Jeffrey G. Sheldon

*9A-20 § 9A.6 Author's Recommendations
In view of the disadvantages and uncertainties with regard to provisional applications, the author recom-
mends against their use except in the following circumstances:
1. Insufficient financial resources. If the applicant has insufficient financial resources to file a regular
application, then the only viable option may be a provisional application. This is particularly true when a
statutory bar is about to run, or an article that will prevent foreign patent protection is about to be published.
It is better to file a provisional application than to abandon any chance of obtaining patent protection.
2. Insufficient time. If the applicant has allowed insufficient time to prepare a regular application, and
an application needs to be filed immediately, then a provisional application may be the only answer. This
situation could arise when a statutory bar is about to run *9A-21 with a published article; the only solution
may be to file the article as a provisional application. However, since the article can be made into a regular
application merely by adding a claim, this option should be considered.
Since a regular application can be converted into a provisional application to gain the extra year of patent
term, [FN36] this is the preferred approach to take advantage of provisional applications. Clients should be ad-
vised of this conversion option before the option expires, that is, one year from the filing date of the section
111(a) application.
[FN36]. See § 9A.1.2.
END OF DOCUMENT


Jeffrey G. Sheldon

*9AEX-1 Exhibit 9A-1: POTENTIAL DISADVANTAGES OF INITIALLY FILING A PROVISIONAL PAT-
ENT APPLICATION
The initial filing of a provisional patent application has the following potential disadvantages:
1. Delay in Issuance of a Patent--A provisional application cannot result in a patent--an actual application
will eventually have to be filed. Accordingly, the initial filing of a provisional application, instead of the imme-
diate filing of an actual application, will necessarily delay the issuance of any resulting patent.
2. Higher Total Cost--The overall cost of initially filing a provisional application (and then following up
with the filing of an actual application) will necessarily be more than the immediate filing of an actual applica-
tion.
3. Risk of Inadequate Disclosure--If the provisional application inadequately discloses the invention that is
eventually claimed in the related actual application, the actual application may not be accorded the priority of
the provisional filing date. This could prove fatal to any potential patent.
4. Potential Accelerated Loss of Trade Secret Protection--If a regular application is filed that claims priority
from the provisional application, and foreign protection is to be sought for the regular application, then the regu-
lar application will be published 18 months from the filing date of the provisional application. This will elimin-
ate trade secret status for any trade secrets in the application. If there were no provisional application, trade
secret protection would not be lost until 18 months from the filing date of the regular application.
1. Initially filing a provisional application should be considered:
(a) when it is desirable to shift the active term of any resulting patent into the future by up to one
year; and/or
(b) when it is desirable to delay the cost of examining the application in the Patent Office for up to
one year.
2. Initially filing a provisional application will generally not be desirable:
(a) when it is desirable to minimize costs;
(b) when it is desirable to obtain a patent at the earliest possible date; and/or
(c) when it is not desirable to market or otherwise disclose the invention before filing an actual pat-
ent application.
If you would like to consider filing a provisional application, please get back to us at your earliest opportun-
ity.

END OF DOCUMENT


Jeffrey G. Sheldon

*9AEX-3 Exhibit 9A-2: NOTICE REGARDING ACONVERSION TO PROVISIONAL APPLICATION
For all original patent applications filed on or after June 8, 1995, the effective term of any patent begins
when the patent issues and expires twenty years after the filing date of the initial application referencing the in-
vention. Thus, the effective term of the patent is shortened by the time spent prosecuting the application.
In some cases, especially in cases where a first office action has been received, the effective term of any res-
ulting patent can be lengthened by: (1) converting the application to a provisional application (as of the original
filing date), (2) amending the specification and/or claims (without adding "new matter") to increase the chances
of prompt allowance, and (3) filing a new application (incorporating the amendments) within one year of the ini-
tial filing date.
The potential lengthening of the effective term arises out of the fact that the time period of a provisional ap-
plication does not count against the patent term. Thus, especially in those cases where a first office action has
been received which indicates that a mere clarification of the specification and/or claims will result in allow-
ance, converting the application to a provisional application and then promptly refiling an amendment applica-
tion may result in several additional months on the effective patent term.
Note, however, that:

(a) the additional patent term can never be more than twelve months;
(b) any additional patent term will be tacked on to the final portion of the patent term;
(c) the onset of the patent term may be delayed;
(d) if the amended application is not promptly allowed, the effective term of any resulting patent may
be shortened rather than lengthened (although the process may still have had value in that the applicant will
often have received two chances to amend the application before receiving a final rejection--rather than the
usual one); and
(e) the examiner may for some reason perceive problems in the amended application that he or she did
not perceive in the original application.
If you wish to consider converting an application to a provisional application, please get back to us at your
earliest opportunity.

END OF DOCUMENT


Jeffrey G. Sheldon

*9AEX-5 Exhibit 9A-3

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 10: Plant Patent Applications
Under 35 U.S.C. § 161, whoever invents or discovers and asexually reproduces any new and distinct variety
of plant can obtain a plant patent. [FN1] In plant patents, the requirement of utility is replaced by one of distinct-
iveness, and an additional requirement of asexual reproduction is introduced. [FN2] Plant patents are granted to
encourage and protect individuals who develop and promulgate new and distinct varieties of flowers, fruit trees,
and other asexually reproducible plants, either through their own dogged personal efforts or through their sharp-
eyed attention to the periodic mutations of nature. Plant patents provide such encouragement and protection by
granting to such individuals the exclusive right to exclude others from asexually reproducing the new and dis-
tinctive plant and parts thereof for a twenty-year period. [FN3] For plants that do not satisfy the statutory re-
quirements for a plant patent, consider protection under the Plant Variety Protection Act. [FN4] Even if plant
patent protection is available, utility patent protection is also available. Plant patents are not the exclusive pro-
tection available for asexually reproductive plants. [FN5]
[FN1]. 35 U.S.C. § 161.
[FN2]. Yoder Bros. v. Cal.-Fla. Plant Corp., 537 F.2d 1347, 193 U.S.P.Q. 264 (5th Cir. 1976), cert. denied, 200
U.S.P.Q. 128 (1977).
[FN3]. See 35 U.S.C. § 163.
[FN4]. 7 U.S.C. § 2321 et seq.; Asgrow Seedco v. Winterboer, 982 F.2d 486, 25 U.S.P.Q.2d 1202 (Fed. Cir.
1992).
[FN5]. J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., 534 U.S. 124 (2001).
END OF DOCUMENT


Jeffrey G. Sheldon

*10-3 § 10.2.1 Types of Patentable Plants
Categories of plants that are potentially patentable under 35 U.S.C. § 161 include cultivated sports, mutants,
hybrids, and newly found seedlings. The term "plant" under 35 U.S.C. § 161 has been interpreted to mean
"plant" in the ordinary sense and not in the strict scientific sense. [FN6] Consequently, fungi and bacteria are not
included in the scope of patentable plants. [FN7] Also, only the totality of a plant can be patented, not its
flowers, fruits, buds, or seeds. For example, in Exhibit 10-3 the whole peach tree is claimed, not the individual
peach fruit.
Only plants grown in cultivated areas are patentable. [FN8] Plants found growing in the wild cannot be pat-
ented, the theory being that it would be contrary to the purpose of the patent laws to grant a monopoly over dis-
coveries that are already freely occurring in nature. [FN9] The definition of what constitutes a cultivated area is
still a relatively open question. However, the cultivated area where the plant is first found does not have to be-
long to the applicant. As long as the plant is discovered in some cultivated area, ownership by the applicant of
the cultivated area--and of the plant itself--is not a statutory prerequisite. [FN10]
Tuber-propagated plants are expressly excluded from the subject matter encompassing plant patents. [FN11]
The term "tuber" is used in a horticultural sense as meaning the short, thickened portion of an underground
branch. Examples of *10-4 plants governed by the term "tuber propagation" include the potato and the artichoke.
The legislative rationale for excluding this group of plants is that tubers are propagated by the same part of the
plant that is sold as food. For example, potatoes reproduce from the "eyes" in the potato tuber. Since the food
product produced by such plants is capable of reproduction, Congress felt that it was not in the public interest to
allow the patenting of those plants.
[FN6]. Kim Bros. v. L.A. Hagler, 167 F. Supp. 665, 120 U.S.P.Q. 210 (S.D. Cal. 1958), aff'd, 276 F.2d 259 (9th
Cir. 1960).
[FN7]. In re Arzberger, 112 F.2d 834, 46 U.S.P.Q. 32 (C.C.P.A. 1940).
[FN8]. 35 U.S.C. § 161.
[FN9]. See Diamond v. Chakrabarty, 447 U.S. 303 (1980).
[FN10]. See Ex parte Moore, 115 U.S.P.Q 145 (Pat. Off. Bd. App. 1957).
[FN11]. 35 U.S.C. § 161.
END OF DOCUMENT


Jeffrey G. Sheldon

*10-4 § 10.2.2 Asexual Reproduction
Asexually propagated plants are those that are reproduced by means other than from seeds. Asexual repro-
duction typically is accomplished by the rooting of cuttings, by layering, budding, grafting, inarching, etc.
[FN12] All asexual reproduction techniques "fragment" the original plant into several plants. Acceptable modes
of asexual reproduction include, but are not limited to, the following: rooting, cuttings, grafting, budding,
apomictic seeds, bulbs, division, slips, layering, rhizomes, runners, corms, tissue culture, and nuclear embryos.
[FN13]
The requirements to obtain a plant patent are that: [FN14]

• the plant is capable of stable asexual reproduction.
• the plant was invented or discovered and, if discovered, that the discovery was made in a cultivated
area.
• the plant is not a plant which is excluded by statute, where the part of the plant used for asexual repro-
duction is not a tuber food part, as with potato or Jerusalem artichoke.
• the person or persons filing the application are those who actually invented the claimed plant; that is,
discovered *10-5 or developed and identified or isolated the plant, and asexually reproduced the plant.
• the plant has not been sold or released in the United States of America more than one year prior to the
effective filing date of the application.
• the plant has not been enabled to the public, that is, by description in a printed publication in this
country more than one year before the application for patent with an offer to sale; or by release or sale of the
plant more than one year prior to application for patent.
• the plant be shown to differ from known, related plants by at least one distinguishing characteristic,
which is more than a difference caused by growing conditions or fertility levels, etc.
• the invention would not have been obvious to one skilled in the art at the time of invention by applic-
ant.
Some of these requirements are discussed in detail in the following sections.
The inventor must actually reproduce the plant asexually before applying for patent protection. By reprodu-
cing the plant asexually, the inventor proves that the characteristics of his new and distinctive variety are repro-
ducible. [FN15]
[FN12]. M.P.E.P. § 1601.
[FN13]. U.S.P.T.O., General Information About 35 U.S.C. § 161 Plant Patents (available at <www.uspto.gov>).
[FN14]. Id.

[FN15]. Ex parte Moore, 115 U.S.P.Q. 145 (Pat. Off. Bd. App. 1957).
END OF DOCUMENT


Jeffrey G. Sheldon

*10-5 § 10.2.3 Distinctiveness
Only a new and distinct variety of plant is patentable. [FN16] In order for the new variety to be distinct
from the old variety, it must have characteristics that are clearly distinguishable, [FN17] although they do not
necessarily have to be "superior" to those of existing varieties. Virtually any characteristic that distinguishes the
new variety from the previous varieties can be used to establish "distinctiveness." Frequently cited distinguish-
ing *10-6 characteristics include the size and shape of the plant itself; the size, shape, and color of the leaves,
fruit, or blossoms; the maturation characteristics of the plant; the "quality" of the fruit (for example, flavor,
juiciness, resistance to spoiling); the ability of the plant to grow under different temperatures, moisture, and soil
conditions; and the resistance of the plant, fruit, or blossoms to birds, insects, or disease. [FN18] Many different
distinctive qualities are described in the representative plant patents of Exhibits 10-3 through 10-6.
A copy of the patent application is usually forwarded by the Patent Office to the Department of Agriculture
for an advisory report on whether the plant is distinctive over known varieties. [FN19] If the Department of Ag-
riculture determines that it does not have sufficient information to decide whether the variety of plant under con-
sideration is new and distinct, the Patent Office may require affidavits or declarations from qualified agricultural
and horticultural experts as to the novelty and distinctiveness of the variety. [FN20]
[FN16]. 35 U.S.C. § 161.
[FN17]. See Yoder Bros. v. Cal.-Fla. Plant Corp., 537 F.2d 1347, 193 U.S.P.Q. 264 (5th Cir. 1976), cert. denied,
200 U.S.P.Q. 128 (1977).
[FN18]. Id.; see also Pan Am. Plant Co. v. Matsui, 433 F. Supp. 693, 198 U.S.P.Q. 462 (N.D. Cal. 1977).
[FN19]. M.P.E.P. § 1609; 37 C.F.R. § 1.167(a).
[FN20]. 37 C.F.R. § 1.167(b).
END OF DOCUMENT


Jeffrey G. Sheldon

*10-6 § 10.3 Novelty
To be "novel," the plant cannot have existed before in nature. [FN21] However, before a pre-existing plant
variety can be cited to negate novelty, it must be shown that the pre-existing variety is capable of reproducing it-
self. [FN22] Prior existence of a *10-7 "recurring sport" is not sufficient to negate novelty, since a sport is a
one-time phenomenon absent human intervention. Nor is novelty negated by the mere fact that the plant upon
which the application is based previously existed for a long period of time (twenty-five to thirty years) prior to
the discovery of its distinctive qualities. [FN23]
Finally, novelty is not negated by the mere reference in a plant catalog to pictures and descriptions of the
plant claimed, if such pictures and descriptions do not enable one of ordinary skill to make or use the invention.
[FN24]
U.S.P.Q. 128 (1977); see also Ex parte Foster, 90 U.S.P.Q. 16 (Pat. Off. Bd. App. 1951).
U.S.P.Q. 128 (1977).
[FN23]. Nicholson v. Bailey, 182 F. Supp. 509, 125 U.S.P.Q. 157 (S.D. Fla. 1960).
[FN24]. In re LeGrice, 301 F.2d 929, 133 U.S.P.Q. 365 (C.C.P.A. 1962).
END OF DOCUMENT


Jeffrey G. Sheldon

*10-7 § 10.4 Inventorship
The inventor is the person who first appreciates the distinctive qualities of the plant and reproduces the plant
asexually. [FN25] A person who merely reproduces a plant asexually without appreciating its distinctive qualit-
ies is not the inventor. [FN26] However, a plant patent can have joint inventors, each of whom made separate
contributions to the discovery. [FN27] Thus, if one person discovers a distinctive plant, and another asexually
reproduces the plant, the two should jointly apply for a patent. [FN28]
[FN25]. Ex parte Moore, 115 U.S.P.Q. 145 (Pat. Off. Bd. App. 1957).
[FN26]. See Bourne v. Jones, 114 F. Supp. 413, 98 U.S.P.Q. 206 (S.D. Fla. 1951), aff'd, 207 F.2d 173, 98
U.S.P.Q. 205 (5th Cir.), cert. denied, 346 U.S. 897 (1953).
[FN27]. 35 U.S.C. § 116.
[FN28]. Ex parte Kluis & Kluis, 70 U.S.P.Q. 165 (Pat. Off. Bd. App. 1945).
END OF DOCUMENT


Jeffrey G. Sheldon

*10-8 § 10.5 Parts of the Application
Plant patents are, in general, governed by the same rules as those for utility patents. [FN29] However, the
oath, specification, claims, drawings, and specimen requirements for plant patents are governed by special rules,
as discussed below. Also, the forms of the transmittal form and the assignment bear some differences. [FN30]
Two copies of the color drawings or color photographs are needed. [FN31] The second copy may be forwar-
ded by the Patent Office to the Department of Agriculture for an advisory report on whether the variety of plant
disclosed in the application is distinct over known varieties of plants. [FN32]
The specification should include the following sections, where applicable, in order:
(1) Title;
(2) Cross-reference to related applications (unless included in an application data sheet;
(3) Statement of any federally sponsored research or development;
(4) Latin name of the genus and species of the plant claimed;
(5) Variety denomination;
(6) Background of the invention;
(7) Brief summary of the invention;
(8) Brief description of the drawing;
(9) Detailed botanical description;
(10) A single claim; and
(11) Abstract of the disclosure. [FN33]
*10-9 The following discussion will address the details of what is involved with some of these sections of
the specification.
[FN29]. 37 C.F.R. § 1.161.
[FN30]. See Exhibits 10-1 and 10-2.
[FN31]. M.P.E.P. § 1603.
[FN32]. 37 C.F.R. § 1.167; M.P.E.P. § 1609.
[FN33]. 37 C.F.R. § 1.163(c).
END OF DOCUMENT


Jeffrey G. Sheldon

*10-9 § 10.5.1 Oath or Declaration
The oath or declaration must state that the applicant asexually reproduced the plant. If the plant was found
growing in a cultivated area, the oath or declaration must also state that fact. [FN34] A sample declaration form
that contains the requisite statements is provided in Exhibit 10-2A. Thus, the declaration must contain the equi-
valent of the following language:
I believe that I am the original inventor of a new and distinct variety of (common name of plant) de-
scribed and claimed in the attached specification; and that I have asexually reproduced the said new and dis-
tinct variety.
The remainder of the declaration is identical to that of a utility patent, as described in chapter 2. A sample
declaration form for plant patents is provided in Exhibit 10-1.
[FN34]. 37 C.F.R. § 1.162.
END OF DOCUMENT


Jeffrey G. Sheldon

*10-9 § 10.5.2 Title and Variety Name
The title of the invention must describe the botanical variety of the entire plant and not merely the fruit or
flower of the plant. Thus, the title of a patent claiming a plant that produces a larger apple should read "apple
tree" and not "apple." [FN35] The botanical terms used to describe the type of plant claimed in standard botanic-
al textbooks or publications should be used. In the illustrative exhibits, the botanical titles used to describe the
distinctive plants and trees include prunus persica, rose plant, cherry tree, etc.
The applicant must also propose a variety name for the plant in the patent application. [FN36] The proposed
variety name is evaluated by the Patent Office examiner to determine if it *10-10 meets the requirements of art-
icle 13 of the U.P.O.V. Convention adopted by the United States on November 8, 1981. [FN37] Under article
13, the proposed variety name cannot be identical or confusingly similar to pre-existing variety names used in
U.P.O.V. member countries to identify closely related plant species. [FN38] Also, the proposed variety name
may not mislead the consumer as to the characteristics, value, and identity of the patented plant. [FN39]
"Sprague Peach Bush" is the variety name provided in Exhibit 10-3, while "Rose Plant Jaccart" is the variety
name of Exhibit 10-4.
[FN35]. See M.P.E.P. § 1610.
[FN36]. M.P.E.P. § 1610.
[FN37]. M.P.E.P. § 1612. U.P.O.V. is a French acronym for the Convention for the Protection of New Varieties
of Plants.
[FN38]. Id.
[FN39]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

*10-10 § 10.5.3 Specification
The specification must disclose the distinctive characteristics of the plant. [FN40] The background section
of Exhibit 10-3 details the characteristics that make the Sprague Peach Bush new and distinct from known vari-
eties of peach trees. These characteristics include its short and bushy shape, the virtually virus-free character of
its fruit, the firmness of the fruit, the wiry nature of the branches, and the tendency of the branches to bend but
not break under the weight of the maturing fruit. Similarly, the rose plant of Exhibit 10-4 is distinctive because
of its white and red flowers, upright growth, dwarf habit, resistance to mildew, etc.
A complete and detailed description of the plant must also be provided. [FN41] That description should be
expressed in the same botanical terms used to describe the type of plant claimed, that is, as followed by standard
botanical textbooks or publications. [FN42] In Exhibit 10-3, the technical description *10-11 of the Sprague
peach tree comprises several individual sections comprising the general characteristics of the tree, the foliage of
the plant, and a description of its fruit and flower. The description of the rose plant of Exhibit 10-4 focuses more
on the rose flower itself.
Where color is a distinctive feature of the plant, the color can be identified by reference to a color diction-
ary. Color dictionaries provide specimens of precise colors that are identified by a name or number. These dic-
tionaries are used to describe a particular color by referring to the name or number associated with that color.
The place and manner in which the plant has been asexually reproduced must also be stated. [FN43] The
peach tree of Exhibit 10-3 was asexually reproduced by "budding the sport onto root stock of peach trees."
Also, the location and nature of the area where the newly found plant was discovered must be disclosed.
[FN44] In Exhibit 10-3, it is disclosed that the new plant was first discovered by James Sprague and that it ori-
ginated from a sport branch on a peach tree grown in a cultivated orchard in California.
The Patent Office states that among the factors that must be ascertained for a reasonably complete botanical
description for the claimed plant are: [FN45]
• genus and species
• habit of growth
• cultivar name
• vigor
• productivity
• precocity (if applicable)
• botanical characteristics of plant structures (that is, buds, bark, foliage, flowers, fruit, etc.)
*10-12 • fertility (fecundity)
• other characteristics that distinguish the plant such as resistance(s) to disease, drought, cold, damp-

ness, etc., fragrance, coloration, regularity and time of bearing, quantity or quality of extracts, rooting abil-
ity, timing or duration of flowering season, etc.
The specification should not include irrelevant laudatory expressions, such as "this rose is prettier than any
other rose." Similarly, when the fruit of the plant is distinctive, statements as to the character and quality of the
product made from the fruit (for example, a peach pie) are not necessary. [FN46] Also, such unwarranted advert-
ising as "the disclosed plant is grown at the XYZ Nurseries at Topeka, Kansas," is a ground for rejecting the
specification. [FN47]
[FN40]. 37 C.F.R. § 1.163(a).
[FN41]. M.P.E.P. § 1605.
[FN42]. Id.
[FN43]. 37 C.F.R. § 1.163(a).
[FN44]. Id.
[FN45]. U.S.P.T.O., General Information About 35 U.S.C. § 161 Plant Patents (available at <www.uspto.gov>).
[FN46]. M.P.E.P. § 1610.
[FN47]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

*10-12 § 10.5.4 Claim
Only a single claim that covers the entire plant is permitted in a plant patent. [FN48] The claim should be
for a new variety of plant or tree and not a distinctive fruit or flower. [FN49]
Method claims are not acceptable, since the plant itself is being patented, not the method of asexually repro-
ducing the plant. The language of the claim can be directed merely to a "new and distinct variety of plant as de-
scribed and illustrated."
The claim can also describe the distinctive features of the plant. [FN50] The single claim of Exhibit 10-3
specifies the distinctive characteristics of the plant, namely its short, bushy shape and the firmness and substan-
tially virus-free nature of its fruit. Such a claim is easier to prosecute because it defines *10-13 the plant more
narrowly. However, it can also limit the scope of the claims as discussed in chapter 6.
[FN48]. M.P.E.P. § 1605.
[FN49]. M.P.E.P. § 1610.
[FN50]. 37 C.F.R. § 1.164.
END OF DOCUMENT


Jeffrey G. Sheldon

*10-13 § 10.5.5 Drawings
Plant patent drawings should be drawn artistically and not like a mechanical or engineering drawing.
[FN51] The drawing should disclose all the distinctive characteristics of the plant that can be visually represen-
ted. [FN52] Figure numbers and reference characters are not necessary unless required by the examiner. The
drawings should not be used to advertise the source of the plant, such as by showing in the background any sign
bearing the name of an individual or nursery; otherwise it may be rejected. [FN53]
The drawings must be in color when color forms an important aspect of the distinctive qualities of the plant.
[FN54] However, if colored drawings are submitted, at least two copies of those drawings must be included.
[FN55]
Colored drawings can be made in permanent watercolor or oil mediums. [FN56] The paper must correspond
in size, weight, and quality to that required for drawings in general, as discussed in chapter 5. All colored draw-
ings should be mounted with a two-inch margin at the top for Patent Office notations and markings. [FN57]
In lieu of colored drawings, color photographs are acceptable. [FN58] Color photographs are more com-
monly used, because they are quicker to obtain and less expensive than drawings. In Exhibit 10-3, four photo-
graphs of the Sprague Peach Bush are used in lieu of drawings.
[FN51]. 37 C.F.R. § 1.165(a).
[FN52]. Id.
[FN53]. M.P.E.P. § 1610.
[FN54]. 37 C.F.R. § 1.165(b).
[FN55]. Id.
[FN56]. Id.
[FN57]. M.P.E.P. § 1606.
[FN58]. 37 C.F.R. § 1.165(b).
END OF DOCUMENT


Jeffrey G. Sheldon

*10-14 § 10.5.6 Specimens
The examiner can request specimens of the plant, or its flower or fruit, for study and inspection by the Pat-
ent Office. [FN59] When it is not possible to forward specimens, the plants must be made available for official
inspection where grown. [FN60] Plant specimens should not be submitted unless specifically requested by the
examiner. [FN61]
[FN59]. 37 C.F.R. § 1.166(b).
[FN60]. Id.
[FN61]. M.P.E.P. § 1607.
END OF DOCUMENT


Jeffrey G. Sheldon

*10EX-1 Exhibit 10-1: Plant Patent Application Transmittal

END OF DOCUMENT


Jeffrey G. Sheldon

*10EX-3 Exhibit 10-2: Assignment for Plant Patent
ASSIGNMENT PLANTS
WHEREAS, I, __________________________________ have invented and asexually reproduced a new and distinct
variety of plant, namely, ________________________________________ which is disclosed in an application for
United States Letters Patent titled: _____________________________, and executed on even date herewith.
AND WHEREAS ____________________________, a ___________________ corporation (hereafter, together with

any successors, legal representatives of assign thereof, called "Assignee"), wants to acquire the entire right, title and in-
terest in and to said plant and application.
and interest in and to said plant, and said application and all divisions, substitutions, continuations and continuations-
in-part thereof, and all United States Letters Patents which may be granted thereon and all reissues and extensions there-
of, and all priority rights under the Convention for the Protection of New Varieties of Plants (UPOV Convention) and the
International Convention for the Protection of Industrial Property for every member country, and all applications for pat-
ents (including related rights such as utility-model registrations, inventor's certificates, and the like) heretofore or here-
after filed for said plant in any foreign countries, and all patents (including all extensions, renewals and reissues thereof)
granted for said plant in any foreign countries; and I hereby authorize and request the United States Commissioner of
Patents and Trademarks, and any officials of foreign countries whose duty it is to issue patents on applications as afore-
said, to issue all patents for said plant to Assignee in accordance with the terms of this assignment;
said plant, and testify in any legal proceeding, sign all lawful papers, execute all divisional, continuation, continuations-
in-part, substitute and reissue applications, make all rightful oaths and generally do everything possible to aid Assignee
to obtain and enforce proper patent protection for said plant in all countries.
IN TESTIMONY WHEREOF, I hereunto set my hand this ________ day of ______________, 19 ___.
________________________________
STATE OF }

} SS.
COUNTY OF }
On ____________________, 19 ___, before the undersigned, a Notary Public for the State and County aforesaid,
personally appeared _______________________, known to me or proved to me on the basis of satisfactory evidence to
be the person whose name is subscribed to the above assignment, and acknowledged that he executed the same.
_______________________________
Notary Public

END OF DOCUMENT


Jeffrey G. Sheldon

*10EX-5 Exhibit 10-2A: Plant Patent Application (35 U.S.C. 161) Declaration (237 CFR 1.63)

END OF DOCUMENT


Jeffrey G. Sheldon

*10EX-7 Exhibit 10-3: Plant Patent for Sprague Peach Bush
United States Patent [19] [11] Patent Number: Plant 7,337

Sprague [45] Date of Patent: Sep. 25, 1990
-------------------------------------------------------------
[54] PRUNUS PERSICA SPRAGUE PEACH BUSH
[76] Inventor: James W. Sprague, 1605 S. Mountain

Ave., Apt. 5, Ontario, Calif. 91761
[21] Appl. No.: 484,839
[22] Filed: Feb. 26, 1990
5
[51] Int. CL ....... A01H 5/00
[52] U.S. CL ............ Plt./43
[58] Field of Search .... Plt./34
P.P. 6,119 3/1988 Sprague .. Plt. 43
Primary Examiner-James R. Feyrer
Attorney, Agent, or Firm-Denton L. Anderson
[57] ABSTRACT
A new and distinct variety of Prunus persica characterized by the short, bushy shape of its trees and by the firmness

and apparent virus-free nature of its fruit.
4 Drawing Sheets
BACKGROUND
The present invention relates to a new and distinct variety of Prunus persica, the novel characteristics of which
reside particularly in the short, bushy shape of the tree.
The new Prunus was first discovered by James W. Sprague in 1984. It originated from a sport branch on a Prunus
persica tree of the Last Chance Peach Number One variety, grown in a cultivated orchard in the West Antelope Valley of
Lancaster, Calif. Thereafter, the new variety was successfully asexually reproduced by Mr. Sprague by budding from the
sport onto root stock of the Last Chance Peach Number One variety and other Prunus persica varieties. Such asexual re-
production resulted in several progeny trees which have consistently displayed the short, bushy tree shape, firm fruit, vir-
us-free fruit and apparent high temperature dormancy characteristics found on the parent sport branch.
An interesting characteristic of the new variety is its short, bushy tree shape. Mature trees naturally assume this
shape without pruning. The tree grown largely without horizontal branches. No branches are thicker than about 11 inch
in diameter and most of the branches are much thinner than that. The "trunk" is generally less than eight inches in height.
The trees rarely grow taller than about four and one-half to five feet in height.
Another interesting characteristic of the new variety is the virtually virus-free character of the fruit. Thus, the fruit
can be frozen for long periods of time without discoloring and without additives.
Another interesting characteristic of the new variety is the firmness of the fruit which allows the fruit to be transpor-
ted and stored with minimal damage.
Another interesting characteristic of the new variety is the wiry nature of the branches and the tendency of the
branches to bend but not break under the weight of maturing fruit so that fruit-laden branches arch over until fruit grow-
ing at the further-most end rests upon the ground.
These characteristics make the new variety distinct from known varieties of Prunus persica.
In particular, the new variety is distinct from the Prunus persica Last Chance Peach Number One Variety in several
characteristics as set forth in Table I.
TABLE I
-------------------------------------------------------------------------------
Characteristic Prunus Persica Last Chance Prunus Persica Sprague
Peach Number One Peach Bush
-------------------------------------------------------------------------------
Shape of tree Dwarf tree Bush
Height of tree at 7-9 feet 4 1/2 -5 feet
maturity
Height of tree 1 1/2 -4 feet 1-8 inches
"trunk"
Average thickness of 2 inches 1 inches
primary branches
Length of leaf 4-4 1/2 inches 4 1/2 -5 inches
Distribution of fruit Mostly in lower 1/2 of tree Uniform throughout

Maturation of tree First sizeable fruit crop in First sizeable fruit crop
third year in second year
Size of fruit Vertical diameter: 2 1/2 -3 Vertical diameter: 2 1/2
1/2 inches Horizontal -3 inches Horizontal
diameter: 2 1/2 -3 inches diameter: 2-2 1/2 inches
Shape of fruit Upper half slightly Symmerical
asymmerical
Extenior color of Yellow color Pale yellow color
fruit especially on interior
of bush
-------------------------------------------------------------------------------
The new variety is also distinct from the Prunus persica Last Chance Peach Number One variety in that the bloom
time of the new variety is slightly longer by about one week and the fruit of the new variety appears slightly earlier but
takes slightly longer to mature.
Other distinctive characteristics of the new variety are exemplified in the accompanying illustrations, wherein:
FIG. 1 shows an adult parent tree;
FIG. 2 is a close up of a branch with adult leaves;
FIG. 3 is a close up of a branch with adult inflorescence; and
FIG. 4 is a close up of a branch bearing ripened fruit.
TECHNICAL DESCRIPTION
The following is a description in some detail of the new variety of Prunus persica.
Tree: Short, bushy shape, characterized by few horizontal branches.
*10EX-8 About four and one-half to five feet tall at maturity. Water frugal, very dense, very rigorous, regular
bearer, very productive. Dormancy period apparently induced by temperatures considerably higher than normal
dormancy-inducing temperatures. Bears fruit in October until as late as about the first week in November.
Foliage:
Leaves.-Obovate, spatulate, acutely pointed, medium thickness, dark green color, smooth texture, four and one-
half to about five inches in length and one and one-half inches in width. Glandular and finely serrate margin. Petiole
of medium length and medium thickness, stipules at base, average of eighteen to twenty glands per leaf, opposite and
positioned along full length of leaf, globose to reinform, normal green color.
Branches.-All vertical, few horizontals. Thickness no greater than about one and one-eighth inch in diameter.
Smooth texture, red to brown in color, glossy appearance, lenticels medium in number.
Flower: Pink color, influorescent from February 25 through March 31st.

Buds.-Hardy, plump, medium length and somewhat appressed.
Fruit:
Form.-Uniform shape, shallow inconspicuous suture, circular cavity with suture showing on one side, slightly to
strongly rounded ventral surface, rounded basis, short apex, 2 1/2 -3 inch vertical diameter and 2-2 1/2 inch horizont-
al diameter.

Skin.-Medium thickness, not tough or tender, tenacious to flesh, less than usual down that does not roll up when
rubbed. Fifty to seventy percent red in color.
Flesh.-Yellow color, red color on surface of cavity, abundant amygdalin, moderate juice, very firm texture, aus-
tere flavor, distinct aroma, excellent eating quality, apparently virus-free. Retains color, texture and flavor upon
freezing and thawing.
Fibres.-Fine, tender, few in number.
Stone.-Free, parts from flesh smoothly, short fibres, oblong to oval shape, oblique base, broad belum, rounded
apex, regularly furrowed toward apex, pitted throughout, rounded ridges, elongated pits, thick ventral edge, narrow
dorsal edge, continuous ridges on either side, brownishred color, about one-inch length and about three-quarter inch
in diameter.
The principal novel characteristics of the new variety of Prunus persica is its short, bushy shape. This allows its fruit
to be easily harvested without the aid of ladders. Together with the wiry strength of its branches, the short bushy shape of
the new variety makes the new variety highly resistant to wind damage when laden with fruit. Branches laden with fruit
bend downwardly but do not break. Low, fruit laden branches become supported by the ground. The overall effect is a
marked reduction of "whipping action" induced by gusts of wind and a resultant minimization of wind-induced damage.
Another novel characteristic of the new variety of Prunus persica is the substantially virus-free nature of the fruit.
This allows the fruit to be stored for long periods with minimal decay. Also, the fruit can be frozen and the flesh will not
darken.
The new variety of Prunus persica is further characterized by the firm flesh of the fruit. This allows the fruit to be
transported and stored with minimal damage.
What is claimed is:
1. A new and distinct variety of Prunus persica as described and shown herein characterized particularly by the
short, bushy shape of its trees and by the firmness and substantially virus-free nature of its fruit.
*****

END OF DOCUMENT


Jeffrey G. Sheldon

*10EX-13 Exhibit 10-4: Plant Patent for Rose Plant Jaccart

Warriner [45] Date of Patent: Apr. 30, 1991
-------------------------------------------------------------
[54] ROSE PLANT JACCART
[75] Inventor: William A. Warriner, Tustin, Calif.
[73] Assignee: Bear Creek Gardens, Inc., Medford,

Oreg.
[21] Appl. No.: 478,194
[22] Filed: Feb. 9, 1990
5
[51] Int. Cl. ...... A01H 5/00
[52] U.S. Cl.............. Plt./7
[58] Field of Search ..... Plt. 7
Attorney, Agent, or Firm-Klarquist, Sparkman, Campbell, Leigh & Whinston
[57] ABSTRACT
A miniature rose variety having ease of propagation on its own roots from soft wood cuttings, with white flowers
edged in red, vigorous upright growth, dwarf habit, resistance to powdery mildew and rust, and excellent recurrent
bloom.
1 Drawing Sheet
This present invention relates to a new and distinct variety of rose plant named Jaccart of the miniature class which

was originated by me by crossing the variety Libby with an unnamed seedling.
The primary objective of this breeding was to produce a new rose variety having strong vigorous growth, dwarf habit
and a red and white flower color. The objective was substantially achieved along with other desirable improvements as
evidenced by the following unique combination of characteristics which are out-standing in the new variety and which
distinguish it from its parents as well as from all other varieties of which I am aware:
1. White flowers edged in red.
2. Vigorous upright growth, dwarf habit.
3. Resistance to powdery mildew and rust.
4. Excellent recurrent bloom.
5. Ease of propagation on its own roots from soft wood cuttings.
Asexual reproduction of this new variety by rooting of soft wood cuttings, as performed at Wasco, Calif., shows that
the foregoing characteristics and distinctions come true to form and are established and transmitted through succeeding
propagations.
The accompanying illustration shows typical specimens of the vegetative growth and flowers of this new variety in
different stages of development, depicted in color as nearly true as it is reasonably possible to make the same in a color
illustration of this character.
The following is a detailed description of my new rose cultivar with color in terminology in accordance with The
Royal Horticultural Society Colour Chart except where ordinary dictionary significance of color is indicated.
Parentage:
Seed parent.-Libby.
Pollen parent.-An unnamed seedling.
Classification:
Botanical.-Rosa hybrida.
Commercial.-Miniature.
FLOWER
Observations made from specimens grown in a garden in Somis, Calif. from June to October, 1989.
Blooming habit: Recurrent.
Bud:
Size.- 1/2 inch when the petals start to unfurl.
Form.-Short, pointed ovoid.
Color.-When sepals first divide: White Group 155D edged in Red Group 46B. When half blown: The upper
sides of the petals are White Group 155D edged in Red Group 46B: and the lower sides of the petals are mostly
White Group 155D edged in Red Group 46B.
Sepals.-Color: Green Group 138B. Surface texture: Covered in fine hairs and occasional glands. Three normally
appendaged sepals and two unappendaged sepals with hairy edges.

Receptacle.-Color: Green Group 138B. Shape: Funnel. Size: Small. Surface: Smooth.
Peduncle.-Medium: Surface: Smooth. Color: Light green. Strength: Stiff, erect.
Bloom:
Size.-Small. Average open size is 1 to 1 1/2 inches.
Borne.-Singly.
Stems.-Short, strong.
Form.-When first open. High centered. Permanence: Flattens, outer petal edges curl slightly.
Petalage.-Number of petals under normal conditions: 40-50.
Color.-Upper side of petals is White Group 155D edged in Red Group 46B with the red confined to petal edges.
Reverse side of petals is same. Base of petals is very small greenish-white half moon at point of attachment. Major
color on the upper side is White Group 155D edged in Red Group 46B.
Variegations.-None.
Discoloration.-General tonality at end of first day: None; at the end of the third day: Color of the red fades to
Red Group 46D.
Fragrance.-None.
Petals:
Texture.-Thin.
Shape.-Oval.
Form.-Tips slightly recurved, edges slightly quilled.
Arrangement.-Imbricated. Petaloids in the center: Few.
Persistence.-Drop off cleanly.
Lastingness.-On the plant: Fair. As a cut flower: Fair.
Reproductive parts:
*10EX-14 Plant 7,508

Anthers.-Size: Small. Quantity: Few. Color: Yellow. Arrangement: Regular around sides, mixed with petaloids.
Filaments.-Color: White.
Pollen.-Color: Lemon Yellow.
Styles.-Color: Red.
Stigmas.-Color: Greenish white.
Form: Bush.
Growth: Vigorous, dwarf, upright.
Foliage:
Number of leaflets on normal mid-stem leaves.-5.
Size.-Small.
Quantity.-Normal.
Color.-New foliage: Bronze-red. Old foliage: Dark glossy green.
Leaflets:
Shape.-Pointed oval.
Texture.-Glossy, smooth.

Edge.-Serrated.
Serration.-Single, small.
Petiole.-Rachis: Reddish. Underside: Rough, with prickles.
Stipules.-Long to medium, serrated.
Disease resistance.-Resistant to powdery mildew and rust under normal growing conditions at Somis, Calif.
Wood:
New wood.-Color: Reddish. Bark: Smooth.
Old wood.-Color: Green. Bark: Smooth.
Prickles:
Quantity.-On main canes from base: Ordinary. On laterals from main canes: Ordinary.
Form.-Short, hooked slightly downward.
Color when young.-Red.
Small prickles:
Quantity.-On main stalks: None. On laterals: None.
I claim:
1. A new and distinct variety of rose plant of the miniature class, substantially as herein shown and described, char-
acterized particularly as to novelty by the unique combination of its ability to propagate easily from soft wood cuttings,
near continuous bloom during the growing season, novel white edged with red blooms, resistance to disease and its dwarf
but vigorous habit of growth.
*****

END OF DOCUMENT


Jeffrey G. Sheldon

*10EX-17 Exhibit 10-5: Plant Patent for Cherry Tree (Aaron Gee)

Bradford et al. [45] Date of Patent: Apr. 23, 1991
-------------------------------------------------------------
[54] CHERRY TREE (AARON GEE)
[76] Inventors: Norman G. Bradford, 11875 E.

Savana Rd.; Lowell G. Bradford,
12439 E. Savana Rd., both of Le
Grand, Calif. 95333
[21] Appl. No.: 459,256
[22] Filed: Dec. 29, 1989
5
[51] Int. Cl. ...... A01H 5/00
[52] U.S. Cl............. Plt./37
[58] Field of Search .... Plt. 37
P.P. 6,407 11/1988 Bradford et al.... Plt. 37
[57] ABSTRACT
The present invention relates to a cherry tree and more particularly to a new and distinct variety broadly character-

ized by a dense, large size, vigorous, very productive tree that produces fruit that is large in size, dark red in color, very
attractive cosmetically, resistant to cracking and doubling, and matures in the latter part of May under the ecological con-
ditions prevailing at Le Grand (Merced County), Calif. The tree produces a blossom that is self-sterile, thus requiring
cross-pollination by another cherry tree to bear fruit, and the best pollinator determined to date is the Bing Cherry Tree
(unpatented). The variety was developed as the result of a second generation seedling from the Bing Cherry Tree.
1 Drawing Sheet
BACKGROUND OF THE VARIETY
In a continuing effort to improve the quality of shipping fruits, we, the inventors, typically hybridize a large number
of nectarine, peach, plum, apricot, and cherry seedlings each year. The present invention relates to a new and distinct
variety of cherry tree, which has been denominated varietally as "Aaron Gee". The present invention was hybridized by
us in 1982, and the resulting seedling was planted in a cultivated area of our experimental orchard at Bradford Farms
near Le Grand, Calif. in Merced County (San Joaquin Valley). Specifically, the seedling was originated by using an un-
named cherry seedling as the selected seed parent and an unnamed cherry seedling as the selected pollen parent.
However, the unnamed seed parent was a seedling of an open pollinated Bing Cherry Tree (unpatented), making the
present variety a second generation seedling of the Bing.
The instant variety is similar to its grandparent, the Bing Cherry, by being self-sterile and by producing dark red fruit
that is crack resistant, but is distinguished from that variety by being larger in size. 3 days earlier in ripening, and less
prone to doubling.
The present variety is most similar to the Tulare Cherry (U.S. Plant Pat. No. 6,407) by producing fruit that is dark
red in color, resistant to cracking, and not prone to doubling, but is distinguished from that variety by being more vigor-
ous, more productive, and producing fruit that is much larger in size, 5 days later in maturing, and that has a shorter stem.
Subsequent to origination of the present variety of cherry tree, we asexually reproduced it by budding and grafting,
and such reproduction of plant and fruit characteristics were true to the original plant in all respects.
DRAWING
The accompanying photograph shows several detached fruits in various positions to exhibit the characteristics of the
whole fruit in skin color and form, a characteristic fruit divided on its source plane showing the flesh and stone, a branch
with leaves and a bunch of cherries attached, and several detached leaves, all typical of the subject variety.
POMOLOGICAL CHARACTERISTICS
Referring now more specifically to the pomological characteristics of this new and distinct variety of cherry tree, the
following has been observed under the ecological conditions prevailing near Le Grand, Merced County (San Joaquin
Valley), Calif. All major color code designations are by reference to the Inter-Society Color Council, National Bureau of
Standards. Common color names are also used occasionally.
TREE
Size: Large.
Vigor: Vigorous.
Growth: Spreading and dense.
Form: Vase formed.
Hardiness: Hardy.

Production: Very productive.
Bearing: Regular bearer, but not self-fruitful.
Trunk:
Size.-Medium.
Texture.-Medium.
Color.-Dark grayish reddish brown [47. d.gy.rBr].
Lenticels.-Numerous. Color: Moderate reddish brown [43. m.rBr]. Average size: 7/16" [11.1 mm.].
Branches:
Size.-Medium.
Texture.-Medium.
Color.-Newer wood: Brilliant yellow green [116. brill. YG]. Older wood: Grayish reddish brown [46. gy.rBr].
Lenticels.-Numerous, small.
Leaves:
Size.-Medium. Average length: 6" [152.4 mm.]. Average width: 2 1/2 " [69.9 mm.].
Thickness.-Medium.
Form.-Oval.
Apex.-Mucronate.
Base.-Rounded to slightly acute.
Surface.-Glabrous.
*10EX-18 Plant 7,502

Color.-Dorsal surface: Moderate olive green [125. m.01G]. Ventral surface: Moderate yellow green [120.
m.YG].
Margin.-Finely serrate.
Venation.-Pinnately net veined.
Petiole.-Long. Average length: 1 1/2 " [28.6 mm.]. Average thickness: 1/16" [1.6 mm.]. Color: Moderate yellow
green [120. m. YG].
Glands.-Numbers: 2 to 4 per leaf. Position: Some oppositely and some alternately positioned on petiole. Size:
Large. Form: Reniform. Color: Light olive [106. 1.01].
Stipules.-Numerous. Average length: 3/16" [4.8 mm.].
Flower buds:
Hardiness.-Half hardy.
Size.-Medium.
Length.-Medium.
Form.-Free.
Flowers:
Generally.-Self-sterile, must be cross-pollinated by other cherry trees to produce fruit. At the present the Bing
Cherry (unpatented) appears to be a good pollinator.
Blooming period.-Medium compared to other cherries.
Size.-Medium.
Color.-White [263. White].

FRUIT
Maturity when described: Shipping ripe, May 17, 1989.
Date of picking: May 17, 1989.
Size: Uniform, large.

Average diameter axially.-1 1/16" [27.0 mm.].
Average transversely in suture plane.-15/16" [23.8 mm.].
Average in the cheek plane.-1 3/16" [30.2 mm.].
Form: Uniform, symmetrical, and compressed toward the suture.

Cheek plane form.-Slightly oblate.
Longitudinal section form.-Oval.
Transverse section through diameter.-Elliptical.
Suture: An inconspicuous line that extends from the base but discontinues at the apex.
Ventral surface: Rounded.
Stem cavity: Flaring and circular with suture showing on one side only.
Depth.- 1/2 " [3.2 mm.].
Breadth.- 1/2 " [6.4 mm.].
Base: Cuneate.
Apex: Rounded.
Pistil Point: An inconspicuous dot slightly depressed within the suture.
Stem:
Size.-Small. Average length: 1 1/2 " [28.6 mm.]. Average width: 1/16" [1.6 mm.].
Skin:
Thickness.-Medium.
Texture.-Medium.
Tenacity.-Tenacious to flesh.
Amygdalin.-Wanting.
Tendency to crack.-Slight in wet season.
Color.-Vivid dark red [17. v.d.R] over the entire surface.
Flesh:
Color.-From dark pink [6. d.Pk] near the skin to moderate red [15. m.R] near the stone cavity.
Amygdalin.-Moderate.
Juice.-Abundant, rich.
Texture.-Medium, meaty.
Fibers.-Abundant, fine.
Ripens.-Evenly.
Flavor.-Sweet and slightly acidic when ripe, but can be excessively acidic if picking immaturely.
Aroma.-Very slight.

Eating quality.-Very good if ripe, but can be poor if picked immaturely.
Stone
Size: Large.
Length.- 1/2 " [12.7 mm.].
Width.- 1/2 " [9.5 mm.].
Breadth.-5/16" [7.9 mm.].
Type: Semi-freestone.
Form: Obovoid.
Base: Slightly oblique.
Apex: Rounded.
Sides: Equal.
Surface: Smooth.
Ridges: Three small ridges along the ventral edge.
Color: Moderate yellowish brown [77. m.yBr].
Thickness of pit wall: 3/32" [2.4 mm.].
Tendency to split: None observed.
Kernel:
Form.-Oval.
Taste.-Very bitter.
Viable.-Yes.
Average width.-3/16" [4.8 mm.].
Average length.-5/16" [7.9 mm.].
Pellicle color: Moderate yellowish brown [77. m.yBr].
Amygdalin: Abundant.
USE
Market: Fresh market, both local and long distance shipping.
Keeping quality: Medium.
Shipping quality: Medium.
Resistance to insects: No unusual susceptibilities noted.
Resistance to diseases: No unusual susceptibilities noted.
Resistance to cracking: Good.

Resistance to doubling: Good.
Although the new variety of cherry tree possesses the described characteristics under the ecological conditions at Le
Grand, Calif., in the central part of the San Joaquin Valley, it is to be expected that variations in these characteristics may
occur when farmed in areas with different climatic conditions, different soil types, and/or varying cultural practices.
We claim:
1. A new and distinct variety of cherry tree, substantially as illustrated and described, that is similar to its grandpar-
ent, the Bing Cherry (unpatented), by being self-sterile and by producing dark red fruit that is crack resistant, but is dis-
tinguished therefrom and an improvement thereon by producing fruit that is larger in size, 3 days earlier in ripening, and
less prone to doubling, and that is also similar to the Tulare Cherry (U.S. Plant Pat. No. 6,407) by producing fruit that is
dark red in color, resistant to cracking and doubling, but is distinguished therefrom and an improvement thereon by being
more vigorous, more productive, and producing fruit that is much larger in size, 5 days later in maturing, and that has a
shorter stem.
*****

END OF DOCUMENT


Jeffrey G. Sheldon

*10EX-21 Exhibit 10-6: Plant Patent for Chrysanthemum Plant Named Cartago

VandenBerg [45] Date of Patent: Apr. 3, 1990
------------------------------------------------------------
[54] CHRYSANTHEMUM PLANT NAMED CARTAGO
[75] Inventor: Cornelis P. VandenBerg, Salinas,

Calif.
[73] Assignee: Yoder Brothers, Inc., Barberton,

Ohio
[21] Appl. No.: 337,461
[22] Filed: Apr. 13, 1989
4
[51] Int. Cl. ...... A01H 5/00
[52] U.S. Cl............. Plt./74
[58] Field of Search .... Plt./74
Attorney, Agent, or Firm-Foley & Lardner. Schwartz. Jeffery, Schwaab, Mack, Blumenthal & Evans
[57] ABSTRACT
A Chrysanthemum plant named Cartago particularly characterized by its flat capitulum form; daisy capitulum type;
yellow ray floret color; diameter across face of capitulum of up to 7 cm at maturity when grown as a pinched spray pot
mum; uniform eight week photoperiodic flowering response to short days; short plant height when grown as a pinched
pot mum; and spreading branching pattern.

3 Drawing Sheets
The present invention comprises a new and distinct cultivar of Chrysanthemum, botanically known as Dendranthema
grandiflora, and referred to by the cultivar name Cartago.
Cartago, identified as 83-A0107, was originated from a cross made by Cornelis P. VandenBerg in a controlled breed-
ing program in Salinas, Calif., in 1983.
The female parent of Cartago was an unnamed seedling identified as 79-F53001. The male parent of Cartago was an
unnamed seedling identified as 79-U33028.
Cartago was discovered and selected as one flowering plant within the progeny of the stated cross by Cornelis P.
VandenBerg in May of 1984, in a controlled environment in Salinas, Calif.
The first act of asexual reproduction of Cartago was accomplished when vegetative cuttings were taken from the ini-
tial selection in July of 1984 in a controlled environment in Salinas, Calif., by technicians working under formulations
established and supervised by Cornelis P. VandenBerg.
Horticultural examination of controlled flowerings of successive plantings has shown that the unique combination of
characteristics as herein disclosed for Cartago are firmly fixed and are retained through successive generations of asexual
reproduction.
Cartago has not been observed under all possible environmental conditions. The phenotype may vary significantly
with variations in environment such as temperature, light intensity and daylength.
The following observations, measurements and comparisons describe plants grown in Salinas, Calif. and Leaming-
ton, Canada, under greenhouse conditions which approximate those generally used in commercial greenhouse practice.
The following traits have been repeatedly observed and are determined to be basic characteristics of Cartago, which,
in combination, distinguish this Chrysanthemum as a new and distinct cultivar:
1. Flat capitulum form.
2. Daisy capitulum type.
3. Yellow ray floret color.
4. Diameter across face of capitulum up to 7 cm at maturity, when grown as a pinched spray pot mum.
5. Uniform eight week photoperiodic flowering response to short days.
6. Short plant height, requiring 7 to 14 long days after pinch prior to short days and 0 to 1 application of 2500 ppm
B-9 SP to attain a flowered plant height of 25 to 35 cm for year-round flowerings when grown as a pinched pot mum in a
15 cm pot.
7. Branching pattern is spreading.
The accompanying photographic drawings show typical inflorescence and leaf characteristics of Cartago, with the
colors being as nearly true as possible with illustrations of this type.
Sheet 1 is a color photograph of Cartago grown as a pinched spray pot mum grown in a 10 cm pot.

Sheet 2 is a black and white photograph of three views of the inflorescence of Cartago.
Sheet 3 is a black and white photograph showing the upper and under sides of the leaves of Cartago at three stages of
development (mature, intermediate and immature).
Of the commercial cultivars known to the inventor, the most similar in comparison to Cartago is Pert, disclosed in
U.S. Plant Pat. No. 4,764. Reference is made to attached Chart A. which compares certain characteristics of Cartago to
the same characteristics of Pert.
Similar traits are ray floret color, capitulum form and type, branching pattern, plant height and flowering response.
Cartago has a smaller diameter across face of capitulum than Pert. In addition, flower placement of Cartago is more open
and attractive than that of Pert. which often is clubby and with angled flowers.
In the following description color references are made to The Royal Horticultural Society Colour Chart. The color
values were determined on plant material grown as a pinched spray pot mum in Salinas. Calif on Oct. 14, 1988.
Classification:
Botanical.-Dendranthema grandiflora cv. Cartago.
Commercial.-Daisy spray pot mum.
INFLORESCENCE
A. Capitulum:
Form.-Flat.
Type.-Daisy.
Diameter across face.-Up to 7 cm at maturity
B. Corolla of ray florets:

Color (general tonality from a distance of three meters).-Yellow.
*10EX-22 Plant 7,211

Color (upper surface).-5A.
Color (under surface).-5B.
Shape.-Straight, concave.
C. Corolla of disc florets:

Color (mature).-9A.
Color (immature).-144B to 144C.
D. Reproductive organs:
Androecium.-Present on disc florets only; no pollen.
Gynoecium.-Present on both ray and disc florets.
PLANT
A. General appearance:
Height.-Short; 25 to 35 cm as a pinched spray pot mum with 7 to 14 long days after pinch prior to short days and
1 application of 2500 ppm B-9 SP.
Branching pattern.-Spreading.

B. Foliage:
Color (upper surface).-147A.
Color (under surface).-147B.
Shape.-Lobed and slightly serrated.
CHART A
------------------------------------------------
COMPARISON OF CARTAGO AND PERT
------------------------------------------------
Cultivar Cartago Pert
------------------------------------------------
Ray Floret Color Yellow Yellow
Capitulum Form and Type Flat Daisy Flat Daisy
Branching Pattern Spreading Spreading
Diameter Across Face Up to 7 cm 70 to 90 mm
of Capitulum
Plant Height Short Short
Controlled Response 8 Weeks 8 Weeks
------------------------------------------------
Comparisons Made Of Plants Grown As Pinched Spray Pot Mums In Salinas

California
I claim:
1. A new and distinct Chrysanthemum plant named Cartago, as described and illustrated.
*****

END OF DOCUMENT


Stephen R. Seccombe [FNa1]

Chapter 11: Electrical Patent Applications
Preparation of electrical patent applications follows the general principles of preparing mechanical applica-
tions. This chapter deals primarily with those aspects of an electrical application that require special treatment or
are particularly important. Electrical inventions merit special treatment primarily because virtually every elec-
trical circuit or device has, at least in some aspect, a very broad range of equivalents. Another reason is that
laypersons such as jurors find electrical and electronic inventions more difficult to comprehend than the average
mechanical invention. This is understandable in that mechanical operations are directly observable, while most
electrical operations are, at best, only indirectly observable.
[FNa1]. Sheldon & Mak, San Bernardino, California; edited by Jeffrey G. Sheldon.
END OF DOCUMENT



§ 11.1 Introduction
*11-2 § 11.1.1 Scope of Patent Protection
Patent protection is potentially available for novel electronic circuitry, electromechanical apparatus, and
combinations thereof. In addition, the structure of integrated circuits, *11-3 including "read-only memories"
(ROMs), as well as discrete semiconductor devices and processes used for manufacturing those devices or the
end product itself, can be patentable. Moreover, the programs for computers implementing products and pro-
cesses, whether alone or in combination with other aspects of the invention, can also be patentable as discussed
under software patent applications in chapter 12.
END OF DOCUMENT



*11-3 § 11.1.2 Other Forms of Protection
When preparing electrical patent applications, careful consideration should be given to other forms of intel-
lectual property protection that can be available. For example, if the invention includes related computer pro-
grams, the original source and object codes of the programs can be subject to copyright protection, [FN1] wheth-
er those programs are located in ROMs or are magnetically stored on tape or disks. ROMs, special programmed
logic arrays, or custom integrated circuits (ICs) can also be protected as mask works if the requirements of the
Semiconductor Chip Protection Act of 1984 (17 U.S.C. § 901 et seq.) are met. Novel processes used for manu-
facturing the product or devices in the product can also be protectable as trade secrets.
Further, copyright protection is available for creative or original expression wherever it appears, as long as
the creativity or originality is physically independent of or at least conceptually separate from its functionality.
[FN2] Examples of copyrightable matter include the following:
*11-4 • An audiovisual display [FN3] producing the creative expression as images, sounds, or both
• Printed circuit board layouts
• Program source codes, object codes, or both
• Product packaging
• Instructions for set-up, operation, or repair
[FN1]. 17 U.S.C. §§ 101, 117.
[FN2]. Fabrica, Inc. v. El Dorado Corp., 697 F.2d 890, 893, 217 U.S.P.Q. 698, 700 (9th Cir. 1983); Kieselstein-
Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993, 209 U.S.P.Q. 1, 5 (2d Cir. 1980); Trans World Mfg.
Corp. v. Al Nyan & Sons, 218 U.S.P.Q. 208, 210-11 (D. Del. 1982). Cf. Esquire, Inc. v. Ringer, 591 F.2d 796,
199 U.S.P.Q. 1 (D.C. Cir. 1978), cert. denied, 440 U.S. 908 (1979).
[FN3]. 17 U.S.C. § 101.
END OF DOCUMENT



§ 11.2 Claims
*11-4 § 11.2.1 Principles of Claims for Electrical Inventions
§ 11.2.1.1 Use of Functional Language
The heart of any patent application is its claims. A distinctive feature of claims for electrical inventions is
that they emphasize functional relationships, rather than structural limitations, even when the claims are directed
to a device. This is because a great variety of structures are typically available for performing an electrical func-
tion, and the structure itself is of secondary importance. For example, an analog circuit having an output voltage
that is proportional to its input voltage can take any of the following forms:
• A resistive voltage divider or potentiometer (for DC, AC, transient voltages, or a combination);
• A reactive (capacitive, inductive, or both) voltage divider (for AC and transient voltages);
• A transformer (for AC and transient voltages); or
• An operational amplifier (for DC, AC, transient voltages, or a combination).
Each of these alternatives, when connected to an input voltage, is read on by "means for producing an output
voltage in response to the input voltage, the output voltage being proportional *11-5 to the input voltage." Fur-
ther limiting clauses, such as "wherein the input voltage is a DC voltage," or "the magnitude of the output
voltage being greater than the input voltage," read on fewer than all of the above forms.
This example illustrates that functional language or means clauses are especially useful in electrical cases.
This is true for both electrical elements and the associated mechanical structure of the invention. Where a pro-
grammed general-purpose computer forms a part of the invention, functional language is also commonly used.
A second example of the need for functional language in claims for electrical inventions is a mechanical
speed governor invention. The speed governor is a viscous load coupled to the device to be controlled, with the
refinement of variably coupling a control member to the device as a function of the speed of the device, as in a
fly-ball governor. There are a great many electrical and electromechanical implementations of this invention, in-
cluding:
1. A voltage generator coupled to a device for producing a generator voltage, a solenoid-actuated
brake coupled to the device and driven by the generator, and a voltage dropping diode connected
between the generator and the solenoid for activating the solenoid only when the generator voltage ex-
ceeds a predetermined magnitude;
2. The above combination with an amplifier connected between the generator and the solenoid for
enhanced sensitivity;
3. The above combination without the diode, the amplifier being referenced to an offset voltage for
activating the solenoid only when the generator voltage exceeds the predetermined magnitude;
4. The above combination with a motor in place of the solenoid-brake, the motor also urging in-
creased shaft speed when the generator voltage falls below the predetermined magnitude;
*11-6 5. The above combination with a pulse generator (incremental shaft encoder) in place of the

voltage generator and feeding an up-down counter, the counter also being clocked at a constant rate in
the opposite direction such as by a crystal oscillator, the counter having overflow and underflow-pre-
vention logic and driving a digital to analog converter that feeds the amplifier; and
6. The above combination with a programmed digital computer in place of the counter and the
overflow and underflow prevention logic.
The C.C.P.A. has endorsed use of mean-plus-function claims in electrical (and computer) claims. [FN4]
Means-plus-function claims were directed to a computer process for listing information using specified fields
within blocks of stored data. The disclosure included a heavily commented assembly source listing, memory and
base registers, index registers, accumulator registers, etc., of an IBM 7094 data processing system, and the inter-
relationships between the elements. Claim 1 of the application recited:
1. A linked list processor comprising a memory,
means for establishing blocks of storage within said memory,
means for specifying fields within said blocks for storing data signals and linking signals,
said fields being of arbitrary size and location within said blocks,
a plurality of base registers for storing linking signals to prescribed ones of said blocks, and
means for accessing and processing the contents of any prescribed field in said memory.
The Patent Office rejected the application under 35 U.S.C. § 112 as an attempt to cover all means for per-
forming recited *11-7 functions encompassing every possible hardware configuration, but not adequately dis-
closing a single hardware embodiment; as requiring additional enablement for means-plus-function claims
(based on the first and last paragraphs of 35 U.S.C. § 112); and as not being a true combination as claimed, since
the various means-plus-function elements would not exist simultaneously. The C.C.P.A., in reversing the Patent
Office's decision, determined that means-plus-function claims do not require a different degree of disclosure
from that of other types of claims, and that a single structural element can support separate means clauses in a
claim, even when the separate means functions do not coexist simultaneously in the apparatus. In particular, an
index register that performs different functions at different times under program control was considered analog-
ous to a radio transceiver element that plays different roles during transmitting and receiving modes of opera-
tion.
In electrical applications, there should be extensive use of "means-plus-function" claim language. The dis-
closure of a single species usually does not provide an adequate basis for supporting generic claims in unpredict-
able arts, such as chemistry, where it is not obvious from the disclosure of one species what other species will
work. [FN5] However, broad claims can be properly supported by the disclosure of a single species in applica-
tions directed to inventions in arts where the results are predictable. [FN6] Thus generic claims to so-called
mechanical inventions, wherein the behavior of a specified structure is predictable, are distinct from generic
claims to "chemical and biologic" inventions, having unpredictable characteristics in the absence of suitable ex-
perimentation. *11-8 The generic claims to mechanical inventions are interpreted in litigation as broadly as the
prior art allows. [FN7] There is more predictability in mechanical and electrical environments than in chemical
reactions and physiological activity. [FN8] This holding, by pairing electrical and mechanical inventions as to
predictability, provides concrete authority for the benefits of using functional language extensively in electrical
claims.
§ 11.2.1.2 Signal Claims
Signal claims are useful for any invention that involves a communication of information. These claims are
tied to a practical application of using electromagnetic energy and can be used in electrical patent applications.
Since the principal application of such claims is related to computer and software inventions, they are discussed

in more detail in section 12.3.2.4. However, whether or not such claims are directed to patentable subject matter
remains to be determined. [FN8.1]
§ 11.2.1.3 Other Considerations
In electrical cases, the association or cooperation between elements of the claims is or can be electrical and
mechanical as illustrated above. Claims covering combinations of electrical and mechanical structure are quite
common, normally presenting no significant difficulty. For instance, the solenoid-operated brake mechanism of
the governor examples in section 11.2.1.1 above includes an electrical solenoid, with the rest of the mechanism
being mechanical.
Claiming the Commercial Products. In all cases, the claims should focus on combinations that a prospect-
ive infringer would sell. Thus, the broadest claims should not *11-9 include as elements power sources, such as
batteries, and other conventional items that might not be sold as part of the device. Similarly, a desktop com-
puter should not have the keyboard, display, or disk memory components in the broadest claims (unless the in-
vention resides there) because those elements are often supplied from sources other than the computer manufac-
turer, or not at all in the case of "dumb terminals" having no disk memory.
Claims of Varying Scope. The patent practitioner's objective is to obtain claim coverage as broad as is al-
lowable. This must be done without precise knowledge of the scope of the prior art, due to the inherent limita-
tions in any novelty search that might have been done. Another constraint is that the scope of any given piece of
prior art, being subject to interpretation, can be uncertain. These are the usual reasons for writing claims of vary-
ing scope. Another reason exists when the inventor has not determined the precise scope of his contribution to
the art. Where the invention provides an unexpected change in properties, for example, the exact point at which
the change in the physical phenomenon occurs may be unknown, such as when the change is by nature gradual
or incremental at its transition, or when further research is indicated. However, it is not required that the claim
limits be set at the precise technological edge of the invention. [FN9] Thus, the need for claims of varying scope
extends to covering what might later be determined to be the scope of the invention.
It should also be emphasized that the broadest claim in an application should not include anything that is not
required for the invention. This point is critically important when foreign applications might be filed, because
most foreign jurisdictions do not allow significant broadening of the claims subsequent to the priority date. For
these reasons, and *11-10 because electrical inventions can have a wide range of equivalents, it is desirable to
use functional language extensively in the claims.
[FN4]. In re Knowlton, 481 F.2d 1357 (C.C.P.A. 1973).
[FN5]. M.P.E.P. § 2163.03 (1997).
[FN6]. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 3 U.S.P.Q.2d 1737, 1743 (Fed. Cir. 1987); Gould
v. Mossinghoff, 711 F.2d 396, 400, 219 U.S.P.Q. 393, 396 (D.C. Cir. 1983); In re Cook, 439 F.2d 730, 734, 169
U.S.P.Q. 298, 301 (C.C.P.A. 1971); In re Vickers, 141 F.2d 522, 527, 61 U.S.P.Q. 122, 127 (C.C.P.A. 1944).
[FN7]. Nationwide Chem. Corp. v. Wright, 192 U.S.P.Q. 95, 105 (M.D. Fla. 1976).
[FN8]. In re Hogan, 559 F.2d 595, 606, 194 U.S.P.Q. 527, 538 (C.C.P.A. 1977) (emphasis added).

[FN8.1]. See Interim Guidelines for the Examination of Patent Applications for Patentable Subject Matter Eli-
gibility, 1300 OG 142 (which tentatively states signal claims are not patentable subject matter).
[FN9]. Andrew Corp. v. Gabriel Elecs., Inc., 847 F.2d 819, 6 U.S.P.Q.2d 2010 (Fed. Cir. 1988).
END OF DOCUMENT



§ 11.2 Claims
*11-10 § 11.2.2 Practice
The preparation of at least a preliminary set of claims is an early goal in preparing the application. The first
part of this task is to understand what are the key features of the invention that justify the application. A con-
venient way to do that is to review the search file if a novelty search was done. From that point one or more
main claims can be "rough drafted," preferably in outline form. It is important that only the essential and novel
features be included. The main claim should be limited, if possible, to a novel combination that is generic to all
aspects and equivalents of the invention. At least at this stage, every main element should be expressed function-
ally, if possible, with recitations of functional relationships among the elements. A recommended syntax is "(a)
[name] means for providing _______ in response to _______." For example, "(b) control circuit means for
providing the motor drive signal in response to a transducer signal." For the previously discussed example of
the speed controller, the following is an apparatus claim that is generic to each of the electrical embodiments:
1. A speed regulator for maintaining a set-point speed of a rotatably driven shaft, the speed of the shaft
being responsive to torque loading of the shaft, the regulator comprising:
(a) generator means connected to the shaft for producing an electrical rate signal, the rate signal having
a rate parameter proportional to the rotational speed of the shaft, the rate parameter having a set-point value
at the set-point speed; and
(b) brake means operatively responsive to the rate signal for applying a control load torque to the shaft,
*11-11 whereby the speed of the shaft is maintained approximately equal to the set-point speed by the
application of the control load torque.
The key elements, and especially the functionally claimed elements, are further claimed in dependent
claims, specific structure being detailed for every functional feature. For the previous example, with the up-
down counter embodiment being the preferred embodiment, the following dependent claims are suggested:
2. The regulator of claim 1, further comprising amplifier means for producing a brake drive signal in re-
sponse to the rate signal, the brake signal being coupled to the brake means for driving the brake means at
enhanced sensitivity.
3. The regulator of claim 2, further comprising offset reference means for inhibiting the brake drive sig-
nal when the rate parameter is less than the set-point value.
4. The regulator of claim 2, wherein the generator means comprises a pulse generator means for produ-
cing the rate signal, wherein the rate parameter is a periodic waveform frequency, the set-point value being
a set-point frequency.
5. The regulator of claim 4, further comprising:
(a) clock means for defining the set-point frequency;
(b) up-down counter means for producing a digital signal in response to the clock means and the pulse
generator means, the counter means incrementing in response to one of the clock means and the pulse gener-
ator means, the clock means decrementing in response to the other of the clock means and the pulse generat-

or means;
(c) gate means for inhibiting the counter means from overflowing and underflowing; and
(d) converter means for producing the brake drive signal in response to the digital signal.
6. The regulator of claim 5, wherein the up-down counter means comprises an integrated circuit bidirec-
tional counter.
*11-12 7. The regulator of claim 6, wherein the brake means comprises torque motor means for bidirec-
tional application of torque to the shaft, whereby a control drive torque is applied to the shaft for raising the
speed of the shaft when the shaft speed is less than the set-point speed, the combination of the control load
torque and the control drive torque being a bidirectional drive torque.
8. The regulator of claim 5, comprising a programmable digital computer, the up-down counter means
and the gate means comprising a stored program sequence of the computer.
Typically, issues related to the drawings and the prior art arise during claim drafting. At these times it is ap-
propriate to redirect the effort to those areas. This is especially true for the drawings, which often have a long
lead-time for preparation. However, the claims should be well developed before the drawings are committed to
final form because, as discussed below, every claimed feature must be shown in drawings as well as described in
the specification.
END OF DOCUMENT



§ 11.3 Drawings
*11-12 § 11.3.1 Content of the Drawings
In electrical cases and cases combining electrical features with other disciplines, it is generally preferred to
include a functional block diagram that encompasses the whole invention, along with other figures, such as cir-
cuit diagrams, flow diagrams, and timing diagrams. Particular attention should be given to showing (and de-
scribing) circuit details at the heart of the invention in view of the requirement that every claimed feature of the
invention must be shown in the drawings as well as described in the specification. [FN10] Features that *11-13
are shown merely by blank boxes of block diagrams, while not fatal under the first paragraph of 35 U.S.C. § 112
if they are conventional and determinable without undue explanation, are nevertheless grounds for objections to
the drawings. [FN11] For example, the legends "ENCODER," "MEM.," "DTMF GEN.," "LATCH," and "R.
CLOCK" were added to Figure 2 of Patent No. 4,918,717 in response to an objection to the drawings, as shown
in Exhibit 11-1.
Where the timing of electrical signals is not routine, there should be a timing diagram that shows the se-
quence of operation. It is often advantageous to use connecting arrows between transitions of at least some of
the signals to show cause and effect, as demonstrated by the timing diagram of Exhibit 11-2.
Block diagrams, due to their simplicity, are often preferred in electrical cases because the selection of the
exact apparatus corresponding to a block is often well within the knowledge of one skilled in the art. As stated
by the C.C.P.A. in In re Ghiron, [FN12] "Functional-type block diagrams may be acceptable and, in fact, prefer-
able if they serve in conjunction with the rest of the specification to enable a person skilled in the art to make
such a selection and practice the claimed invention with only a reasonable degree of routine experimentation."
When one having skill in the art is enabled by block diagrams, then the disclosure requirement is satisfied. The
specification does not need to be so detailed as to amount to production specifications. Unnecessary detail has
been criticized by the former Court of Claims and Patent Appeals, for example, in In re Knowlton. [FN13] In
that case, the court emphasized that, while the disclosure needs to be complete, it must *11-14 also be concise,
and that the disclosure is directed to those skilled in the art. [FN14]
Block diagrams may not be enough, however, in cases having unconventional or complex circuitry. In such
cases, it is better to draw the circuit so that there will be no question as to how the circuit works. [FN15] For ex-
ample, Figure 2 in Patent No. 4,739,275 (Exhibit 11-3) is a block diagram of a ground fault detector circuit for a
D.C. load. Although the block diagram and accompanying description might sufficiently convey how to practice
the invention to one having ordinary skill, it is better to show and describe further details of the actual circuit, as
given in Figure 3 of the '275 patent (Exhibit 11-4). Block diagrams can also fail if there is no accompanying dis-
closure describing how to interconnect the various elements in the diagram. [FN16]
Accordingly, block diagrams are preferred for illustrating well-known elements. However, when a block
diagram represents some "control" or "timing" device, care must be taken to verify that such circuits are conven-

tional or actually exist as off-the-shelf items. The devices must be identified in the specification, as discussed
below.
Further, a series of blocks connected by a single line can be insufficient where each single line is clearly an
abbreviation of much more complex interconnections, especially where the blocks relate to different commercial
products from different manufacturers. In such cases, the use of the single-line abbreviations should be restricted
to representations of only those lines that would be clearly understood, like address and data lines, with the other
connections separately drawn and labeled. Further, if any of the lines are to differently designated connections
of the products, the proper designation should be given at each connection.
*11-15 A good example of a schematic block diagram of a control system is shown in Patent No. 3,969,614
to Moyer et al. (reproduced below as Exhibit 11-5), which discloses a programmable digital computer used for
controlling an automobile internal combustion engine in which the computer performs calculations in response
to sensed conditions. The main purpose of this type of figure is to provide quick and easy access so that the
reader will have an overall understanding of the invention.
Where the invention is to be claimed as a process, it is important to include a flow diagram of the whole
process, including details as needed for enablement. The flow diagram should show each claimed element of the
process. A flow diagram is also helpful to the understanding of complex or closed-loop electronic circuitry by
depicting operation of the circuitry as if it were a process. Moreover, the use of a flow diagram is likely to
broaden the scope of apparatus claims having functionally claimed elements. For example, the flow diagram of
Exhibit 11-6 for a simple analog closed loop position control system can provide an enabling disclosure for a
computer implementation of the system.
[FN10]. 35 U.S.C. § 113; 37 C.F.R. § 1.83(a) (1992).
[FN11]. In re Donohue, 550 F.2d 1269, 1271-72, 193 U.S.P.Q. 136, 137-38 (C.C.P.A. 1977); Ex parte Billottet,
192 U.S.P.Q. 413, 415 (Pat. Off. Bd. App. 1976).
[FN12]. In re Ghiron, 442 F.2d 985, 169 U.S.P.Q. 723, (C.C.P.A. 1971).
[FN13]. In re Knowlton, 481 F.2d 1357, 178 U.S.P.Q. 486 (C.C.P.A. 1973).
[FN14]. Id., 178 U.S.P.Q. at 493-94.
[FN15]. See In re Donohue, 550 F.2d 1269, 193 U.S.P.Q. 136 (C.C.P.A. 1977).
[FN16]. See In re Scarbrough, 500 F.2d 560, 182 U.S.P.Q. 298 (C.C.P.A. 1974).
END OF DOCUMENT



§ 11.3 Drawings
*11-15 § 11.3.2 Format of the Drawings
Graphical symbols and labeled representations can be included in all types of patent drawings under 37
C.F.R. § 1.84(n), [FN17] but they are particularly relevant to electrical *11-16 cases. Most discrete circuit ele-
ments have conventionally recognized circuit symbols, which should normally be used. Examples of historically
conventional symbols that have been approved by the Patent and Trademark Office used to appear at 37 C.F.R. §
3.61. Although "part 3" is now reserved, the former symbols from an earlier edition are reproduced above in
chapter 5, as Exhibit 5-22. It is also common to represent more complex integrated circuits, known as large-
scale integration (LSI) devices, by simple rectangles. It is required, however, that all such representations (those
that do not intrinsically convey information) include a descriptive legend, aside from any sequential or "content-
neutral" reference designation. Acceptable legends include "BUFFER," "SHIFT REG.," "ADDER," and the like.
These and other terms are defined in technical dictionaries. [FN18]
When content-neutral graphic representations, such as rectangles, are used for generally available members
of a generic logic family, the part number or generic type designator can be used. This can be done with differ-
ent degrees of "genericness," depending on the importance of stressing particular circuit family standards. For
example, many logic families have functionally equivalent chip configurations that are identified by the same
type number. The quad two-input NAND gate is one such configuration, variously available as 54/7400 (bipolar
transistor-transistor-logic, or TTL), '74L00 (low-power TTL), '74LS00 (low-power Shottkey TTL), '74C00
(CMOS), etc. Where the particular family is not critical to the invention, the designation "'00" is understood to
mean one or more two-input NAND gates. Where low power consumption is a primary objective and speed is
not critical, it is customary to designate the same logical function as "'C00" or "74C00." Other generic designa-
tions are the integers up to about 400. Several logic symbols for members of *11-17 this well-known generic
series of integrated circuits are reproduced as Exhibit 11-7. In figures having shaped logic symbols that convey
the logical function, as in the configurations 00-32, 74, etc., it is customary to omit the numeric designations for
those functions. Of course, the logic family and its availability should be identified in the description. When for-
eign patent applications are being considered, it may be preferable to use type designator or abbreviations such
as "BUF.," "S/R," "ADD.," etc., in view of the practice in some countries to avoid English words and phrases.
[FN17]. 37 C.F.R. § 1.84(n) (1997) states:

Symbols. Graphical drawing symbols may be used for conventional elements when appropriate. The ele-
ments for which such symbols and labeled representations are used must be adequately identified in the specific-
ation. Known devices should be illustrated by symbols which have a universally recognized conventional mean-
ing and are generally accepted in the art. Other symbols which are not universally recognized may be used, sub-
ject to approval by the Office, if they are not likely to be confused with existing conventional symbols, and if
they are readily identifiable.

[FN18]. E.g., MICROSOFT PRESS COMPUTER DICTIONARY (1991).
END OF DOCUMENT



§ 11.4 Description
*11-17 § 11.4.1 Content -- Full Disclosure of Equivalents
The disclosure requirements set forth in 35 U.S.C. § 112, first paragraph, apply in electrical cases no less
than in other United States patent applications. These requirements are the description requirement, i.e., a writ-
ten description of the invention; the enablement requirement, i.e., the manner and process of making and using
the invention such that one skilled in the art can make and use it; and the "best mode" requirement, that is, the
best mode contemplated by the inventor for carrying out the invention.
In electrical cases, the disclosure merits special attention because of the extensive use of functional lan-
guage that is typically in the claims. The scope of functional claim limitations is related to the disclosure, being
limited to those embodiments having an enabling description in the application and equivalents thereof. Thus the
disclosure of alternative embodiments can be expected to yield greater dividends for broadening the claim cov-
erage in electrical cases than in mechanical cases.
Aside from the above, there is a great need for providing an understandable disclosure in electrical applica-
tions so that those who do not have skill in the art can understand the *11-18 scope of the patent. This need is
often satisfied by the use of block diagrams of electrical circuits in preference to the use of schematics or full-
blown circuit diagrams.
The need for disclosing equivalents in an electrical application is demonstrated by a specification fully de-
scribing an analog device for performing a particular function. Although the description of how to make the ana-
log device automatically teaches one skilled in the art how to make a comparable digital and computer device,
new claims to the digital and computer device presented for the first time by way of an amendment can be rejec-
ted as being unsupported by the original patent specification under 35 U.S.C. § 112. [FN19] That problem can
be avoided by disclosing and claiming the digital and computer devices.
Similarly, in an application for an electronic control circuit that describes only discrete components, such as
a multiplier, adder, comparator, level discriminator, etc., without mentioning the use of a microprocessor or pro-
grammed digital computer, new claims reciting a microprocessor will be rejected under 35 U.S.C. § 112, first
paragraph, as being unsupported by the specification. This is true even though it might be obvious to use a mi-
croprocessor for performing the previously described control operations of the control circuit.
It is sometimes possible to broaden the scope of the broadest claims beyond that claimed in the original ap-
plication. However, any claimed element that is to be removed by amendment or reexamination must be "non-
critical and unimportant," as stated by the Federal Circuit in In re Wilder. [FN20] In Wilder, a limitation that a
tape be synchronously scanned was considered critical, and could not be removed from the claims. The Wilder
court distinguished In re *11-19 Peters, [FN21] wherein the shape of a tapered supporting end of a metal strip
was considered noncritical.

Reference to existing equipment for providing an enabling description in the specification is commonly
used to avoid unnecessary complication of the disclosure. Care must be taken, however, to identify the existing
equipment specifically. The easiest way to identify a circuit is by stating its model number or other designation
and manufacturer or other source, with its city location. For example, "A device suitable for use as the phase
locked loop circuit 44 is available as model MM55106 PLL frequency synthesizer from National Semiconductor
Corp. of Santa Clara, CA." Patents or other publications can be relied upon for component identification. For ex-
ample, a reference to a publication for nonessential information can be "The circuit for a 23-channel, dual crys-
tal frequency synthesizer is given at page 4-25 of the National Semiconductor CMOS Databook, 1977, which is
incorporated herein by this reference." A reference to a United States patent can be: "A non-inductive tuner suit-
able for use in the present invention is described in United States Patent No. 4,833,419 to Chrystie, entitled Non-
Inductive Radio Apparatus, most particularly relative to Figs. 5 and 9 therein, which patent is incorporated
herein by this reference." When, however, such disclosures are incompatible with the particular circuit or other
apparatus of the application, component identification in this manner is inadequate for providing an enabling
disclosure.
Identification of a block diagram or any disclosed portion of the invention as being "similar" to a referenced
publication or device should not be used unless the exact similarities and differences are set forth. For example,
in In re Brown, [FN22] an inertial platform and sensors were shown in a simplified block diagram and disclosed
as being "similar" to *11-20 an N7 platform of North American Avionics, Inc. in association with a noninertial
velocity reference that was disclosed as "an electromagnetic log similar to that used by the U.S. Navy." The
C.C.P.A. sustained a rejection under 35 U.S.C. § 112 based on inadequate disclosure of "signal processing
means" and "difference means" that receive and process signals from functionally recited counterparts of the in-
ertial platform and the noninertial velocity reference. The court emphasized that the platform being described as
"similar" to another raises the obvious questions of how similar and what are the differences?
[FN19]. See In re Rasmussen, 650 F.2d 1212, 211 U.S.P.Q. 233 (C.C.P.A. 1982).
[FN20]. In re Wilder, 736 F.2d 1516, 222 U.S.P.Q. 369 (Fed. Cir. 1984).
[FN21]. In re Peters, 723 F.2d 891, 217 U.S.P.Q. 952 (Fed. Cir. 1983).
[FN22]. See In re Brown, 477 F.2d 946, 177 U.S.P.Q. 691 (C.C.P.A. 1973).
END OF DOCUMENT



§ 11.4 Description
*11-20 § 11.4.2 Style
Electrical circuit diagrams that are used in industry typically have component reference designations that are
suggestive of the various component types in the circuit, usually having one or more letters for designating a
type, followed by a sequentially assigned numeral. For example, R1, R2, etc., conventionally refer to "resistor
1," "resistor 2," etc. A table of component types and common industrial designations that are used for them ap-
pears as Exhibit 11-8.
Generally, reference numbers are used in the drawings to identify the components and to coordinate descrip-
tion of the invention with the drawing. However, it is often more convenient to use conventional or client-
supplied designations, when they are present in schematics, logic diagrams, and other materials that are provided
by the client, instead of or in addition to reference numbers. When these materials are used in preparing the ap-
plication, it is usually easier to leave in the supplied designations. Then, the designations that are so provided
can be referred to in the description, rather than one of the content-neutral sequential integers that the patent
practitioner would have applied. The extra information that is conveyed by the client's designations contributes
to an enabling disclosure.
*11-21 Another advantage of use-descriptive designations rather than reference numbers in the drawings is
that the selection and operation of many circuit components are sufficiently understood by those having skill in
the art without additional descriptive matter in the specification, particularly when suggestive designators, such
as those of Exhibit 11-8, are used. Thus, while there must be a description of each claimed element, many circuit
components that are shown in the drawings do not require further description. For example, in the circuit of Ex-
hibit 11-9, a description of the triangle-shaped symbol U10 or the overall circuit 30 as an "operational amplifier
having current inputs X and Y, appropriate power connections (not shown), and an output Z that is proportional
to X-Y" is sufficient, without more, to enable one skilled in the art to build and operate the circuit, provided that
the inputs X and Y and the destination of the output Z are appropriately described. Thus, no further description
of the resistors R1-R5 is necessary.
Accordingly, it is recommended that industrial-style component designators, such as those in Exhibit 11-8,
be used, at least for routinely used components not requiring further description.
Similarly, the use in the drawings of component values, such as resistance as in the previously discussed
Exhibit 11-9, as well as capacitance, inductance, etc., also reduces the amount of circuit description that is
needed for supporting the claims.
The description can also be streamlined by treating groups of components as singular circuit elements. For
example, most analog circuits, such as operational amplifiers and timers, combine in an integrated circuit many
discrete components. Where the configuration and selection of the discrete components are routine, the whole

functional circuit can be identified and described as a single entity. For example, the triangle symbol U10 of Ex-
hibit 11-9 can be used alone as illustrated in Exhibit 11-10, with the inputs X and Y shown directly connected to
the vertical leg of the symbol, particularly *11-22 where X and Y are voltage signals, and where U10 is not a
critical feature of the invention.
As discussed above, it is important to at least allude to or suggest alternative configurations that are widely
divergent from those disclosed in detail. For example, a digital implementation of an analog circuit should be
suggested, and vice versa. Similarly, computer implementations of various portions or all of an electric circuit
should be mentioned where the circuitry has significant complexity.
END OF DOCUMENT



*11EX-1 Exhibit 11-1: Figure with Legends Added

END OF DOCUMENT



*11EX-3 Exhibit 11-2: Timing Diagram

END OF DOCUMENT



*11EX-5 Exhibit 11-3: Block Diagram of Ground Fault Detector Circuit

END OF DOCUMENT



*11EX-7 Exhibit 11-4: Details of Ground Fault Detector Circuit

END OF DOCUMENT



*11EX-9 Exhibit 11-5: Schematic Block Diagram of a Control System

END OF DOCUMENT



*11EX-11 Exhibit 11-6: Simple Analog Closed Loop Position Control System

END OF DOCUMENT



*11EX-13 Exhibit 11-7: Selected Logic Symbols for Members of a Series of Integrated Circuits

END OF DOCUMENT



*11EX-15 Exhibit 11-8: Table of Component Types and Common Industrial Designations
-----------------------------------------------------------------------------
Commonly Used Designations for Typical Electrical and Electronic Components
-----------------------------------------------------------------------------
Device Type Typical Designations
-----------------------------------------------------------------------------
Resistor R
-----------------------------------------------------------------------------
Capacitor C
-----------------------------------------------------------------------------
Coil or Inductor L
-----------------------------------------------------------------------------
Diode D or CR
-----------------------------------------------------------------------------
Zener Diode Z or D
-----------------------------------------------------------------------------
Relay Contact K
-----------------------------------------------------------------------------
Transistor Q
-----------------------------------------------------------------------------
Integrated Circuit U
-----------------------------------------------------------------------------
Transformer T
-----------------------------------------------------------------------------
Motor M
-----------------------------------------------------------------------------
Generator G
-----------------------------------------------------------------------------
Fuse F
-----------------------------------------------------------------------------
Switch S or SW
-----------------------------------------------------------------------------
Plug P
-----------------------------------------------------------------------------
Socket S
-----------------------------------------------------------------------------


END OF DOCUMENT



*11EX-17 Exhibit 11-9: Operational Amplifier Circuit

END OF DOCUMENT



*11EX-19 Exhibit 11-10: Operational Amplifier Block

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 12: Patent Applications for Software and Methods of Doing Business
[FNa1]
Patent applications directed to software have unique requirements and problems associated with them not
found in the typical patent application. For example, there can be issues relating to whether the claimed subject
matter is patentable subject matter and issues relating to how to teach one of ordinary skill in the art how the
software works. These and other issues are dealt with in this chapter.
The discussion below assumes that the reader is already familiar with the basic principles of writing patent
applications as discussed in the preceding chapters, and has a working knowledge of computer hardware and
software.
Moreover, the discussion below provides many recommendations for writing software applications. These
recommendations must be treated only as recommendations and not as absolute rules. They must be judiciously
applied on a case-by-case basis.
[FNa1]. This chapter was originally written by Terrance Meador (Baker, Maxham, Jester & Meador, San Diego,
California) and Norman Brunell (Southwestern Law School, Los Angeles, California), and was edited by Jeffrey
G. Sheldon. Portions of this chapter are based on PLI's companion book, Landis on Mechanics of Patent Claim
Drafting.
END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
*12-3 § 12.1.2 Alternative Forms of Protection
Protection for software-related inventions is not limited to utility patents. Software inventions can often be
protected by design patents, copyrights, trade secrets, and mask works. However, each of these forms of protec-
tion has disadvantages.
Design patent protection can only protect the ornamental design aspects of graphical elements of the soft-
ware, such as icon designs. [FN1] Although copyright protection for software is *12-4 relatively easy and inex-
pensive to obtain, the scope of protection available may be limited to the literal expression of the software as
presented in the source or object code listing, or specific aspects of the user interface. A copyright protects only
the expression of ideas, whereas a patent can effectively protect the ideas themselves. Trade secret protection of
software is often difficult to maintain because of the availability of sophisticated reverse engineering, reverse as-
sembly, and decompilation procedures. Mask work protection is limited to certain aspects of a specific physical
implementation of software on a chip. In addition, neither copyright nor trade secret protection can be used to
prevent the independent creation of the same or similar software by a competitor.
Drafting.
[FN1]. In general, design patents directed to icons have been rejected on the basis that a picture without more is
not patentable unless embodied in an article of manufacture. Ex parte Tayama, 24 U.S.P.Q.2d 1614 (Bd. Pat.
App. & Interf. 1992). However, the Patent Office has suggested, in dicta, that a computer software icon is pat-
entable in a design patent if it is described as an "information icon for display screen of a programmed computer
or the like." Ex parte Strijland, PTO Appeal No. 92-0623 (Bd. Pat. App. & Interf. Apr. 2, 1992). See also
Guidelines for Examination of Design Patent Applications for Computer-Generated Icons, 61 Fed. Reg. 11,380
(Mar. 20, 1996); PTS Notice on Design patent Application for Computer-Generated Icons, PT (J CBMA) (Mar.
27, 1996).
END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
*12-4 § 12.1.3 Advantages of Utility Patents
Utility patent protection for software-related inventions provides protection that cannot be achieved by other
means because the patent provides an exclusive right to the subject matter of the underlying invention. Once a
patent has issued, the scope of protection for the claimed invention cannot be defeated by reverse engineering or
decompilation techniques. Because patent protection covers the subject matter of the underlying invention, pat-
ents provide economic protection for the patentee against subsequent independent creation, modification, altera-
tion, or even improvement of the software product by a competitor, as long as the competitor's product includes
the patented invention.
Drafting.
END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
*12-5 § 12.1.4 Definitions
In this chapter, the term "computer program" means a writing which sets forth instructions which can direct
the operation of an automatic system capable of storing, processing, retrieving, or transferring information.
[FN2] When the program is entered into a computer system, it forms a part of the system referred to as "soft-
ware." Software is distinguished from the physical parts of a computer system, such as memory chips, which are
called "hardware." Software enables a computer to handle information and to control information flow.
Software can be classified into three broad categories. The first category is programs defining sequences of
machine operating states or sets of elemental functions that are necessary to operate a computer; operating sys-
tems and instruction sets are in this category. The second category is utility functions used by an operating sys-
tem to program a computer or complement the functions of the operating system. This category includes soft-
ware entities such as compilers, assemblers, I/O routines, and database programs. The third category is the
highest level of software, that is, a set of statements in a programming language that form a procedure intended
to solve a particular problem. Such a program is usually called an "application" program. It is "dispatched" or
"executed" on a computer system that includes software in the first and second categories.
Drafting.
[FN2]. This is in accord with the CONTU definition. Report of the Software Subcommittee to the National com-
mission on New Technological Uses of Copyrighted Works (CONTU) (July 13, 1978).
END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
*12-6 § 12.2 Patentable Subject Matter
Inventions involving computer software can give rise to issues as to whether the claimed invention is pat-
entable subject matter under 35 U.S.C. § 101. Courts have excluded certain subject matter areas from patent pro-
tection under § 101, including mathematical expressions, mathematical algorithms, printed matter, and mental
steps. [FN3]
Printed matter by itself is not patentable. However, printed matter in combination with a tangible object can
be patentable if they are interrelated so as to produce a new and useful product. If a tangible object achieves its
purpose without the printed matter, the printed matter adds nothing to the patentability of the tangible object.
[FN3.1]
When patent applications directed to computer programs were first submitted to the Patent Office, the Of-
fice refused to examine these applications on grounds that they lacked the proper classification techniques and
requisite search files. [FN4] However, the courts refused to exclude computer software from the scope of pat-
entable subject matter. [FN5] Instead, the courts limited the patentability of software applications that claimed a
"mathematical algorithm." [FN6] In In re Freeman, [FN7] the C.C.P.A. defined a two-step test to determine
whether a claim recites patentable subject matter:
1. First, does the claim directly or indirectly recite a mathematical algorithm? A mathematical al-
gorithm comprises mathematical calculations, formulae, or *12-7 equations represented directly in
mathematical symbols or indirectly in prose form.
2. If a mathematical algorithm is recited, the claim must be further analyzed to ascertain whether in
its entirety it wholly preempts use of the mathematical algorithm. [FN8] A claim is not wholly preempt-
ive if the mathematical algorithm is implemented in a specific manner to define structural relationships
between the physical elements of the claim (in apparatus claims) or to refine or limit claim steps (in
process claims). [FN9]
Thus, the judicial exclusions apply only to software claims that recite "mathematical algorithms." Further-
more, if a mathematical algorithm is recited, the claim may still be patentable if it defines the structural rela-
tionship between the physical elements of an apparatus or if it refines or limits process steps.
In Diamond v. Diehr, [FN10] the Supreme Court modified and endorsed the C.C.P.A. test. The Court held:
When a claim containing a mathematical formula implements or applies that formula in a structure or
process, which, when considered as a whole, is performing a function which the patent laws were designed
to protect (e.g., transforming or reducing an article to a different state or thing) then the claim satisfies the
requirements of § 101. [FN11]
The Federal Circuit attempted to reconcile the Diehr test with the two-step C.C.P.A. test in In re Grams.

[FN12] Under the Federal Circuit test, the threshold question remains the same, that is, does the claim recite a
mathematical algorithm? However, once a mathematical algorithm is found, the inquiry *12-8 then branches in-
to two separate strands. The claim is patentable if either:
(1) The subject matter outside the mathematical algorithm is patentable by itself. In other words, if
the mathematical algorithm is carved out of the claim, and the remaining steps or elements recited in the
claims define patentable subject matter, then the claim is patentable; or
(2) The mathematical algorithm limits or refines a process step or defines a structural relationship
between the physical elements of an apparatus claim. [FN13]
The test typically used to determine patentability of computer programs was the Freeman-Walter-Abele
two-step test; however, the Federal Circuit in 1998 essentially repudiated it. The test now to be applied is the
State Street Bank [FN14] test:
1. Is the claim directed to at least one of the four enumerated categories of patentable subject matter
of section 101, typically--in the case of a software invention--a machine or process?
2. If the claim is directed to one of the categories of patentable subject matter, does it fall into one
of the judicially created exceptions, such as abstract ideas, natural phenomena, laws of nature, and
mathematical algorithms? (The mathematical algorithm exception is really a subset of the abstract idea
exception.)
3. As to mathematical algorithms, is the claim directed to subject matter representing nothing more
than abstract ideas, or is the algorithm applied in a "useful" way, such as transformation of data into a
useful, concrete, and tangible result?
*12-9 Moreover, another basis that has been used to reject software claims was repudiated in State Street
Bank. The business method exception has been put to rest as "ill-conceived." [FN15] Similarly, the printed mat-
ter exception has been seriously questioned by the Federal Circuit. [FN16] The Federal Circuit has also held that
the State Street Bank test is equally applicable to process and machine claims: whether the invention claimed is
a machine or process is not relevant to the analysis. [FN17]
Thus, computer software claims are generally patentable. For example, transformation of discrete dollar
amounts into a final share price receipt in a data processing system for implementing an investment structure is
patentable subject matter. [FN18] A system of computerized receipt and expenditure analysis that involved
marking checks and deposit slips with machine-readable symbols is directed to patentable subject matter as a "re-
cord-keeping machine system." [FN19] A method for producing a message record for long distance telephone
calls, improved by addition of an indicator for the long distance carrier used, is patentable subject matter.
[FN20]
The Patent and Trademark Office has established guidelines for examiners to determine whether a claimed
invention relating to computer software is statutory subject matter. These guidelines appear at M.P.E.P. section
2106. In addition, *12-10 the Office of the Solicitor published a paper in the Patent and Trademark Office Offi-
cial Gazette for the benefit of the public providing guidelines in determining whether a computer program
presents statutory subject matter under 35 U.S.C. § 101. [FN21] The paper updated M.P.E.P. section 2106 with
regard to patenting computer programs.
Further guidelines and legal analysis for examination of computer-related inventions have been provided by
the Patent Office. [FN22] According to these guidelines, examiners are to use the following sequence of steps
for examining computer-related inventions:
1. Determine what the applicant has invented and is seeking to patent, based on a review of the spe-

cification, drawings and claims. This step includes identifying and understanding any utility and/or
practical application asserted for the invention, in determining what the applicant has invented, and re-
viewing the claims.
2. Conduct a thorough search of the prior art.
3. Determine whether the claimed invention complies with 35 U.S.C. § 101, that is, whether the
claim is directed to statutory subject matter. This step includes classifying the claims as to their proper
statutory category, that is, machine (such as a computer), article of manufacture (such as storage me-
dia), or process. Also determine whether the claimed invention falls within an exception to patentable
subject matter, namely laws of nature, natural phenomena, or abstract ideas.
4. Evaluate whether the application and claims comply with 35 U.S.C. § 112.
5. Determine whether the claimed invention complies with 35 U.S.C. §§ 102 and 103.
*12-11 The PTO provides the following guidance for step 3, determining whether there is statutory subject
matter:
• Product claims sufficiently broad to encompass all mechanisms are to be treated as process
claims.
• Claims that do not fit into any statutory class are not directed to statutory subject matter.
• Intended field of use limitations are not considered if the language does not limit the scope of the
claim.
• Steps of collecting or selecting data are not considered if they are dictated by nothing other than
the performance of a mathematical operation, but they are considered if the steps create data used in a
process representing a practical application of one or more mathematical operations.
• Claims directed to the following subject matter are nonstatuory:
(a) Natural phenomena such as magnetism
(b) Abstract ideas
(c) Laws of nature
(d) "Descriptive material" per se, that is, functional descriptive material such as data structures
and computer programs, and nonfunctional descriptive material such as data structures and com-
puter programs, and nonfunctional descriptive material such as music, literary works, compilations
of data, and mere arrangements of data
(e) Nonfunctional descriptive material, even if stored in a computer-readable medium, for ex-
ample, music recorded on a compact disc
• Claims directed to the following subject matter are statutory:
(a) Functional descriptive material embodied in computer-readable media, such as a
computer-*12-12 readable medium encoded with a data structure or computer program
(b) A computer program as a process where a computer is executing the computer program and
the process results in (i) manipulation of tangible physical objects with the object having a different
physical attribute or structure; (ii) manipulation of data representing physical objects or activities;
(iii) manipulation of the computer itself; or (iv) manipulation of the data being processed by the
computer, for example, digitally filtering noise. For post-solution acts to give rise to statutory sub-
ject matter, the act must represent some "significant use" of the computer-implemented mathemat-
ical operations. A "significant use" is any activity which is more than merely outputting the direct
result of the mathematical operation.
In applying step 3, a claim containing only "means for" elements is not applying the principle of "broadest
reasonable interpretation" when specific circuitry is specified in the specification. Rather, the claim is inter-

preted as an apparatus claim applying paragraph 6 of 35 U.S.C. § 122. Thus, a claim containing only "means
for" clauses, where the claims are broad enough to read on a general purpose computer, is not necessarily direc-
ted to a non-statutory subject matter. [FN23]
The PTO stated that the certain tests previously used for determining subject matter eligibility are not to be
applied. [FN23.1] The tests are the following:
1. Not in the technological arts.
2. The previously discussed Freeman-Walter-Abele test.
*12-13 3. Mental step/human action tests: The presence of mental steps and human steps is imma-
terial. Whether some or all the steps can be carried out by humans, including the human mind, does not
affect patentable subject matter.
4. The machine-implemented test, that is, there can be patentable subject matter even if the claim
fails to recite a computer-implemented process.
5. The per se data transformation test, that is, even if a claimed invention does transform data from
one form to another, that is not by itself sufficient to establish that a claim is eligible for patent protec-
tion.
In applying step 5--determining the nonobviousness of the claimed invention-- nonfunctional descriptive
material, such as music or a literary work, cannot render nonobvious an invention that would otherwise be obvi-
ous.
The PTO has provided additional training materials on how to apply these guidelines to the areas of busi-
ness, artificial intelligence, and mathematical processing applications. [FN24] Reference to these guidelines can
be useful in drafting claims for these types of inventions.
Suggestions are provided in section 12.3.3.3 below as to limitations that can be included in claims for soft-
ware and methods of doing business to help avoid a "nonstatutory" subject matter rejection.
Drafting.
[FN3]. Data structures processed by a computer are not "printed matter." In re Lowry, 32 F.3d 1579, 32
U.S.P.Q.2d 1031 (Fed. Cir. 1994).
[FN3.1]. In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983); In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004).
[FN4]. See Report of the President's Commission on the Patent System, to Promote the Progress of . . . Useful
Arts, 13 (1966).
[FN5]. Gottschalk v. Benson, 409 U.S. 63 (1972).
[FN6]. Id.
[FN7]. In re Freeman, 573 F.2d 1237, 1245-46 (C.C.P.A. 1977).
[FN8]. Id.

[FN9]. In re Walter, 618 F.2d 758, 767 (C.C.P.A. 1978).
[FN10]. Diamond v. Diehr, 450 U.S. 175 (1981).
[FN11]. Id. at 192.
[FN12]. In re Grams, 888 F.2d 835 (Fed. Cir. 1989).
[FN13]. Id. at 838-39.
[FN14]. State St. Bank & Trust Co. v. Signature Fin. Group, Inc. 149 F.3d 1368, 47 U.S.P.Q.2d 1596 (Fed. Cir.
1998).
[FN15]. Id.
[FN16]. In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983); see also In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994)
(holding that the term "manufacture" includes a computer memory on which is stored a particular piece of soft-
ware).
[FN17]. AT&T Corp. v. Excel Commc'ns, Inc., 172 F.3d 1352, 50 U.S.P.Q.2d 1447 (Fed. Cir. 1999).
1998).
[FN19]. In re Johnston, 502 F.2d 765 (C.C.P.A. 1974), rev'd on other grounds sub nom. Dann v. Johnston, 425
U.S. 219 (1976).
[FN21]. 1106 Off. Gaz. Pat. Office 5 (Sept. 5, 1989).
[FN22]. M.P.E.P. § 2106; 1300 OG 142.
[FN23]. In re Alappat, 33 F.3d 1526, 31 U.S.P.Q.2d 1545 (Fed. Cir. 1994); see also n.50.
[FN23.1]. Interim Guidelines for the Examination of Patent Applications for Patentable Subject Matter Eligibil-
ity, 1300 OG 142.
[FN24]. PTO Examination Training Materials on Computer-Related Inventions, reprinted in 56 Pat. Trademark
& Copyright J. (BNA) 769-83 (Oct. 22, 1998).
END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
*12-13 § 12.3 Claims
The claims of a patent define the boundaries of protection provided. The classes of patentable subject matter
that are appropriate for a software invention include machines and *12-14 processes. A third type of claim for
software inventions is a claim for the software product itself.
Claims to a computer program follow a general pattern namely:

1. Preamble: field of use;
2. Pre-algorithm activity developing or gathering data for use in the algorithm;
3. Applying the algorithm to the data; and

4. Using the output of that application of the algorithm; postsolution activity, which may include trans-
forming something physical.
In general, when writing claims directed to a software-implemented invention, claims of varying scope rel-
ative to the invention should be included, just as for any invention. Moreover, claims of varying physical limita-
tions should be included to be sure to have at least some claims directed to patentable subject matter. Thus, the
broad independent claims are drafted, with emphasis on defining the invention broadly based on the limitations
of the prior art. Then, dependent claims and narrower independent claims are added, with varying degrees of
physical limitations to bring the claims more into the physical world.
Drafting.
END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
§ 12.3 Claims
*12-14 § 12.3.1 Identifying the Prior Art
Before drafting claims, and as part of preparing an information disclosure statement, it is necessary to know
what is the prior art. As is true for most inventions, the best source for identifying the prior art is usually the in-
ventor. In addition, conventional searches that investigate the patent literature can be done for computer inven-
tions. However, the majority of the relevant art can still come from the nonpatent literature. This includes tech-
nical literature and publications from conferences such as the Association for Computing Machinery (ACM) and
the Institute of Electronics and Electrical Engineers (IEEE). Much of this prior art is accessible *12-15 through
on-line databases, as discussed in the article, Patentability Searching: Identifying Inventions and Evaluating
Their Patentability. [FN25]
Drafting.
[FN25]. Jeffrey L. Forman, Stephen L. Noe et al., in AIPLA BASIC COMPUTER AND ELECTRONIC PRAC-
TICE SEMINAR (1990).
END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
§ 12.3 Claims
[FN26]
§ 12.3.2.1 Apparatus Claims
Apparatus claims for a software invention typically are written from the perspective that the software con-
figures a computer into a special-purpose machine. The special-purpose machine is claimed as a set of intercon-
nected components, each component performing a specified function, the components collectively enabling the
special-purpose machine to perform its intended function. The components are usually claimed in "means-
plus-function" form.
Thus, a typical apparatus claim takes the form: "A data processing system comprising: . . .," and then sets
forth a series of "means for" clauses for performing various functions with reference to the computer hardware
used. This hardware can include input and output devices such as a mouse, displays, keyboards, and tablets, and
the main computer elements themselves, such as memory, screen managers, and physical storage.
An apparatus claim for a software invention should focus on the functional components of the machine, that
is, the "means for" elements, their interconnections, and the data objects which they use for communication.
These "means for" elements are connected to each other by unconditional links such as subroutine calls, or by
conditional links such as *12-16 branches. In order to provide continuity in execution, a claim typically includes
data objects which are referenced by the functional elements of the program during execution. Such data objects
can be flags, codes, parameters, vectors, and control blocks.
Generally apparatus claims containing "means for" clauses make a claim directed to software patentable
subject matter. [FN27] However, recent decisions suggests that these claims will be subject to a higher degree of
scrutiny. The Board of Patent Appeals and Interferences held that when the only difference between "means for"
claims and method claims is the "means for" term, then the claim should be treated as indistinguishable from the
method claim in analyzing statutory subject matter issues. [FN28] Thus, if only "means for" language is used
without other apparatus limitations, make sure that the claim reads on a patentable method claim.
Even where a general purpose computer is described in the specification, a "means for" clause is not inter-
preted to cover any general purpose computer. Rather, it is limited to a special purpose computer, or micropro-
cessor, programmed to perform the disclosed algorithm. [FN29]
The following examples demonstrate different approaches for claiming a software invention as an apparatus.
Example 1. The following claim is for a software invention directed to a computer program for controlling
access to data resources. The data resources are shared by application programs executing on multiple-computer
complexes. The data is partitioned into groups called congruence classes. When an executing application obtains

access to data in a particular congruence class, a lock is issued preventing any other executing application from
obtaining concurrent access *12-17 to data in that congruence class. Lock information is provided in each com-
puter complex for each congruence class indicating whether an executing application holds, or is waiting for, a
lock on the congruence class. Provisions are made for exchanging wait information between computer com-
plexes. This software invention is claimed as a lock manager which maintains the hold and wait information for
applications executing on one complex and maintains selected wait locks for applications executing on the other
complex, as follows:
Shared resource locking means operable in a multi-processing/multi-programming computing environment

including at least two central electronic complexes interconnected by a communication link and sharing access
to a set of resources organized in at least two congruence classes, comprising:
(1) interest vector means in a first complex for storing the private use and interest of each complex
in each congruence class;
(2) means within said first complex responsive to said interest vector means and to a request for a
resource in a congruence class in which said first complex has private use for selectively granting or
waiting the request based upon the lock records maintained within the first complex; and
(3) means within said first complex responsive to said interest vector means and to a request for a
resource in a congruence class in which a second complex has interest for communicating the request to
the second complex and selectively granting or waiting the request based upon lock records maintained
with the first or second complex. [FN30]
*12-18 This claim recites a combination of "means for" elements. The first element is a data object called an
"interest vector means" that stores the lock information. The second element is a software lock manager that se-
lectively grants resource requests or causes them to wait. The third element is another function of the lock man-
ager, where the lock manager communicates the state of the stored lock information on a congruence class basis,
when required, to another computer complex requesting access to data.
Example 2. For software inventions which are dependent upon the use of specific hardware such as memory
or registers, the hardware itself can be incorporated as an element of the apparatus claim. Thus, rather than using
all "means for" elements, some elements of the claim can specify the computer hardware component that is per-
forming the function.
In this example, the software invention is directed to the arithmetic encoding of an encoded data string. A
compressed and arithmetically coded binary data stream is generated in response to symbol statistics of the en-
coded data string. The algorithm proceeds iteratively, adjusting values in each of two shift registers, and is
claimed as follows:
An arithmetic encoder responsive to a symbol string s which is a concatenation of symbols drawn from an
alphabet having two or more characters 0, . . ., m, and two occurrence statistics n , Q(i), Q(m), and N which cor-
i
respond respectively to the count of occurrences of the symbol i, the sum of the counts n through n -1, the sum
0 i
of the counts n through n , and the count of all symbols in the portion of the string s preceding the symbol i
0 m-1
for recursively modifying a code stream C(s) to produce C(si), where C(si) is a compressed representation of the
string si and si is the string s followed by the symbol i, comprising:
(a) a first shift register containing the w-least-significant bits of C(si);
(b) a second shift register containing an interval coding variable;
*12-19 (c) means responsive to N for normalizing n , Q(i) and Q(m) based upon the normalization of N
i
to a predetermined range;
(d) first arithmetic means for adding the normalized value of Q(i) to the contents of the first shift re-

gister if i=m or for adding the normalized value of Q(m) to the contents of the first shift register if i=m;
(e) second arithmetic means for placing the normalized value of n into the second shift register if i=m
i
or for subtracting the normalized value of Q(m) from the contents of the second register if i=m; and
(f) shift means for concurrently shifting the contents of the first and second registers in a predetermined
direction until the contents of the second register lie within said predetermined range. [FN31]
The elements recited in sections (c), (d), (e) and (f) of the claim are in "means for" format, and those in sec-
tions (a) and (b) specify computer hardware, namely first and second shift registers.
Example 3. An apparatus claim directed to a software invention can be transformed into a system claim by
adding specific system components. For example, the claim of Example 1, discussed above, can be made into a
system claim as follows:
A system for shared resource locking in a multi-processing/multi-programming computing environ-
ment, comprising:
a first central electronic complex;
a second central electronic complex;
a communication link interconnecting said first and second central electronic complexes;
*12-20 a set of resources for said first and second electronic complexes, said set of resources organized
in at least two congruence classes;
interest vector means in said first complex for storing the private use and interest of each complex in
each congruence class;
means within said first complex responsive to said interest vector means and to a request for a resource
in a congruence class in which said first complex has private use for selectively granting or waiting the re-
quest based upon the lock records maintained within the first complex; and
means within said first complex responsive to said interest vector means and to a request for a resource
in a congruence class in which said second complex has interest for communicating the request to the
second complex and selectively granting or waiting the request based upon lock records maintained with the
first or second complexes.
§ 12.3.2.2 Method Claims
Method claims for a software invention can be derived naturally from the steps of the computer program. A
computer program defines a series of steps, and this series of steps is easily claimed as the steps of a method
claim. Structural elements are normally not recited in a method claim for a software process unless recitation of
a structural element is necessary to "clearly and distinctly" claim the invention.
A method claim typically takes the form: "A method, in a data processing system, said method comprising: .
. .," followed by a series of steps for performing functions. The following claim demonstrates claiming a soft-
ware invention as a method.
Example 4. In this example, the claimed software invention controls access to a single chained queue by (1)
multiple invention routines seeking to insert elements in the queue *12-21 and (2) a single, simultaneously ex-
ecuting deletion routine for deleting queue elements. Control of the queue is maintained by a dequeueing lock
that is referenced by the deleting routine, but not by the inserting routines. The claim provides:
A method of controlling a queue of address chained elements beginning with an anchor-pointed ele-
ment, each element comprising a block of bytes located in a main storage anywhere relative to any other
element in the queue, the main storage being in a data processing system having one or more CPUs, each
element containing a pointer to a next element in the queue except the last element in the queue containing

an end of queue indicator, the queue having an anchor block containing an anchor-pointer for providing an
address that directly enables the addressing of an anchor-pointed element, a plurality of processes being
capable of simultaneous execution in the system, comprising:
providing a dequeueing lock for permitting the dequeueing of any element in the queue;
obtaining the dequeueing lock in a set-on state prior to deletion of any element in the queue;
ignoring the state of the dequeueing locks for the insertion of an anchor-pointed element into the queue
by a compare and swap type of CPU instruction;
whereby a plurality of simultaneously executing processes may be inserting anchor-pointed elements
into the queue while another simultaneously executing process may be deleting any element in the queue.
[FN32]
Example 5. This example demonstrates claims directed to a business method from U.S. Patent No.
5,930,775. The *12-22 claims are truly directed to a business method, being directed to selecting a business plan
for nonperforming real estate loans. [FN32.1] The broadest claim makes no mention of use of a computer.
1. A method for selecting a business plan for nonperforming real estate loans comprising the steps, per-
formed by a processor, of:
(a) receiving loan data including personal data relating to a borrower, financial information relating to
the borrower's financial position, an unpaid loan amount, and loan conditions including a loan term, a loan
amount, and an interest rate, relating to a real estate;
(b) analyzing the borrower's financial information to determine an ability-to-pay rate reflecting an in-
terest rate indicating the borrower's ability to repay a loan having the loan conditions;
(c) comparing the ability-to-pay rate and the interest rate of the loan conditions to determine whether
the borrower can repay the unpaid loan amount;
(d) generating a repayment plan reflecting the ability to pay rate and the loan conditions if the compar-
ison indicates that the borrower can repay the unpaid loan amount.
2. The method of claim 1, further comprising steps performed, when the comparison of the ability-
to-pay rate and the interest rate of the loan conditions indicates that the borrow cannot repay the unpaid loan
amount, of:
(e) determining from the loan data a default rate reflecting an interest rate realizable if the loan is fore-
closed and a new loan secured by the real estate originated;
*12-23 (f) determining from the requested loan data a minimum rate reflecting an interest rate realiz-
able if proceeds from a sale of the real estate before expiration of the loan term are determined to be accept-
able and a new loan secured by the real estate originated;
(g) generating in the processor a comparison model from the borrower's financial information, the com-
parison model including the ability-to-pay rate, the default rate, and the minimum rate;
(h) analyzing the comparison model to determine a relationship among the ability-to-pay rate, the de-
fault rate, the minimum rate, and a predetermined current return rate;
(i) extracting lender preferences from a constraints database; and
(j) selecting an acceptable return rate for the loan based on the determined relationship, the lender pref-
erences, and the personal data.
§ 12.3.2.3 Software Product Claims
A claim directed to the software product itself, claimed as an article of manufacture, can be used for some
software inventions. These "program product" claims can have a preamble that states "An article of manufacture
comprising" or "A computer program comprising." The body of the claim then typically has "means for" ele-

ments or "instruction means for causing" the computer to perform the desired functions. Examples of patents
that have issued as software program claims are U.S. Patent Nos. 4,864,492, 4,887,204, and 4,896,291. For ex-
ample, a claim for a system for accessing remote files in a networking environment reads:
Example 6
A system for accessing a file residing in a server processing system at a server node by at least one cli-
ent *12-24 processing system at least one client node, said system comprising:
at least one client cache in the at least one client processing system caching blocks of the file at the at
least one client node;
means for generating a file synchronization mode for the file, said file synchronization mode being de-
pendent upon how many and which processes in the network have the file open, and whether the file is open
for read only or write access; and
means for managing said at least one client cache through the file synchronization mode. [FN33]
§ 12.3.2.4 Signal Claims
Signal claims are directed to the transmission of data signals, and are useful for computer and software re-
lated inventions. [FN33.1]
One category of a signal claim is structural and is typically based on data segments and content of data seg-
ments, where the signal is manufactured to be propagated from one location to another before received in the
process.
Example 7
A frequency-multiplexed signal manifested in electrical form, said frequency-multiplexed signal com-

prising:
in a first frequency band, a first carrier wave modulated by a video signal descriptive of line by line
horizontal scanning of a succession of image fields, said line by line horizontal scanning taking *12-25
place during horizontal trace intervals having horizontal retrace intervals interspersed therewith, identi-
fied for purpose of claiming by consecutive ordinal numbers assigned in order of their occurrence; and,
in a second frequency band different from said first frequency band, an accompanying signal com-
prising
at least one set of amplitude modulation sidebands of a second carrier wave that is a multiple of
half horizontal scan line frequency, that regresses 90° in phase each successive scan line of each odd-
numbered image field and progresses 90° in phase each successive scan line of each even-numbered im-
age field, and that is amplitude modulated during said horizontal retrace intervals; and
at least one set of amplitude modulation sidebands of a third carrier wave that is a multiple of half
horizontal scan line frequency, that progresses 90° in phase each successive scan line of each said odd-
numbered image field and regresses 90° in phase each successive scan line of each said even-numbered
image field, and that is amplitude modulated during said horizontal retrace intervals. [FN33.2]
Another type of signal claim is a functional signal claim, which claims a mechanism for accomplishing
a result.
*12-26 Example 8
A computer data signal embodied in a carrier wave for causing a computer to execute a video game in-
cluding a character which can own a plurality of items having influences upon a game progress, said com-

puter data signal causing the computer to perform the steps of:
copying the plurality of items and corresponding preset item values owned by said character from a first
memory area to a second memory area;
designating a first item and a second item from the plurality of items stored in said second memory area
in accordance with a predetermined input instruction;
reading item values of said first and second items designated by designating step from said second
memory area;
calculating a new item value from the item values of the first and second items read by the reading step;
updating the item value of said first item stored in said second memory area using the new item value
calculated by the calculating step. [FN33.3]
Signal claims can also be a hybrid structure/function and claim of the signal end goal.
Example 9
A computer data signal embodied in a carrierless ultra wideband waveform including wavelets having
predetermined shapes, comprising:
information being exchanged from one device to another device, wherein
*12-27 the predetermined shapes are at least one of bi-phase modulated, quad-phase modulated,
multilevel bi-phase modulated, and multilevel quad-phase modulated. [FN33.4]
Among the advantages of the use of signal claims is that it is easier to prove infringement compared to ap-
paratus and method claims, since usually consideration of contributory infringement or inducing infringement is
not involved. Since they are not business method claims, there is no prior user right defense applicable under 35
U.S.C. § 273.
However, whether signal claims are statutory subject matter has not yet been determined, [FN33.5] although
Morse in his famous telegraph patent was able to obtain the Supreme Court's blessing for a claim directed to a
system involving the Morse Code. [FN33.6]
§ 12.3.2.5 Beauregard Claims
Beauregard claims are directed to computer programs embodied in a tangible medium such as floppy
diskettes. They are patentable subject matter. [FN33.7] A typical Beauregard claim has the following format:
Example 10
A computer program product embodied on one or more computer-usable medium for improving some
computer process comprising:
(a) first computer-readable program code means for doing S; and
(b) second computer-readable program code means for doing S
Drafting.
[FN26]. Additional ideas for claiming software-based inventions can be found in Steven W. Lundberg & Charles
A. Lemaire, Drafting Claims to Meet Business Requirements While Ensuring Patentablilty, AIPLA, Oct. 15,

1998.
[FN27]. In re Iwahashi, 888 F.2d 1370, 12 U.S.P.Q.2d 1908 (Fed. Cir. 1989).
[FN28]. In re Akamatsu, No. 91-3230 (Pat. Bd. App. & Interf. Mar. 20, 1992).
[FN29]. WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339, 51 U.S.P.Q.2d 1385 (Fed. Cir. 1999).
[FN30]. U.S. Patent No. 4,399,504.
[FN31]. U.S. Patent No. 4,652,856.
[FN32]. From U.S. Patent No. 4,482,956.
[FN32.1]. See Ex parte Lundgren, Appeal No. 2003-2088 (BPAI 2005) (35 U.S.C. § 101 does not include a "sep-
arate technological arts" test).
[FN33]. U.S. Patent No. 4,887,204.
[FN33.1]. See Kunin & Lytle, Patent Eligibility of Signal Claims, 87 JPTOS No. 12, at 91-102. (Dec. 2005).
[FN33.2]. U.S. Patent No. 5,500,739, claim 109.
[FN33.5]. Interim Guidelines for the Examination of Patent Applications for Patentable Subject Matter Eligibil-
ity, 1300 OG 142.
[FN33.6]. Reilly v. Morse, 56 U.S. 62 (1854).
[FN33.7]. In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995) (the Beauregard application issued as U.S. Patent No.
5,710,578).
END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
§ 12.3 Claims
*12-28 § 12.3.3 Claim Drafting Considerations
The techniques used for drafting claims for software inventions are, in most respects, the same as used for
other inventions, which are well described in PLI's companion book, Landis on Mechanics of Patent Claim
Drafting. [FN34] Three aspects of claim drafting for software inventions deserve special discussion: drafting
claims enforceable against competitors, drafting claims for a high royalty base, and drafting claims to avoid re-
jections for nonpatentable subject matter.
§ 12.3.3.1 Draft the Claims to Catch Infringers
When claims are drafted, a primary goal is to either snare or deter a direct infringer. [FN35] In order to
achieve this goal, a claim must be drafted to define a software invention that another may make, use, or sell.
Therefore, it is important to analyze exactly what is going to be sold by the patent owner, and what is likely to
be sold by competitors, so that the competitors can be charged with direct infringement or, if necessary, contrib-
utory infringement. Preferably, the claims should be drafted so that a competitor is a direct infringer, rather than
a contributory infringer, because there are fewer defenses available against direct infringement than against con-
tributory infringement.
Problems that can arise with various types of claims are exemplified by method claims, which are infringed
primarily by use. Theoretically, it is difficult to argue that a process is "made" or "sold" until it operates. There-
fore, the direct infringers of method claims are primarily end users. If the owner of a patent being infringed is
also engaged in the business *12-29 of selling the program covered by the infringed claims, it is possible that in-
fringing users will include the owner's customers or potential customers. It thus may be necessary to charge one
of the patentee's own customers with direct infringement in order to support a charge of contributory infringe-
ment or inducement to infringe against the seller of the software. Since most companies do not wish to charge
their own customers for infringement but rather sue only their competitors, a method claim has enforcement
problems.
System claims and apparatus claims that include hardware elements of a computer have the same problem.
The presence of hardware elements can prevent a charge of infringement being made against one who merely
makes and sells programs apart from the system or the computer on which the program executes. In this case it
can be necessary, again, to charge a user with direct infringement in order to support a charge of contributory in-
fringement or inducement to infringe.
Contrarily, the manufacturers and copiers of a computer program covered by a software patent can be
charged with direct infringement, providing that the product that they make or sell includes all of the elements
of the claim.

Another consideration as to whether competitors can be charged with direct or contributory infringement is
the breadth of the claims used. An apparatus claim that has been drafted to exclude elements of the hardware or
system on which the computer program executes can support a charge of direct infringement against a publisher
or high-volume copier of the program. An example of such a claim is:
Example 11
An [sic] computer software system having a set of instructions for controlling a general purpose digital
computer in performing a desired function comprising: a set of instructions formed into each of a plurality
of modules, each module comprising:
*12-30 a communications process;
a computational process;
a data storage process;
a feedback process. [FN36]
Although the claim preamble recites that the invention is a "computer software system," the claim elements
are computer instructions formed into modules each of which performs a communications, computation, data
storage, or feedback function. The claim includes no hardware elements and, therefore, describes software alone.
This claim is infringed by unpermitted copying and can be used against a pirate publisher for direct infringe-
ment.
As is true with any other type of patent application, computer software applications should be written with
claims ranging from the very broad to the more detailed. A broad claim reads on more infringers, but is more
susceptible to attack during litigation. Contrarily, a narrow claim is easier to design around than a broad claim,
but is more likely to be held valid.
Broad claims can be drafted by excluding from the claims such non-essential elements as power supplies,
antennas (claim any signal source), and keyboards (claim an input device).
§ 12.3.3.2 Drafting Claims for a High Royalty Base
Another important consideration when writing claims is to draft the claims to maximize the base for collect-
ing royalties. The scope of the invention as claimed can affect the amount of damages or royalties received.
Royalty rates are often based on the total value of the system infringed, so that the inclusion of major hardware
elements in at least some *12-31 system claims can greatly increase royalties or damages received by the pat-
entee. A detailed apparatus claim that claims many computer components can provide a higher royalty base,
with a resulting higher royalty payment, than a very broad claim that does not include all of the apparatus ele-
ments. Thus, a claim directed to computer hardware programmed with a software invention has a higher royalty
base than a claim directed only to the software.
§ 12.3.3.3 Drafting Claims Directed to Statutory Subject Matter
There are two basic techniques for avoiding statutory subject matter rejections for a computer software in-
vention. The first is to simply eliminate all mathematical expression formulae and calculations from the claim.
This will avoid a nonstatutory "mathematical algorithm" rejection. If a mathematical algorithm must be in-
cluded, then either (1) recite sufficient process steps or apparatus elements to allow the claim to be patentable
even if the algorithm is carved out of the claim or (2) limit the breadth of the claim by implementing the al-
gorithm to refine or limit the process steps or to define the structural relationship between the physical elements
of an apparatus claim. According to the State Street Bank test, all that is needed is a "useful, concrete, tangible

result," even if the result is merely transformation of data." [FN37] If the algorithm is applied to physical ele-
ments or process steps, then there is statutory subject matter, provided that the application of the algorithm in-
cludes more than a field of use limitation or non-essential postsolution activity. [FN38]
The following are specific examples of techniques for avoiding a nonstatutory subject matter rejection.
*12-32 Limiting the field of use of the invention and concentrating on a practical application of the inven-
tion increase the likelihood that the claim is directed to patentable subject matter rather than an abstract idea.
[FN39]
§ 12.3.3.3.1 Exclude Algorithms from the Claims
When mathematical algorithms are not included in the claim, neither explicitly nor implicitly, then there is
no problem as to statutory subject matter. Inclusion of non-numerical items or symbols can help avoid a claim
being considered as mathematical. For example, the claim can include manipulation of text, symbols, graphics,
or sound. Examples of nonmathematical algorithms include:
(a) A process for converting a source program into an object program (see example 12 below);
[FN40]
(b) A process for translating a source natural language, for example, Russian, to a target natural
language like English (see example 13 below); [FN41]
(c) A method of operating a system of a manufacturing plant (see example 15 below); [FN42] and
(d) A method of assigning priorities within a computer. [FN43]
Reported decisions provide examples of claims for computer programs that were determined to be statutory
subject matter because a mathematical algorithm was not recited in the claims.
Example 12. A computer program for converting a source program into an object program was held to be
statutory subject matter. [FN44] The claim at issue was:
*12-33 A process of operating a general purpose data processor of known type to enable the data pro-
cessor to execute formulas in an object program comprising a plurality of formulas, such that the same res-
ults will be produced when using the same given data, regardless of the sequence in which said formulas are
presented in said object program, comprising the steps of:
(a) examining each of said formulas in a storage area of the data processor to determine which for-
mulas can be designated as defined;
(b) executing, in the sequence in which each formula is designated as defined, said formulas desig-
nated as defined;
(c) repeating steps (a) and (b) for at least undefined formulas as many times as required until all
said formulas have been designated as defined and have been executed;
whereby to produce the same results upon execution of the formulas in the sequence recited in step (b) when
using the same given data, regardless of the order in which said formulas were presented in the object pro-
gram prior to said process.
Example 13. A process for translating a source natural language, for example, Russian, to a target natural
language, for example, English, was held to be directed to patentable subject matter. [FN45] The claim in ques-
tion was:
A method for translation between source and target natural languages using a programmable digital
computer system, the steps comprising:

(a) storing in a main memory of the computer system a source text to be translated;
(b) scanning and comparing such stored source text words with dictionaries of source language
words *12-34 stored in a memory and for each such source text word for which a match is found, stor-
ing in a file in main memory each word and in association with each such word, coded information de-
rived from such dictionary for use in translation of such word, the coded information including memory
offset address linkages to a memory in the computer system where grammar and target language trans-
lation for the word are stored;
(c) analyzing the source text words in its file of words, a complete sentence at a time, and convert-
ing the same into a sentence in the target language utilizing the coded information and including the
steps of
(1) utilizing the memory offset address linkages for obtaining the target [sic language] transla-
tions of words from a memory; and
(2) reordering the target language translation into the proper target language sequence.
Example 14. A process for preparing architectural specifications was held directed to patentable subject
matter. [FN46] The claim before the court was:
A process for preparing an architectural specification comprising: storing recorded signals representat-
ive of instruction data on an instruction data file; storing recorded signals representative of a plurality of
phrases with associated code on a specification data file, whereby a specifier by writing code may determine
the sequence and relation of said phrases; programming a data processor to receive input code representative
of a predetermined sequence of said phrases and to check *12-35 said input code to determine whether it
contains any errors which would prevent further processing of said input code and, if not, to prepare an ed-
ited input file of said code; programming said processor to process the code on said edited input file and to
prepare a printed specification from said specification data file according to the code sequenced by a spe-
cifier and to prepare a set of signals on a [sic] instruction input file, said last-named signals being correlated
with said phrases through said input code; and programming said data processor to operate on said instruc-
tion input file to prepare a set of instructions from said instruction data file; said instructions being associ-
ated with corresponding data on said printed specification.
Example 15. A claim for a method for operating a system of manufacturing plants was held to be directed
to patentable subject matter. [FN47] The claim in question was:
The method of operating a system of multi-plants which produce finished products from material de-
rived from a plurality of sources at fluctuating costs for delivery to markets of variable prices, each of said
plants having a different, unique, cost function in producing the products, said method comprising operating
computing apparatus to automatically perform the steps of:
(a) establishing optimized control points for process units in a first plant,
(b) substantially continuously feeding material and energy cost data, product price data, and vari-
able process data to the optimized controls for said process units to maintain them at operating condi-
tions dependent upon said data,
*12-36 (c) periodically modifying cost and process data fed to the control for said first plant to set
operating points for said process units in said first plant dependent upon optimum operation of said first
plant, and
(d) periodically modifying cost and price data fed to the control for said system to set an operating
point for said plant dependent upon optimum operation of said system.
§ 12.3.3.3.2 Include Tangible Elements

By including tangible apparatus elements (not just "means for" elements) in the claims, even if a mathemat-
ical algorithm is present in a claim, a claim can include statutory subject matter. [FN48]
It is good strategy to incorporate as much hardware as possible into the claims, and certainly into the spe-
cification. Preferably the claims should include physical elements, and not just "means for" clauses. However,
the Federal Circuit has held that "means for" clauses alone are sufficient to have statutory subject matter, if the
specification describes physical embodiments of the elements performing the "means for" function. [FN49]
Examples of hardware that can be included in the claims are shift register, memory, screen, keyboard, disk,
and motor. Also include in the claims input and output. All computer systems have data or commands input and
provide some sort of output.
*12-37 Inserting the words "computer-based" before the word "method" in method claims, before "system"
in system claims, and before "apparatus" in apparatus claims is recommended for computer program-related in-
ventions. A claim reading on a general-purpose computer programmed to perform means steps can be statutory
subject matter, because a general-purpose computer in effect becomes a special-purpose computer when pro-
grammed to perform particular function pursuant to instructions from program software. [FN50]
Even where process claims are directed to an unpatentable idea, a product-by-process claim defining a ma-
chine having a memory containing the data defined by the unpatentable process can define patentable subject
matter. [FN51]
Even a database can be patentable subject matter when claimed as "a memory for storing data for access by
an application program being executed on a data processing system." [FN52]
Specifying in the claim that the algorithm is applied in a "useful" way, such as transforming data into a use-
ful, concrete, and tangible result, results in a claim directed to patentable subject matter. [FN53]
*12-38 Two sets of claims should be used, one in "means for" format and another where specific hardware
components are substituted for the "means for" language.
Example 16
An auto-correlation unit for providing auto-correlation coefficients for use as feature parameters in pat-
tern recognition for N pieces of sampled input values X (n = 0 to N - 1), said unit comprising:
n
(a) means for extracting N pieces of sample input values X from a series of sample values in an
n
input pattern expressed with an accuracy of optional multi-bits;
(b) means for calculating the sum of the samples values X and X - Z (t = 0 - P, P < N);
n n
(c) a read only memory associated with said means for calculating;
(d) means for feeding to said read only memory the sum of the sampled input values as an address
signal;
2
(e) means for storing in said read only memory the squared value of each sum, (X + X - Z)
n n
(f) means for fetching and outputting the squared values of each such sum of the sample input val-
ues
from said read only memory when said memory is addressed by the sum of the sample input values;
...
Although the claim recited an algorithm, it was held patentable because it also recited apparatus such as the
electronic ROM (read only memory) unit. [FN54]

*12-39 Example 17. An apparatus claim was held to contain patentable subject matter because of "means
for" clauses. [FN55] The claim at issue was:
Apparatus for analyzing electrocardiograph signals to determine the level of high frequency energy in
the late QRS signal comprising:
means for converting X, Y, and Z lead electrocardiographic input signals to digital valued time seg-
ments;
means for examining said X, Y, and Z digital valued time segments and selecting therefrom the
QRS waveform portions thereof;
means for signal averaging an multiplicity of said selected QRS waveforms for each of said X, Y,
and Z inputs and providing composite, digital X, Y, and Z QRS waveforms;
high pass filter means;
means for applying to said filter means, in reverse time order, the anterior portion of each said di-
gital X, Y, and Z waveform; and
means for comparing the output of said filter means with a predetermined level to obtain an indica-
tion of the presence of a high frequency, low level, energy component in the filter output of said anteri-
or portions. [FN56]
*12-40 Example 18.
A memory for storing data for access by an application program being executed on a data processing
system comprising:
a data structure stored in said memory, said data structure . . .
including:
plurality of ADOs (attribute data objects) stored in said memory . . .;
a single holder ADO for each said ADOs, . . .
a referent ADO for at least one of said ADOs . . .; and
an apex data object stored in said memory . . . [FN57]
§ 12.3.3.3.3 Transform Something Physical
A claim can be directed to statutory subject matter if the claim is directed to the transformation of
something physical into a different form, such as transforming a "signal" from one physical state to a different
physical state. [FN58] Examples include transforming sound to a different type of sound by filtering, transform-
ing numbers into sound, and transforming numbers into pictures and displaying them on a screen.
For example, a device for detecting and measuring electrocardiographic activity is statutory subject matter.
[FN59] Also because the transformation of a particular input electrical signal into a different output signal in-
volved physical steps to transform one physical electrical signal into another the transformation process was
statutory subject matter. [FN60] The following examples present claims determined to be statutory subject mat-
ter because of a transformation limitation.
*12-41 Example 19. Conversion of "substantially spherical seismic signals" into "a form representing the
earth's responses to cylindrical or plane waves" was held to be statutory subject matter. [FN61] The claim in is-
sue was:
A method of seismic exploration by simulating from substantially spherical seismic waves the reflection
response of the earth to seismic energy having a substantially continuous wavefront over an extent of an
area being explored having at least one dimension which is large relative to a seismic wavelength, compris-

ing the steps of:

(a) imparting the spherical seismic energy waves into the earth from a seismic source at a source
position;
(b) generating a plurality of reflection signals in response to the seismic energy waves at a set of re-
ceiver positions spaced in an array over an extent having at least one dimension which is large relative
to a seismic wavelength; and
(c) summing the reflection signals to form the source position a signal simulating the reflection re-
sponse of the earth to seismic energy having a substantially continuous wavefront over at least one di-
mension which is large relative to a seismic energy wavelength.
The C.C.P.A. held that although the claim directly recited a mathematical algorithm (summing), it did not
patent the algorithm in the abstract. The claim instead was drawn to a technique of seismic exploration simulat-
ing the response of the subsurface earth formations to cylindrical or plain waves. Since the process involved
converting electrical signals into *12-42 another form, the C.C.P.A. held the claim to be statutory. The C.C.P.A.
viewed those signals as physical and the claimed process as one of converting them into a different state. An im-
portant holding was that the conversion of electrical signals, even though by a process including a mathematical
algorithm, is statutory.
Example 20. Conversion of amplitude-versus-time seismic traces into amplitude-versus-depth seismic

traces was held to be statutory subject matter because the subject matter of the claim converted one physical
thing into another physical thing, just as any electrical circuitry would do. [FN62] One of the claims at issue
stated:
An apparatus for converting a seismic time section consisting of a plurality of amplitude-versus-time
seismic traces, into a plurality of machine generated, amplitude-versus-depth representations, so that events
on the time section are migrated, both vertically and horizontally, according to the depth and horizontal co-
ordinates of the seismic reflectors within a subsurface earth formation, [sic] they represent, comprising:
(a) automated data processing means for sonogramming said amplitude-versus-time traces, a group
of traces at a time, to produce a plurality of sonograms each identified by and indexed through a re-
spective horizontal pivot coordinate and a represented moveout,
(b) automated means for machine dividing each of said individual sonograms into a series of seg-
ments in accordance with a seismic velocity function characteristic of the subsurface under study, and
for each of a series of zone-lets representing *12-43 portions of said subsurface under study, said auto-
mated dividing means including separate means for placing, storing and indexing also in accordance
with said seismic velocity function, said series of segments into said zonelets to provide said plurality
of machine generated, amplitude-versus-depth representations.
Example 21. A technique for removing unwanted noise from a seismic trace was held to be directed to pat-
entable subject matter. [FN63] The claim at issue stated:
A machine implemented method for enhancing digital data in a seismic record, said data having a co-
herent signal component comprising a measure of the similarity between spatially related time series data,
and a [noise] component, and for improving the signal to noise ratio thereof, comprising the steps of:
determining, for a search window defined about a selected time on a selected seismic reference trace,
the coherent signal associated with said reference trace and a plurality of adjacent seismic traces;
computing, by use of said coherent signal, the component of said coherent signal extant in said refer-
ence trace and replacing in time alignment with said reference trace on an output signal record medium, that
portion of said reference trace included in said search window with said component of the reference trace
comprising said coherent signal portion;

replacing, in time alignment with said reference trace on an output noise record medium, that portion of
said reference trace included in said search window, with the remainder of said reference trace which does
not comprise said coherent signal portion; and
*12-44 repeating the above steps for other selected times and other selected reference traces until all
data comprising said record is so processed.
Example 22. A Method for detection of a certain heart condition by analyzing a portion of the electrocardi-
ogram was held to be patentable subject matter, because the method included a physical, electrical signal that
was transformed into another physical, electrical signal. The claim at issue stated:
A method for analyzing electrocardiograph signals to determine the presence or absence of a predeter-
mined level of high frequency energy in the late QRS signals comprising the steps of:
converting a series of QRS signals to time segments, each segment having the digital value equipment
to the analog of said signals at said time;
applying a portion of said time segments in reverse time order to high pass filter means;
determining an arithmetic value of the output of said filter; and
comparing said value with said predetermined level. [FN64]
§ 12.3.3.3.4 Post-Solution Activity
By including significant post-solution activity (that is, activity following the solution to the algorithm) in a
claim containing an algorithm, the claim can be directed to statutory subject matter. However, if the post-
solution activity is merely insignificant, then the claim is nonstatutory. Unfortunately, the degree of post-
solution activity that rises to the level of significance cannot be specified because the precedents *12-45 only
provide examples of insignificant post-solution activity. [FN65]
§ 12.3.3.3.5 Produce a Useful, Concrete, Tangible Result
Under the State Street Bank test, all that is needed to have statutory subject matter is to claim a statutory
class defined in section 101 and produce a useful, concrete, tangible result without preempting all use of an al-
gorithm, independent of whether a machine or process is claimed or whether the result is no more than mere
transformation of data. The following examples demonstrate claims meeting the State Street Bank test.
Example 23. A data processing system for administering and accounting for mutual funds was patentable
subject matter. [FN66] The claim at issue stated:
1. A data processing system for managing a financial services configuration of a portfolio established as
a partnership, each partner being one of a plurality of funds, comprising:
(a) computer processor means for processing data;
(b) storage means for storing data on a storage medium;
(c) first means for initializing the storage medium;
*12-46 (d) second means for processing data regarding assets in the portfolio and each of the funds
from a previous day and data regarding increases or decreases in each of the funds, assets and for alloc-
ating the percentage share that each fund holds in the portfolio;
(e) third means for processing data regarding daily incremental income, expenses, and net realized
gain or loss for the portfolio and for allocating such data among each fund;
(f) fourth means for processing data regarding daily net unrealized gain or loss for the portfolio and
for allocating such data among each fund; and
(g) fifth means for processing data regarding aggregate year-end income, expenses, and capital gain

or loss for the portfolio and each of the funds.
Example 24. A method for producing message records for long distance telephone calls, enhanced by addi-
tion of a primary interexchange carrier indicator, was held to be patentable subject matter. [FN67] The claim at
issue stated:
1. A method for use in a telecommunications system in which interexchange calls initiated by each sub-
scriber are automatically routed over the facilities of a particular one of a plurality of interexchange carriers
associated with that subscriber, said method comprising the steps of: generating a message record for an in-
terexchange call between an originating subscriber and a terminating subscriber, and including, in said mes-
sage record, a primary interexchange carrier (PIC) indicator having a value which is a function of whether
*12-47 or not the interexchange carrier associated with said terminating subscriber is a predetermined one
of said interexchange carriers.
Drafting.
[FN34]. ROBERT FABER, LANDIS ON MECHANICS OF PATENT CLAIM DRAFTING (1990).
[FN35]. 35 U.S.C. § 271(a).
[FN36]. U.S. Patent No. 4,866,610, claim 1.
[FN38]. Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053, 22 U.S.P.Q.2d 1033 (Fed. Cir.
1992).
[FN39]. Id.
[FN40]. In re Pardo, 684 F.2d 912, 214 U.S.P.Q. 673 (C.C.P.A. 1982).
[FN41]. In re Toma, 575 F.2d 872, 197 U.S.P.Q. 852 (C.C.P.A. 1978).
[FN42]. In re Deutsch, 553F.2d 689, 193 U.S.P.Q. 645 (C.C.P.A. 1977).
[FN43]. In re Chatfield, 545 F.2d 152, 191 U.S.P.Q. 730 (C.C.P.A. 1976), cert. denied, 434 U.S. 875, 195
U.S.P.Q. 465 (1977).
[FN44]. In re Pardo, 684 F.2d 912, 214 U.S.P.Q. 673 (C.C.P.A. 1982).
[FN45]. In re Toma, 575 F.2d 872, 197 U.S.P.Q. 852 (C.C.P.A. 1978).
[FN46]. In re Phillips, 608 F.2d 879, 203 U.S.P.Q. 971 (C.C.P.A. 1979).
[FN47]. In re Deutsch, 553 F.2d 689, 193 U.S.P.Q. 645 (C.C.P.A. 1977).
[FN48]. In re Iwahashi, 888 F.2d 1370 (Fed. Cir. 1989).

1992). To determine the statutory nature of "means for" language reference is made to the description in the pat-
ent specification pursuant to 35 U.S.C. § 112.
[FN50]. In re Alappat, 33 F.3d 1526, 31 U.S.P.Q.2d 1545 (Fed. Cir. 1994), where the Federal Circuit held, en
banc, that an apparatus claim defining four means elements, which comprised electronic circuitry elements, was
statutory subject matter. The claimed subject matter implemented a mathematical algorithm to make an oscillo-
scope display clearer. The claims read on a general-purpose computer programmed to perform the means steps.
[FN51]. In re Warmerdam, 33 F.3d 1354, 31 U.S.P.Q.2d 1754 (Fed. Cir. 1994). The claim at issue called for "A
machine having a memory which contains data . . . generated by the method of any of Claims 1 through 4,"
where the method as claimed was unpatentable because it was for an abstract idea.
[FN52]. In re Lowry, 32 F.3d 1579, 32 U.S.P.Q.2d 1031 (Fed. Cir. 1994).
1998).
[FN54]. In re Iwahashi, 888 F.2d 1370 (Fed. Cir. 1989).
[FN55]. Although the claim referred to a "high pass filter means," this apparently was improperly interpreted by
the court as a "means for" clause.
1992). To determine the statutory nature of "means for" language reference is made to the description in the pat-
ent specifications pursuant to 35 U.S.C. § 112
[FN57]. In re Lowry, 32 F.3d 1579, 32 U.S.P.Q.2d 1031 (Fed. Cir. 1994).
1992).
[FN59]. Id.
[FN60]. In re Veldhuis, No. 92-1102 (Bd. Pat. App. & Interf. July 21, 1992).
[FN61]. In re Taner, 681 F.2d 687, 214 U.S.P.Q. 678 (C.C.P.A. 1982).
[FN62]. In re Sherwood, 613 F.2d 809, 204 U.S.P.Q. 537 (C.C.P.A. 1980), cert. denied, 450 U.S. 994, 210
U.S.P.Q. 776 (1981).
[FN63]. In re Johnson, 589 F.2d 1070, 200 U.S.P.Q. 199 (C.C.P.A. 1978).
1992).
[FN65]. In Parker v. Flook, 437 U.S. 584, 589, 590 (1978), the post-solution activity of adjusting to an alarm
limit was insufficient. In Safe Flight Instruments Corp. v. Sundstrand Data Control, Inc., 706 F. Supp. 1146 (D.
Del. 1989), the final step of "means for processing said windshear signal to provide an indication representing
the magnitude thereof" was held insufficient. In re Abele, 684 F.2d 902, 909 (C.C.P.A. 1982), the final step of
displaying the result was insufficient. Also, the final step of recording the output or result was insufficient in In

re Gelnovatch, 595 F.2d 32, 41 n.7 (C.C.P.A. 1979). But the absence of post-solution activity or the triviality
thereof is only one factor to consider.
[FN66]. State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 47 U.S.P.Q.2d 1596 (Fed. Cir.
1998).
END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
§ 12.4 Disclosure
*12-47 § 12.4.1 The Disclosure Must Satisfy 35 U.S.C. § 112
The requirements of 35 U.S.C. § 112 for an application for an invention involving software are the same as
for all inventions sought to be patented. The disclosure must provide information at a level sufficient to permit a
person reasonably skilled in the art to reproduce the invention. The specification must provide a written descrip-
tion of the invention that is sufficient to enable a person of ordinary skill in the art to make and use the invention
without undue experimentation. [FN68] Further, the specification must set forth the best mode available to the
inventor for making and using the invention. [FN69]
One problem that arises in computer patent applications is that the claimed invention can involve two areas
of prior art or more than one technology, for example, an appropriately programmed computer and an area of ap-
plication of the computer. With regard to the "skill in the art" standard in cases involving both the art of com-
puter programming and another technology, the adequacy of the description of the invention can be determined
based on the knowledge of persons skilled in both technologies. [FN70]
Guidelines for determining if an application involving a computer program satisfies 35 U.S.C. § 112 are in
the Manual *12-48 of Patent Examining Procedures (M.P.E.P.) in a section entitled "Computer Programming
and 35 U.S.C. § 112." [FN71]
Generally, when the subject matter is a computer program that implements a claimed device or method, en-
ablement is determined form the viewpoint of a skilled programmer. [FN72] However, when the invention
relates to one field, such as seismic signals, and uses a computer program, the disclosure relating to seismic sig-
nals is judged by the level of skill in seismology, while the sufficiency of the disclosure required for the com-
puter program depends on the level of skill in programming. [FN73]
There must be sufficient disclosure that only reasonable programming efforts are required. [FN74] Undue
experimentation must not be required. Although reasonable experimentation is permissible, one and one-half to
two person-years of effort is not reasonable. [FN75]
Disclosure of specific source code is not necessary if creation of source code is within the skill of the art. As
a general rule, where software constitutes part of a best mode of carrying out an invention, description of such a
best mode is satisfied by disclosing the functions of the software. This is because, normally, writing code for
such software is within the skill of the art, not requiring undue experimentation, once its functions have been
disclosed. [FN76] Nevertheless, for safety's sake and to avoid an issue in litigation, it may be *12-49 advisable
to provide the code as an appendix filed with the application, or to provide a disc containing the compiled soft-
ware to the patent office, much as a biological deposit is made. Thus, for an invention for scanning integrated
circuit chips utilizing computer software, it was not necessary to provide the source code, or in fact explicitly

disclose the software used in the invention, because there was a disclosure of the function of the source code,
and creation of the specific source code was within the skill of the art. [FN77]
Whether a description of firmware is required in a software patent application is unclear. It has been held
that specific firmware need not be described where there is no specific firmware that is "best" for operating the
invention. [FN78] However, if the inventor has a preferred firmware technique for implementing a software in-
vention, it is safest to include a description of that firmware in the application.
It is advantageous to include as much hardware in the description of the invention as possible for two reas-
ons. The first reason is that this practice increases the chance that an infringer will be found to be a literal in-
fringement if there are "means for" clauses in the claims. This is because 35 U.S.C. § 112 requires that "means
for" clauses be interpreted to include the structures specifically described in the specification and their equival-
ents. [FN79] The more structure described in the specification, the broader the scope of a "means for" clause. If
computer software is the structure corresponding to a claimed function in a "means for" clause, the specification
or prosecution history must associate that software with the function cited in the claim. [FN79.1] The second
reason to include *12-50 as much hardware as possible in the specification is the increased likelihood that the
claims will be considered to be directed to statutory subject matter, because "means for" clauses are interpreted,
for this purpose, with respect to the hardware in the specification. (See section 12.3.3.3.2.)
It is important to discuss the practical utility of the invention to avoid a Patent Office rejection that the
claimed subject matter is merely an abstract idea.
Drafting.
[FN68]. 35 U.S.C. § 112, first paragraph.
[FN69]. Id.
[FN70]. M.P.E.P. § 2106.02.
[FN71]. M.P.E.P. § 2106.01.
[FN72]. N. Telecom, Inc. v. Datapoint Corp. 908 F.2d 931, 15 U.S.P.Q.2d 1321 (Fed. Cir.), reh'g denied en
banc, cert. denied, 498 U.S. 920 (1990).
[FN73]. In re Naquin, 55 C.C.P.A. 1428, 398 F.2d 863, 158 U.S.P.Q. 317 (C.C.P.A. 1968).
[FN74]. In re Sherwood, 613 F.2d 809, 204 U.S.P.Q. 537, cert. denied, 450 U.S. 994, 210 U.S.P.Q.
776(1981)(C.C.P.A. 1980).
1983).
[FN76]. Fonar Corp. v. Gen. Elec. Co., 107 F.3d 1543, 41 U.S.P.Q.2d 1801 (Fed. Cir. 1997).
[FN77]. Robotic Vision Sys. v. View Eng'g, Inc., 112 F.3d 1163, 42 U.S.P.Q.2d 1619 (Fed. Cir. 1997).

[FN78]. In re Hayes Microcomputer Prods., Inc. Patent Litig., 982 F.2d 1527, 25 U.S.P.Q.2d 1241 (Fed. Cir.
1992).
[FN79]. In re Donaldson Co., 16 F.3d 1189, 29 U.S.P.Q.2d 1845 (Fed. Cir. 1994).
[FN79.1]. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205 (Fed. Cir. 2003).
END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
§ 12.4 Disclosure
*12-50 § 12.4.2 Sequence for the Description
A recommended approach for describing a software invention is to describe the invention in the following
sequence of levels of detail:
1. System context of the invention;
2. Overview of the major steps of the software;
3. Details of each step; and
4. Examples of operation and disclosure of best mode.
Each of these levels of detail will now be discussed.
§ 12.4.2.1 Computer System Context
The disclosure should specify the computer system or hardware used by the software invention due to the
interrelationship and interdependence of computer hardware and software. [FN80] The description of the system
can begin in the Background section and should be continued in the beginning of the Description portion of the
application.
The description of the system context should set forth the structure of the machine or system on which the
software invention executes. In most cases, the machine is a programmed digital computer or processor. This
portion of the description should include references to all of the major *12-51 components of the computer sys-
tem that affect or are affected by execution of the invention. For example:
Example 25
This invention is executable on an XYZ computer, running a 538 TDY operating system, which in-
cludes a CPU, main storage, I/O resources, and a user interface including a manually operated keyboard and
mouse. The architecture and operation of the XYZ computer are described in XYZ system 538 Principles of
Operation, XYZ publication 00-00-00. . . .
The system context of the invention can be presented in the first drawing of the patent application in the
form of a block diagram. This block diagram can show the invention as a block in the overall system, showing
the invention's primary connections to programming and physical resources on which it executes and any peri-
pheral devices necessary for operation of the invention. A block diagram showing the software system is import-
ant. Failure to provide a block diagram of the system context makes it difficult to convince the Examiner that the
invention is adequately disclosed.
§ 12.4.2.2 Major Component Overview

After describing the system context, a second level of description follows in which the major process com-
ponents of the software invention are described in an overview fashion, together with their interconnections.
Any data structures, including data objects that are used, referenced, or altered by the process components, are
defined and their connections to the process components are included in the description. If specific physical re-
sources are used by the process components, these resources are identified and described.
One or more block diagrams can be used to illustrate the process components, data structures, data objects,
and physical *12-52 resources. For example, in Patent No. 4,890,240, a block diagram illustrating the invention
in the form of an apparatus was used. This block diagram is shown in Exhibits 12-1 and 12-2. In this patent,
changes to working memory data objects occasioned by rule execution in an artificial intelligence system are
collected until completion of the executing rule. In the prior art, changes were made as they occurred during rule
execution. Exhibit 12-1 illustrates an inference engine which is a control mechanism that selects rules for execu-
tion and then executes the rules. Change accumulation is represented by a loop including a decision block 48
and an accumulation block 49. The loop is traversed and changes are accumulated until the execution of the rule
is complete. Then the changes are made in block 50.
Accumulation of the changes during rule execution requires the set of data structures illustrated in Exhibit
12-2. Together, Exhibits 12-1 and 12-2 form a block diagram which presents the invention in the form of an ap-
paratus.
§ 12.4.2.3 Major Component Details
Following the major component overview, each major process component in the block diagram is described
in detail at least by means of flow diagrams, or actual computer program listings, or both. To be sure to have an
enabling disclosure, it is best to include a program listing. The use of computer program listings avoids any
question of lack of an enabling disclosure under section 112 because the listing teaches the reasonably skilled
artisan how to make and use the invention as a computer program.
The program listing should be at a level which enables a person of ordinary skill in the art to make or use
the computer program without undue experimentation. If a program listing is submitted, it can be integrated into
the description as a part of the specification, in a drawing figure, or in an appendix as discussed below in § 12.5.
*12-53 It is not necessary to include complete computer program listings for those portions of a computer
program that are known to those of ordinary skill in the art. [FN81] The "best mode" requirement of 35 U.S.C. §
112 is satisfied if one skilled in the art could prepare a program to implement the best mode from the informa-
tion provided in the description. A listing of the complete computer program is not always necessary, as long as
there is sufficient description of the program--such as by operational flow diagrams or block diagrams--to enable
a person skilled in the art to create the program without undue experimentation.
However, merely referring to a program by name where the program is maintained as a trade secret--and
where there is no known substitute for that program--is insufficient under 35 U.S.C. § 112. Thus, in White Con-
solidated Industries v. Vega Servo-Control, [FN82] a code listing was required because it could take as much as
two man-years of effort to recreate the required program. Thus, the disclosure was held nonenabling because the
invention could not be practiced without undue experimentation.
Even though a computer program is not always needed, if a flow chart is not available, a code listing is usu-
ally the only option available for an enabling disclosure.
There are generally two types of program listings that can be provided, source code and pseudocode.

However, source code listings usually are not convenient to use. They are often very long and can include con-
fidential information that need not be disclosed to satisfy the requirements of section 112. Further, a source code
listing can be difficult for a lay person to understand, even in the form of a high-level design *12-54 language.
Pseudocode is therefore often used because it is a descriptive coding form that can be abbreviated, cleansed of
trade secrets, and made understandable to the layperson. Pseudocode is useful if the process is long and in-
volved.
Pseudocode is source code with the syntax rules relaxed and unimportant details removed. No diagrams or
boxes are needed. Therefore, the content of many pages of flowcharts can be reduced to a single page of pseudo-
code. Pseudocode can be prepared in a word processor and included in the appendix of the application to save
drawing charges. However, pseudocode is poor at revealing multiple layers of routines or subroutines. There-
fore, it is best to use pseudocode for the details of the best mode of the invention, or when the application filing
deadline is near.
In its simplest form, pseudocode is a sequence of If, Then, and Else statements. Each major process com-
ponent in the invention block diagram can be described in annotated pseudocode. The pseudocode should be tab-
ularized, and each pseudocode table should be associated with a numbered block in the invention block diagram.
The pseudocode listing should include references to major process components, data structures, data objects, and
physical resources shown in the invention block diagram.
Pseudocode tables or listings can be included in the application as figures in the drawings, in an appendix,
or within the body of the description as discussed below in § 12.5. An exemplary pseudocode table is illustrated
as Exhibit 12-3, which is the third table of Patent No. 4,890,240. It shows a called routine which undertakes rule
execution and calls other components of the software to accumulate and make changes. The specification of Pat-
ent No. 4,890,240 refers to the listing by merely stating: "The above function is further illustrated by the follow-
ing pseudocode."
In order to support method claims, the software invention should be described as a process. The best vehicle
for supporting a method description is a flow diagram for the overall *12-55 invention. An example is given in
Exhibit 12-4, taken from Patent No. 4,890,240. If necessary, detailed flow diagrams should be provided for im-
portant process steps. The flow diagrams should be described in narrative style, with care being given to ensure
that descriptions are made of all branches, dead ends, loops, and calls in the illustration.
A flow diagram is important if corresponding foreign patent applications are to be filed claiming priority
from the United States application. In many foreign patent jurisdictions, a software invention may be claimed
only as a process and must be illustrated by a flow diagram. If flow diagrams are not included in the patent ap-
plication as filed, it may be difficult to enter them into corresponding foreign counterparts at a later date without
losing the benefit of the United States filing date. Flow diagrams should be presented in the form of drawing fig-
ures as described below in § 12.5.
§ 12.4.2.4 Examples of Operation
The Description section should include detailed examples of the operation of the invention. An operational
example can provide important assistance to a lay person in understanding the invention. If the enabling disclos-
ure in the specification does not teach the best mode of carrying out the invention, the best mode may conveni-
ently be disclosed in an operational example.

Drafting.
[FN80]. M.P.E.P. § 2106.01.
[FN81]. In re Sherwood, 613 F.2d 809, 204 U.S.P.Q. 537 (C.C.P.A. 1980), cert. denied, 450 U.S. 994, 210
U.S.P.Q. 776 (1981).
[FN82]. White Consol. Indus., Inc. v. Vega Servo-Control, Inc., 214 U.S.P.Q. 796, (S.D. Mich. 1982), aff'd on
other grounds, 218 U.S.P.Q. 961 (C.C.P.A. 1983).
END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
§ 12.4 Disclosure
*12-55 § 12.4.3 Standard Terminology
During examination of the patent application by the Patent and Trademark Office, objections and rejections
frequently are made on the basis that elements, limitations, or terms in the claims are so vague or imprecise as to
fail to satisfy the requirements of the second paragraph of 35 U.S.C. § 112. Objections and rejections for vague-
ness usually have to do with the definitions of words selected to impart particular meaning to claim elements.
Thus, words such as "binding," *12-56 "executing," "executing against," and "echoing" used in the claims may
be rejected by the Examiner as being vague.
In order to minimize objections and rejections of the claims under section 112, standard terminology should
be used, and all nonstandard terms defined. A standard set of references for terminology should be used when
the claims and description of the patent application are being prepared. A good technical dictionary provides
commonly accepted and well-defined terminology. Suitable dictionaries include Sippl's Computer Dictionary
[FN83] and the Dictionary of Computing. [FN84] Other sources for terms and definitions include textbooks and
issued patents in the computer software area.
Drafting.
[FN83]. SIPPL'S COMPUTER DICTIONARY, Howard W. Sams & Co., Indianapolis, Ind.
[FN84]. DICTIONARY OF COMPUTING, IBM, Poughkeepsie, N.Y.
END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
*12-56 § 12.5 Drawings and Computer Program Listings
In a patent application for a software invention, the drawings may include system block diagrams and flow
charts, while computer program listings may be presented in drawings or in the specification.
Drawings establish the sequence, structure, and organization of the information presented in the specifica-
tion. Drawings also help sketch out ideas for drafting claims by extracting key elements of an invention from the
complexity of implementation details. Further, in the event that the patent is involved in litigation, drawings are
particularly useful for explaining the invention.
No drawings, or only minimal drawings, may be sufficient for a software patent. Drawings are required only
when "necessary for the understanding of the subject matter sought to be patented." [FN85] In one patent, a
single block, identified as a *12-57 microprocessor, in combination with twenty-seven lines to describe the es-
sence of the invention, was found adequate to enable a person of ordinary skill in the art to practice the inven-
tion. [FN86]
Drafting.
[FN85]. 35 U.S.C. § 113.
[FN86]. In re Hayes Microcomputer Prods., Inc. Patent Litig., 982 F.2d 1527, 25 U.S.P.Q.2d 1241 (Fed. Cir.
1992).
END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
§ 12.5 Drawings and Computer Program Listings
*12-57 § 12.5.1 Drawings
As discussed above, the system context of the invention should be presented in the form of a system level
block diagram which shows the invention as a block in the context of the entire system. The primary connec-
tions of the invention to the programming and physical resources on which it executes--and any peripheral
devices necessary to the operation of the invention--should also be shown. Block diagrams should also be used
to illustrate overviews of process components, data structures, data objects, and physical resources.
If the application includes apparatus claims, the drawings should include figures showing the components of
the data processing system controlled by the computer program, or with which the program interacts. Although
there is some authority that the disclosure may be enabling even without disclosure of the structure necessary to
carry out the means recited in apparatus claims, it is safest to include figures showing the relevant hardware,
typically in the form of block diagrams.
If the application includes method claims, as most applications for software inventions do, the figures
should include flow charts or code listings in order to fully disclose the process to be claimed. In fact, the Code
of Federal Regulations specifically recognizes the usefulness of flowcharts, referred to as "flowsheets." [FN87]
*12-58 There are international standards for flowchart symbols. [FN88] ISO 5807 provides standard sym-
bols for process symbols and data symbols.
There are different types of flowcharts available, namely program flowcharts, data flowcharts, system flow-
charts, program network charts, and system resources charts:
(a) Program flowcharts use ISO 5807 flowcharts symbols interconnected with lines to show computer
process steps.
(b) Data flowcharts use the ISO 5807 data symbols to represent data and storage media, in combination
with process symbols, to show the processing of the data.
(c) System flowcharts use data symbols in combination with process symbols. The process symbols
show the operations to be performed on the data. System flowcharts emphasize the functional components
of a system, such as keyboard entry providing data to processors.
(d) Program network charts likewise use data symbols and process symbols to show operations per-
formed on data. The emphasis of program network charts is the relationship between the data and the pro-
cessing elements, differing from the system flowchart in showing data and processing elements only once.
(e) System resource charts show how data and process units are interrelated, where lines between input,
output, and storage devices and processors represent data transfer and control transfer.

*12-59 Guidance in how to prepare suitable flowcharts is in the literature. [FN89] The particular types of
flowcharts to use, if any, with a particular application needs to be determined. Generally the flowcharts are
available from the inventor.
Drafting.
[FN87]. 37 C.F.R. § 1.81(b).
[FN88]. "Information Processing--Documentation Symbols and Conventions for Data, Program and System
Flowcharts, Program Network Charts and System Resources Charts," available from ANSI, 11 W. 42 St., New
York, NY 10036 USA.
[FN89]. GREGORY A. STOBBS, SOFTWARE PATENTS (Wiley Law Publications, Somerset, NJ, 1995).
END OF DOCUMENT


Jeffrey G. Sheldon

[FNa1]
§ 12.5 Drawings and Computer Program Listings
*12-59 § 12.5.2 Computer Program Listings
Computer program listings can be included in a patent application as drawings, in the specification, or as an
appendix. They can be included as drawings or in the specification only if the listing is contained in 300 lines or
fewer, with each line being of seventy-two characters or fewer. [FN90]
If the listing is submitted as part of the specification, it must be submitted in accordance with the require-
ments applying to the rest of the specification. If the listing contains more than sixty lines of code, it must be po-
sitioned at the end of the description but before the claims. [FN91]
If the listing is submitted as drawing, it must comply with the requirements of drawings as provided in 37
C.F.R. § 1.84. [FN92]
Any computer program listing can be submitted as an appendix that will not be part of the printed patent.
This is not an option if the listing is contained in more than 300 lines; in that case, it must be submitted as an ap-
pendix. The appendix is submitted as a "computer program listing appendix" on a compact disc that complies
with the requirements in 37 C.F.R. §§ 1.52(e) and 1.96(d). The specification must include a reference to the
"computer program listing appendix" as specified in 37 C.F.R. § 1.77(b) (immediately before the Background
section). [FN93]
*12-60 Copyright protection is available for the computer program listing. A copyright notice may be in-
cluded adjacent to the computer program listing in the specification [FN94] or in the drawings, [FN95] but must
be accompanied by the following authorization [FN96] at the beginning of the specification:
A portion of the disclosure of this patent document contains material which is subject to copyright pro-
tection. The copyright owner has no objection to the facsimile reproduction by anyone of the patent docu-
ment or the patent disclosure, as it appears in the Patent and Trademark Office patent files or records, but
otherwise reserves all copyrights whatsoever.
Drafting.
[FN90]. 37 C.F.R. § 1.96(b).
[FN91]. 37 C.F.R. § 1.96(b)(2).
[FN92]. 37 C.F.R. § 1.96(b)(1).

[FN93]. 37 C.F.R. § 1.96(c).
[FN94]. 37 C.F.R. § 1.71(d).
[FN95]. 37 C.F.R. § 1.84(s).
[FN96]. 37 C.F.R. § 1.71(e).
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 13: Patent Applications for the Chemical Invention [FNa1]
There is only one patent law, and it applies to all inventions regardless of the technology. However, as a
practical matter, there are special considerations that must be taken into account when preparing a patent applic-
ation to protect a chemical invention. These special considerations, which arise because of the unpredictability
of chemistry, affect how the specification and claims are drafted for chemical patent applications. Unique fea-
tures of the specification and claims for chemical cases are discussed below in §§ 13.2 and 13.3, respectively.
This chapter should not be relied upon alone. It is a supplement to the preceding chapters. It is also sugges-
ted that the next chapter dealing with biotechnological inventions be read, because biotechnology is in many
ways a species of chemistry. The American Intellectual Property Law Association in September 1990 presented
a practice seminar relating to preparing patent applications that covered both chemical and biotechnology prac-
tice because they are so closely related. Therefore, suggestions found in chapter 14 will be helpful in preparing
an application for a chemical invention.
[FNa1]. Edith Rice of Eastman Kodak, Rochester, New York; edited by Jeffrey G. Sheldon.
END OF DOCUMENT


Jeffrey G. Sheldon

*13-2 § 13.2 The Specification
The statutory requirements for the specification are set forth in 35 U.S.C. § 112, first paragraph, which
reads as follows:
The specification shall contain a written description of the invention and of the manner and press of
making and using it, *13-3 in such full, clear, concise, and exact terms as to enable any person skilled in the
art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set
forth the best mode contemplated by the inventor of carrying out the invention. [FN1]
The statute thus sets forth three distinct requirements for the specification, which are generally referred to as (1)
the written description requirement, (2) the enablement requirement, and (3) the best-mode requirement. The
specification of any patent application, including one written to protect a chemical invention, must meet all three
requirements. Because of the unpredictability of chemistry, each one of these requirements poses special chal-
lenges in drafting a chemical patent application.
[FN1]. In re Gosteli, 872 F.2d 1008, 10 U.S.P.Q.2d 1614 (Fed. Cir. 1989).
END OF DOCUMENT


Jeffrey G. Sheldon

§ 13.2 The Specification
*13-3 § 13.2.1 The Written Description Requirement
The statute states that there must be a written description of the invention. This immediately raises the ques-
tion, "What is the invention?" The function of the written description requirement is to ensure that the applicant
had possession, as of the filing date, of the subject matter claimed by them. [FN2] Therefore, the written de-
scription requirement is directed to the claimed invention. [FN3] Accordingly, before the application can be
written, it is necessary to have a good idea of what is to be claimed. Therefore, it is often preferable to start
drafting the specification of a chemical patent application with a rough draft of the broadest claim or claims
already prepared. (Issues specifically related to the claims of a chemical application are discussed in detail be-
low, in section 13.3.)
*13-4 § 13.2.1.1 Paraphrase the Main Claim
To ensure that the specification contains a written description of the claimed invention, some practitioners,
including the author, set forth at least the main claim or claims verbatim in the application. This is not, however,
required. Other practitioners paraphrase the main claims into conversational English so they can be understood
by a judge or a jury. The courts have ruled that the claimed invention need not be described in ipsis verbis in the
application. [FN4] However, the invention must be described in the specification with sufficient detail to satisfy
the Patent and Trademark Office, or ultimately the court, that the inventor was in possession of the claimed in-
vention at the time of filing the patent application. [FN5]
As discussed in the next chapter dealing with biotechnolgy, as to claims relating to DNA, The Federal Cir-
cuit n the Fiers [FN6] case held that the description requirement can be violated even if the exact language of
the claim is set forth in the specification. Fiers held that if the DNA structure or function is claimed per se, i.e.,
not in a product-by-process claim, then the description section must describe the DNA structure, name, formula,
or definitive chemical or physical properties. This holding of the Fiers case may be carried over to chemical
cases. Thus, to satisfy the description requirement for a chemical composition that is claimed other than by a
product-by-process claim, it is recommended that the specification include as much information as possible
about the structure, name, formula, and definitive chemical and physical properties of the chemical composition.
*13-5 § 13.2.1.2 Describe Species and Subgenuses
The sufficiency of the written description of the invention in an application is usually questioned when (a)
the applicant seeks to amend the claims during prosecution, and the amended claims are alleged to be directed to
subject matter not described in the specification as filed; (b) a continuation-in-part application has been filed,
and the benefit of the filing date of the earlier application is sought for claims newly submitted in the continu-
ation-in-part application; and (c) claims are copied from a patent in order to provoke an interference.

In order to prevail if the written description issue arises, it is desirable to anticipate what subject matter
might later become the subject of a claim. This is easier said than done. For example, a broad generic claim dir-
ected to a large number of chemical compounds has been held not to be a written disclosure of each compound
encompassed within the generic claim. [FN7] Thus, the specification of a chemical application should include a
lengthy list of compounds falling within the scope of the generic claim, even though such an exhaustive list
would not be required to provide a written description of the initially claimed invention. This exhaustive list can
provide the basis for adding one or more species claims to the application if such claims are subsequently
needed. Without the list of compounds, it may be impossible to add the species claims. Similarly, it is also desir-
able to set forth preferred subgenuses of a claimed genus in the specification.
Listing all species and subgenuses can be time-consuming and expensive. One way around the problem may
be to list the compounds not in the genus. It has been held that a claim directed to a broad generic invention, ex-
cluding certain compounds, may satisfy the written description requirement. [FN8] It *13-6 has also been held
that a broad numerical range provides a written description of a claimed invention limited to a narrower numer-
ical range within the broad generic range. [FN9]
[FN2]. In re Blaser, 556 F.2d 534, 194 U.S.P.Q. 122 (C.C.P.A. 1977).
[FN3]. In re Gosteli, 872 F.2d 1008, 10 U.S.P.Q.2d 1614 (Fed. Cir. 1989).
[FN4]. In re Lukach, 442 F.2d 967, 169 U.S.P.Q. 795 (C.C.P.A. 1971).
[FN6]. Fiers v. Revel, 984 F.2d 1164, 25 U.S.P.Q.2d 1601 (Fed. Cir. 1993).
[FN7]. In re Ruschig, 379 F.2d 990, 154 U.S.P.Q. 118 (C.C.P.A. 1967).
[FN8]. In re Johnson, 558 F.2d 629, 194 U.S.P.Q. 187 (C.C.P.A. 1977).
[FN9]. In re Wertheim, 541 F.2d 257, 191 U.S.P.Q. 90 (C.C.P.A. 1976).
END OF DOCUMENT


Jeffrey G. Sheldon

*13-6 § 13.2.2 The Enablement Requirement
There are two aspects to the enablement requirement. The specification must teach one skilled in the art (a)
how to make and (b) how to use the invention. The scope of enablement must be commensurate with the scope
of the invention. [FN10] Because the specification is directed to one of skill in the art, what is well known in the
art does not have to be included in the patent application. In order to satisfy the enablement requirement of 35
U.S.C. § 112, first paragraph, the specification "need not be a 'blueprint' which, if followed, would unfailingly
reproduce exactly applicant's claimed invention; rather only objective enablement without resort to undue exper-
imentation is required". [FN11] However, it is a safe policy to include everything, including what the inventor
regards as well known, in the patent specification.
To reduce the length of the specification, it is possible to incorporate by reference [FN12] subject matter
that is already known to those skilled in the relevant art. If an inventor is unable to provide a published docu-
ment setting forth what he or she alleges is known in the art, the subject matter should be effectively set forth in
detail in the patent application. [FN13]
*13-7 § 13.2.2.1 How to Make
There are several issues that arise in meeting the "how to make" requirement in chemical patent applica-
tions. These include identifying starting materials and providing working examples.
§ 13.2.2.1.1 Starting Materials
Typically, the body of the specification sets forth a method of making the claimed compound or composi-
tion. In this description, starting materials should be set forth both generically and specifically.
The identification of starting materials can give rise to difficult issues. If the starting material is itself novel,
it is probably desirable to claim it as well as the desired final product. It is necessary to include a description of
how to make such novel starting materials. Even if the starting material is known, a statement as to how that ma-
terial is prepared or a reference to a method of preparing the compound reported in the art should be included in
the patent application.
Some starting materials are commercially available from a manufacturer or other supplier. A convenient
way of identifying the material is by using the trademark used by the supplier to identify the material. This
raises the issue that the supplier has control over the material supplied under a given trademark, and this com-
position may vary as time goes on. If sufficient information is known about the material to identify it ad-
equately, include that information without reference to the trademark. One way of obtaining such information is
from the product brochures and data sheets provided by the supplier. Another is to search for a patent to the sup-
plier that may include detailed information on the material and how it is made. This issued patent can be referred

to in the specification and incorporated by reference. However, in certain instances, the supplier does not release
sufficient details of the starting material. In that case, it is necessary to identify the material by the trademark
and the supplier of the material. *13-8 It is still desirable to provide as much information as possible about the
material even if this is in generic terms, e.g., "an ethylene-vinyl acetate copolymer commercially available under
the trademark 'ELVAX' from E.I. duPont de Nemours & Company." The Condensed Chemical Dictionary
[FN14] provides generic names corresponding to manufacturers' trademarks.
§ 13.2.2.1.2 Reaction Conditions
It is necessary to describe how the starting materials are reacted to produce the claimed compound. The re-
action conditions should be set forth in ranges, usually a broad range together with one or more preferred ranges.
Only one method of preparing the compound is required to be set forth; however, if other methods are known, it
is preferable to also refer to those methods. This can be done in less detail and by reference to methods reported
in the art, together with the statement that such alternative methods are suitable for preparing the compounds or
compositions of the instant invention.
§ 13.2.2.1.3 Working Examples
In mechanical patent applications, the disclosure of a single embodiment is generally sufficient to support
claims drafted as broadly as the prior art permits. Things are not so easy for chemical applications, because
chemistry is relatively unpredictable, and it is generally not possible to derive a generic definition of the inven-
tion from a single species. In chemical applications, the enablement must be commensurate with the scope of the
claims. [FN15] Accordingly, in chemical applications, in order to satisfy the enablement requirement, numerous
species of the invention are usually set forth in working examples.
*13-9 Unfortunately, there is a tendency on the part of some examiners to limit the scope of the claims to
the teaching of the working examples. However, this is not the law. There is at least one case [FN16] that holds
that, under certain circumstances, working examples are not even required. However, it is the rare chemical in-
vention that can be described adequately without including at least several working examples.
In most chemical applications, working examples should be included giving specific illustrative examples of
the claimed compounds and how they were made. In the working examples, exact amounts of starting materials,
order of addition of the reactants, if relevant, equipment employed, reaction conditions, purification steps, and
the identity of what is obtained are set forth.
The working examples should meet "scientific paper" standards. In other words, sufficient detail should be
provided so that the working examples can be reproduced by one of ordinary skill in the art.
At times it is desirable to file the patent application when relatively little experimental work has been done,
for example, to obtain an early United States filing date. Under such circumstances, the broadest possible claims
should be drafted, and a general disclosure of comparable breadth should be written. It is possible to file a con-
tinuation-in-part application at a later date to include additional information (provided no statutory bars have
arisen). [FN17]
The number of working examples to include in the application depends, to a certain extent, on the scope of
the claims and the predictability (or lack thereof) of the chemistry involved. If the broadest claim includes with-
in its scope a dozen or so compounds, less experimental data is needed than if the claim includes hundreds of
compounds within its *13-10 scope. An application containing a limited number of working examples may still
teach how to make the invention in sufficient detail to obtain broad claims. The Patent Office has the burden to

come forward with evidence or reasoning to contradict the teachings of the application. [FN18] Unfortunately, if
the chemistry involved is of an unpredictable nature, the examiner may well be able to provide such reasoning.
However, if the chemistry is reasonably predictable, the examiner is unlikely to be able to provide sound reasons
why the "how to make" requirements have not been met and, under these circumstances, only a few working ex-
amples should suffice.
The use of prospective or paper examples in an appropriate case should not be overlooked. If used, these ex-
amples must be written using the present tense and should be labelled "prospective," so as not to mislead the
public into believing the examples are based on actual experiments. These should be used as a last resort but,
when properly used, can be useful in meeting the enablement requirement of 35 U.S.C. § 112. There is a long
history in the United States that it is not necessary actually to reduce an invention to practice [FN19] and that
the filing of an adequate patent application is a constructive reduction to practice of the invention. This is as true
for chemical cases as it is for any other.
§ 13.2.2.2 A Checklist for Enablement
Exhibit 13-1 at the end of this chapter is a useful checklist in drafting working examples to make sure en-
ablement requirements are met. For each working example, and in the specification in general, the inventor
should identify the parameters identified in Exhibit 13-1, and those parameters should be included in the spe-
cification.
*13-11 § 13.2.2.3 How to Use and Utility
Section 101 of 35 U.S.C. requires that the invention be useful. Section 112 sets forth the additional require-
ment that the specification must teach one skilled in the art how to use the invention. Thus, there are two aspects
to the utility requirement for patentability: the claimed invention must be useful, and the specification must
teach how to use the invention.
Generally, the utility of the claimed compound or composition should be set forth in detail in the applica-
tion. However, because the specification is addressed to one of skill in the art, if it is obvious to one of skill in
the art how the invention can be used, the omission of such a teaching from the specification may not be fatal.
For example, in a patent application directed to a new high molecular weight polymer useful in preparing fibers,
the specification need not disclose how such fibers can be prepared, if they can be prepared by conventional
techniques.
The utility requirement of 35 U.S.C. § 101 can usually be met by a brief statement of the utility of the com-
pound. The use of a chemical compound for general research purposes is not sufficient in itself to meet the util-
ity requirement. An often cited case held that the alleged use of the compound as an intermediate in preparing a
known material was not sufficient utility when a method of transforming the intermediate into the final product
was not known at the time of filing the application. [FN20]
The conventional way to meet the "how to use" requirement of 35 U.S.C. § 112 is to include data in the
working examples showing that the compounds possess the stated utility. All compounds claimed need not ex-
hibit the same degree of utility. [FN21] When the inventive compound is biologically*13-12 active, more data
generally must be submitted to meet the utility and "how to use" requirements, because drug or pharmaceutical
utility can be unpredictable and is the most difficult to establish. [FN22]
Because of inconsistent and overly stringent application of the utility requirement by some Examiners in the
biotechnology group of the PTO, the Patent Office established guidelines for Examiners with regard to the util-

ity requirement. [FN23] Although these guidelines and the accompanying discussion of the law are particularly
directed to biotechnology inventions, they are applicable to all inventions, and thus are discussed in chapter 7 (§
7.1.2). However, since these guidelines were prepared with specific concern for problems in biotechnology pat-
ent applications, the guidelines include an extensive discussion of utility as applied to pharmacological and
therapeutic inventions. The specific application of these guidelines to biotechnolgy inventions appears in chapter
14, section 14.3.2.2. Because many of the principles applicable to biotechnology applications are applicable to
chemical applications, the reader is advised to review §§ 7.1.2 and 14.3.2.2. when preparing a chemical patent
application.
[FN10]. In re Wakefield, 422 F.2d 897, 164 U.S.P.Q. 636 (C.C.P.A. 1970).
[FN11]. Staehlin v. Secher, 24 U.S.P.Q.2d 1513 (Bd. App. & Interf. 1992).
[FN12]. See M.P.E.P. § 608.01(p) (1988) for the Patent Office's rules governing incorporation by reference.
[FN13]. In re Buchner, 929 F.2d 660, 18 U.S.P.Q.2d 1331 (Fed. Cir. 1991).
[FN14]. G. HAWLEY, THE CONDENSED CHEMICAL DICTIONARY (10th ed. 1987).
[FN15]. In re Wakefield, 422 F.2d 897, 164 U.S.P.Q. 636 (C.C.P.A. 1970).
[FN16]. In re Borkowski, 422 F.2d 904, 164 U.S.P.Q. 642 (C.C.P.A. 1970).
[FN17]. 35 U.S.C. § 102.
[FN18]. In re Marzocchi, 439 F.2d 220, 169 U.S.P.Q. 367 (C.C.P.A. 1971).
[FN19]. Dolbear v. Am. Bell Tel. Co., 126 U.S. 1 (1888).
[FN20]. Brenner v. Manson, 383 U.S. 519, 148 U.S.P.Q. 689 (1966).
[FN21]. In re Gardner, 475 F.2d 1389, 177 U.S.P.Q. 396 (C.C.P.A. 1973).
[FN22]. See M.P.E.P. § 2107.02 (1997).
[FN23]. 64 Fed. Reg. 71,440 (Dec. 21, 1999); see also Revised Interim Utility Guidelines Training Materials
END OF DOCUMENT


Jeffrey G. Sheldon

*13-12 § 13.2.3 The "Best Mode" Requirement
The specification is required to set forth the best mode contemplated by the inventor for carrying out the in-
vention. In preparing a chemical patent application, the best mode is generally included as one of the working
examples. The best mode need not be designated as such, [FN24] but it must be included in the application. The
"best mode" requirement is *13-13 directed to carrying out the claimed invention. [FN25] Like the other re-
quirements of 35 U.S.C. § 112, the description of the best mode is directed to one of ordinary skill in the art.
[FN26]
The fact that the "best mode" requirement is directed to the claimed invention can lead to seemingly contra-
dictory results. In a recent case, [FN27] it was held that failure to disclose the specific supplier and trade name
of the inventor's preferred material violated the "best mode" requirement. The facts of the case indicate that a
claimed grommet was made from a polyvinyl chloride plastisol, and the inventor did not know the formula,
composition, or method of manufacture of the plastisol. The court held that failure to disclose the supplier and
the trade name of the plastisol violated the "best mode" requirement. Contrarily, in another recent case, [FN28]
failure to disclose the formula of the preferred cleaning fluid for use in a claimed cleaning apparatus was held
not to violate the "best mode" requirement. In the first case, the plastisol was essential to the claimed invention,
while in the second the cleaning fluid was not essential. Further, there was evidence before the court in the first
case that showed that only one polyvinyl chloride plastisol of several tried by the inventor was effective for ob-
taining his grommet.
The importance of fully disclosing the best mode of every component specified in the claims, including de-
pendent claims, is highlighted by the decision in Acme Resin Corp. v. Ashland Oil, Inc. [FN29] In Acme, the
Federal Circuit held that failure to disclose a preferred polyisocyanate used to prepare *13-14 a claimed foundry
resin violated the "best mode" requirement, even though the patentee argued that the claimed invention was dir-
ected to the use of a phosphorous additive in otherwise known foundry resins, and not the polyisocyanate.
However, the court noted that the best mode requirement was directed to the claimed invention, and the fact de-
pendent claims limited the polyisocyanate components set forth in the independent claims clearly indicated to
the court that the polyisocyanate was part of the claimed invention. The court concluded that "(o)ur case law re-
quires disclosure of the known best mode for practicing all parts of the invention as applicant himself chose to
claim it." [FN30]
In the recent case of Wahl Instruments, Inc. v. Acvious, Inc., [FN31] the court confirmed that the "best
mode" requirement is directed to the claimed invention and is addressed to one of skill in the art. In Wahl, fail-
ure to disclose the process of embedment molding of the claimed egg timer was held not to be a violation of the
best mode requirement since the claimed invention was the egg timer and its use, not the method of its manufac-
ture, and because embedment molding was well known in the art.

Disclosure of an inoperative embodiment while deliberately concealing the best mode has been held to be
inequitable conduct rendering the patent unenforceable. [FN32]
As with the other requirements of 35 U.S.C. § 112, first paragraph, it is difficult in preparing the application
to determine how much information must be included to meet the "best mode" requirement. The safest policy is
to include everything. The practitioner drafting the application must impress upon the inventor that he or she
must divulge this information.
[FN24]. Id.
[FN25]. Christianson v. Colt Indus. Operating Corp., 870 F.2d 1292, 10 U.S.P.Q.2d 1352 (Fed. Cir. 1989).
[FN29]. Acme Resin Corp. v. Ashland Oil, Inc., 954 F.2d 735, 24 U.S.P.Q.2d 1475 (Fed. Cir. 1992).
[FN30]. Id., 24 U.S.P.Q. at 1478.
[FN31]. Wahl Instruments, Inc. v. Acvious, Inc., 950 F.2d 1575 (Fed. Cir. 1992).
[FN32]. Consol. Aluminum Corp. v. Foseco Int'l Ltd., 910 F.2d 804, 15 U.S.P.Q.2d 1481 (Fed. Cir. 1990).
END OF DOCUMENT


Jeffrey G. Sheldon

§ 13.3 Claiming the Chemical Invention
*13-15 § 13.3.1 What to Claim
As in all patent applications, the claims define the scope of protection, and it is desirable to obtain the
broadest possible protection for the invention. There are several considerations unique to the chemical applica-
tion. It is desirable to claim all possible aspects of the invention. For example, for an invention based on a new
compound X, the following types of claims should be considered:
• compound X per se
• compound X in combination with desirable functional properties specified (e.g., compound X having a
pore size of at least 50 microns)
• methods of making compound X
• methods of using compound X
• compositions containing compound X
• intermediates used to produce compound X
• methods of making the intermediates
• methods of using the intermediate to make compound X
• kits containing a variety of reagents including compound X (useful for inventions where compound X
is sold as part of a kit containing other reagents).
It should be noted that claims to a new compound X must be to a compound not disclosed in the prior art.
Even if no use is disclosed for the compound in the prior art [FN33] and a newly discovered use for the pre-
existing compound is discovered, the compound per se cannot be claimed, but only the new use. Claims can be
directed to a compound that *13-16 exists in nature only in a mixture or complex with other materials, if the
isolated compound exhibits properties not obvious from the naturally occurring material. [FN34]
A possible problem with including all these different types of claims in one application is that a restriction
requirement can be received. According to 35 U.S.C. § 121, "If two or more independent and distinct inventions
are claimed in one application, the Commissioner may require the application to be restricted to one of the in-
ventions." Such requests for restriction are common in applications directed to chemical inventions. Refer to
chapter 6 for a discussion of the strategic reasons for including multiple classes of claims in a single application,
even when receipt of a restriction requirement is almost an absolute certainty.
[FN33]. In re Schoenwald & Barfknecht, 964 F.2d 1122, 22 U.S.P.Q.2d 1671 (Fed.Cir. 1992).
[FN34]. In re Kratz, 592 F.2d 1169, 201 U.S.P.Q. 71 (C.C.P.A. 1979). See also Merck & Co. v. Olin Mathieson
Chem. Corp., 253 F.2d 156, 116 U.S.P.Q. 484 (4th Cir. 1958).

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Jeffrey G. Sheldon

[FN35]
A unique feature of claiming chemical inventions is the use of Markush groups to define the claimed inven-
tion (which is then termed a Markush claim). This practice dates back to Ex parte Markush [FN36] and is used
when there is no acceptable generic expression to define the generic invention. A Markush group consists of a
group of compounds or radicals, which, for the purpose of the invention, are equivalent. The traditional lan-
guage for a Markush group is "wherein X is a member selected from the group consisting of A, B, C and D."
More recent practice permits use of the terminology "wherein X is A, B, C, or D." [FN37] The recited members
of the group should be members of a recognized class or have *13-17 some relevant property in common.
[FN38] If the members of the group are unrelated to each other, the claim may be held to be an improper
Markush claim.
The use of Markush groups should be limited. The only advantage of Markush groups is that they save
money, because it is less expensive to file one claim containing a Markush group than separate claims directed
to each member of the Markush group.
It is recommended that at least the preferred species of a Markush group be claimed by itself, in either a de-
pendent claim or an independent claim. The reason for this is that if a less preferred species of a Markush group
is not novel or is found to be obvious, then, arguably, the entire Markush claim is invalid. By breaking out the
preferred species into its own claim, possibly that claim can be salvaged in litigation by stressing the advantages
of the preferred species compared to the less preferred prior art species.
[FN35]. Markush groups are discussed in detail in chapter 6.
[FN36]. 1925 Dec. Comm'r Pat. 126, 340 Off. Gaz. Pat. Office 839.
[FN37]. See M.P.E.P. § 2173.05(g) (1997) for a discussion of Markush practice.
[FN38]. See Peter J. Dehlinger, A Not-So-Practical Proposal for Selective Radical Substitutions in Markush-type
Claims, J. PAT & TRADEMARK OFF. SOC'Y 463 (1992).
END OF DOCUMENT


Jeffrey G. Sheldon

[FN39]
In claiming chemical compounds or compositions, it is not always possible to define the material in terms of
a precise chemical structure. In such cases, the use of product-by-process claims [FN40] is appropriate. The tra-
ditional terminology is "a product made according to the process of claim 1," or "a product made by the steps of.
. . ." In product-by-process claims, the patentability of the product must be established independently of the pro-
cess. [FN41] That is, if the product is not *13-18 novel or is obvious in view of a prior art compound, the
product-by-process claim is not patentable, even if the process used to make the product is itself patentable. It
has recently been held that product-by-process claims encompass the product regardless of the process used to
prepare the compound. [FN42]
In view of a recent decision by the Federal Circuit, it is recommended that product-by-process claims be
seriously considered in place of conventional composition claims. The court has held that a claim directed to a
combination of ingredients a, b, and c is not infringed by a composition made by mixing a, b, and c, where in the
process of making the composition b and c react with each other, so that they are no longer present by them-
selves in the final composition. There would have been an infringement if the claim used the language "A com-
position made by combining a, b, and c. . . ." Thus, it is recommended that if a patent application is directed to a
composition, a claim be included having the following preamble: "A composition made by combining. . . ."
[FN43]
Another problem can arise when the claimed invention is not sold by the alleged infringer, but is inherently
produced when a particular composition is ingested by a patient. [FN43.1] A non-infringement outcome may be
avoided by claiming "a composition resulting by ingestion of . . ."
[FN39]. Product-by-process claims are discussed in detail in chapter 6.
[FN40]. See M.P.E.P. § 2173.05(p) (1997) for a discussion of product-by-process claims.
[FN41]. In re Brown & Saffer, 459 F.2d 531, 59 C.C.P.A. 1036, 173 U.S.P.Q. 685 (C.C.P.A. 1972).
1991).
[FN43]. See Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 35 U.S.P.Q.2d 1801 (Fed. Cir. 1995);
Exxon Chem. Patents, Inc. v. Lubrizol Corp., 77 F.3d 450, 451-57 (Fed. Cir. 1996) (Newman, J., dissenting
from denial of rehearing en banc).

[FN43.1]. Novartis Pharms. Corp. v. Eon Labs Mfg. Inc., 363 F.3d 1306 (Fed. Cir. 2004).
END OF DOCUMENT


Jeffrey G. Sheldon

[FN44]
It is possible, in appropriate circumstances, to use functional expressions to obtain the breadth of protection
desired. For example, the limitation used to define a radical on a chemical compound as "incapable of forming a
dye with said oxidizing developing agent," although functional, was held acceptable because it set definite
boundaries on the scope of the patent protection. [FN45] If such terms and process steps are well known in the
art, it is not necessary to spell out in the claim the exact chemicals used by the inventor.
In appropriate inventions, it may be desirable to define the claimed composition of matter at least partially
in terms of the properties exhibited by the novel composition. [FN46] This generally can be done by specifying
the basic composition and then adding the novel properties. This can be particularly useful in the field of poly-
mer inventions, because different polymers having the same or similar repeating units may have significantly
different properties. However, it is imperative that the claimed composition be novel over the prior art composi-
tions and not merely be the same composition with an as yet unknown property recited in the claims. [FN47]
[FN44]. Use of functional expressions is discussed in detail in chapter 6.
[FN45]. M.P.E.P. § 2173.05(g) (citing In re Barr, 444 F.2d 588, 170 U.S.P.Q. 33 (C.C.P.A. 1971)); In re Boller,
332 F.2d 382, 141 U.S.P.Q. 740 (1964) (holding "volatilizing neutralizing agent" to be acceptable).
[FN46]. Ex parte Brian, 118 U.S.P.Q. 242 (Pat. Off. Bd. App. 1958).
[FN47]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

*13-19 § 13.3.5 Operability
Another concern in drafting the claims is operability. The basis for the special treatment given for chemical
cases is the unpredictability of chemistry. This factor is most notable in biologically active compounds and cata-
lysts, but is also present in most chemical cases. Closely related compounds *13-20 may not have the same oper-
ability and, in drafting the scope of the broad claim, it is often impossible to exclude all compounds that do not
exhibit the utility alleged for the claimed compounds. The courts have recognized that some nonoperability can
be present in the broad claim without rendering it invalid, [FN48] but exactly how much inoperability can be
present is a case-by-case determination by the courts.
The broad claim should be drafted in such a manner as to exclude known inoperable species. This can be
done in a variety of ways. The use of "with the provision that . . ." can be useful in chemical compound claims to
exclude nonoperable species. For example, it is possible to phrase the claim as:
A vehicle containing a herbicidally active compound of the formula X.
Such a claim does not include nonoperable compounds within its scope, even if the generic formula "X" in-
cludes such compounds, because of the use of the language "herbicidally active." [FN49]
[FN48]. In re Sarett, 327 F.2d 1005, 140 U.S.P.Q. 474, 486 (C.C.P.A. 1964).
[FN49]. In re Caldwell, 319 F.2d 254, 138 U.S.P.Q. 243 (C.C.P.A. 1963).
END OF DOCUMENT


Jeffrey G. Sheldon

*13-20 § 13.3.6 Use of Broad Claim Language
It can be a challenge to obtain broad claim coverage in a chemical patent application. Techniques for obtain-
ing effective broad coverage include:
(1) Avoid unnecessary limitations in the preamble. All that is necessary to have in the preamble is "A
composition of matter;"
(2) Use broad transition phrases such as "comprising," or alternatively "consisting essentially of;" (see §
6.3.4.)
(3) Use such terms as "mixture" which is considered to be open-ended, allowing other ingredients;
[FN49.1]
*13-21 (4) If there is a possibility that ingredients in a composition react with one another, include
claims directed to the reaction mixture resulting from mixing the ingredients. (See § 13.3.3.)
[FN49.1]. Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369 (Fed. Cir. 2004).
END OF DOCUMENT


Jeffrey G. Sheldon

*13-21 § 13.4 Other Considerations
In preparing the patent application, the invention should be put forward in a light most likely to receive fa-
vorable consideration by the patent examiner. In chemical applications, the issue frequently arises as to whether
the prior art creates a prima facie case of obviousness. [FN50] To overcome a prima facie case of obviousness, a
showing of unexpected results may be submitted. If this information is available at the time of preparing the ap-
plication, it can be presented in the working examples to expedite prosecution of the patent application.
There is no requirement that this information be included in the patent application, and in some instances,
presentation of such information in the patent application is not desirable. For example, if there is a question as
to the accuracy or repeatability of experimental data, it is better to leave the data out of the application rather
than delay filing the application to confirm the data. If the data are needed during prosecution, their accuracy
can be confirmed at that time.
[FN50]. In re Dillon, 919 F.2d 688, 16 U.S.P.Q.2d 1897 (Fed. Cir. 1990).
END OF DOCUMENT


Edith Rice [FNa1]

Chapter 13: Patent Applications for the Chemical Invention
*13-19 Exhibit 13-1: Checklist for Enablement in Chemical Applications
[ ] starting materials by chemical formula, source, trademark, purity
[ ] pH of reaction
[ ] temperature of reaction
[ ] pressure of reaction
[ ] duration of reaction
[ ] separation and purification methods, whenever needed, including separation techniques, for the product
[ ] molar and/or mass and/or volume ratio of reactants
[ ] order in which reactants are added
[ ] physical treatment used such as mixing, stirring, heating, cooling, refluxing, UV light, x-rays, etc.
[ ] equipment used
[ ] contaminants to be avoided, such as water or oxygen
[ ] atmosphere for reaction, i.e., oxygen-free, inert, nitrogen, pure oxygen, air
[ ] shape and type of reaction vessel
[ ] particle size of reactants
[ ] substitutes for all reactants, even if less preferred, such as organic compounds substituted with oxygen,
sulfur, halogens, etc.
[ ] catalysts used
[ ] preferred, most preferred, and optimum parameters for all of the above, and the technical and economic
reasons why preferred
[FNa1]. Eastman Kodak, Rochester, New York; edited by Jeffrey G. Sheldon.

END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 14: Biotechnology Patent Applications [FNa1]
*14-3 § 14.1.1 Scope of This Chapter
This chapter is directed to features of biotechnology patent applications different from those of mechanical
applications that are the subject matter of the more general chapters of this book. This chapter includes a de-
scription of unique disclosure and claiming problems of biotechnology patent applications.
In this chapter, it is assumed that the reader is familiar with more basic principles of writing patent applica-
tions as presented in earlier chapters, particularly chapter 6 (claims) and chapter 7 (specifications). For the most
part, these basic principles will not be repeated here; rather, this chapter concentrates on tips and suggestions for
writing allowable biotechnology patent applications.
[FNa1]. This chapter was originally written by SaraLynn Mandel; it is edited by Jeffrey G. Sheldon.
END OF DOCUMENT


Jeffrey G. Sheldon

*14-3 § 14.1.2 What Is Biotechnology?
Biotechnology patent applications pose special challenges, both legal and technical, to the patent practition-
er. In general, "biotechnology" encompasses "the creation of new varieties of plants, new animal breeds and new
microorganisms, either by traditional selection methods or by new methods [of] . . . genetic engineering, that is,
by methods of modifying the genes of . . . animals, plants and microorganisms, by introducing an artificially
modified genetic material, to provide new products, and new processes for using or producing such products."
[FN1]
*14-4 Included in the broad category of biotechnology applications are inventions for new plant varieties
(by selective breeding); animal varieties (by selective breeding); fused somatic (nonsex) cells and cell lines, for
example, to form hybridomas capable of producing monoclonal antibodies, informational macromolecules, such
as deoxyribonucleic acid (DNA) and ribonucleic acid (RNA), and infectious vectors such as prions, viroids, and
viruses ("viral particles"); engineered organisms, for example, by introduction of genetic material or alteration
of genetic material; and purified isolates of naturally occurring animal and plant cells, for example, to obtain or-
ganic substances such as pharmacologically active compounds.
[FN1]. WIPO Publication Biot/CE/I/2; Industrial Property Protection of Biotechnology Inventions 4-5 (1984).
END OF DOCUMENT


Jeffrey G. Sheldon

*14-4 § 14.1.3 Alternative Forms of Protection
In addition to utility patents, two special forms of protection are available for biological inventions, namely
for plant varieties. These are the Plant Patent Act (PPA) of 1930, [FN2] discussed in chapter 10, and the Plant
Variety Protection Act (PVPA) of 1970. [FN3] These forms of protection should be considered in place of or in
addition to a utility patent when confronted with the need to protect a plant variety.
The PVPA is parallel to the PPA for protection of plant varieties that are sexually reproduced rather than
asexually reproduced. PVPA protection is available for sexually reproduced plant varieties except for fungi or
bacteria. [FN4] Protection is available for a novel variety that possesses distinctiveness, uniformity, and stabil-
ity. The critical requirement is distinctiveness, which is defined to be a variety which "is clearly distinguishable
from any other variety the existence of which is publicly known or a matter of common knowledge at the time of
the filing of the application." [FN5]
*14-5 In choosing between these alternative forms of protection, the factors to consider include the follow-
ing:
1. If the plant is asexually reproduced, only a plant patent and a utility patent may be available.
2. If the plant is sexually reproduced, only a PVPA certificate and a utility patent may be available.
3. Plant patents are useful when the enablement requirement for a utility patent cannot be met. For ex-
ample, if enablement can be satisfied only by a deposit, this can be a problem for asexually reproducible
plants due to lack of a suitable depository.
4. Generally it is less expensive to obtain a plant patent than a utility patent.
5. Plant patents are not available for plant parts, such as the fruit. Thus if only a portion of the plant will
be sold in commerce, a plant patent may not provide meaningful protection in that it will not prevent im-
portation of plant parts.
6. Seeds deposited with a PVPA application are not generally released to the public, while deposits
made in support of utility patents must be.
7. A PVPA certificate covers only the protected variety and plants essentially derived therefrom, and
thus does not cover similar plants created by nonderivative means, while a utility patent may cover such
similar plants.
8. The PVPA has several statutory exemptions, including the research exemption and a mandatory li-
censing provision, which do not exist for utility patents.
9. Under the PVPA, nonobviousness is not required, only distinctiveness. Thus for an obvious variety
that is distinct, PVPA protection is available even though a utility patent is not.
[FN2]. 35 U.S.C. §§ 161-64.

[FN3]. 7 U.S.C. §§ 2321-2582.
[FN4]. 7 U.S.C. § 2402.
[FN5]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

*14-6 § 14.1.4 Does a Patent Application Make Economic Sense?
For some biotechnology patent applications, it may not make economic sense to obtain a patent because
there is a safe harbor provision against patent infringement claims for pre-clinical research and development
work on certain products. [FN5.1] This exemption is statutorily limited to "solely for use as reasonably related
to the development and submission of information" to the FDA. This exemption applies to pre-clinical research
on a patented compound as well as studies to identify and collect data for purposes of submitting an investigat-
ive new drug application. The exemption applies when a researcher is seeking out new compounds in the hope
of identifying possible pharmaceuticals in the near future, and is not limited to situations of which a potential
medication has already been identified as being tested in order to obtain FDA approval. [FN5.2] Accordingly,
patents whose sole utility is for use in research may not have any economic value.
[FN5.1]. 35 U.S.C. § 271(e)(1).
[FN5.2]. Merck KGaA v. Integra Life Scis. I, Ltd., 125 S. Ct. 2372 (2005).
END OF DOCUMENT


Jeffrey G. Sheldon

*14-6 § 14.2 Identifying the Invention
"Inventions" in biotechnology differ from inventions in other disciplines, such as the mechanical or even the chemic-
al arts, because biotechnology inventions typically employ the modification of an existing system of living matter into
elements that may be difficult to define. Therefore, the description of biotechnology inventions is often in functional
terms (for example, describing the biological effects of the invention) or as part of a process (for example, method of
preparation of the invention) rather than the structural elements of the invention. Thus, a claim for a gene encoding a pro-
tein might read as follows:
*14-7 A gene comprising a recombinant DNA molecule encoding a polypeptide possessing biological activity of
interleukin-2, wherein said biological activity is promotion of growth of a cytotoxic T-lymphocyte cell line, where
said polypeptide has 132-134 amino acids in total in the amino acid sequence of the polypeptide. [FN6]
A unique challenge with regard to describing biotechnology inventions is that they can often be described in several
different ways, each valid scientifically. For example, a newly obtained mutant of a known microorganism might be de-
scribed in terms of its morphological characteristics, physiology, or such molecular characteristics as a strain-specific
"fingerprint" of proteins.
In general, biotechnology inventions are in two categories: (1) discovery or isolation/purification inventions and (2)
manufacture or process inventions. In the first category, the inventor identifies, isolates, and purifies a microorganism or
other biological material from a natural source. Subsequent activities that may result in patentable inventions include
mutation to obtain more desirable organisms and isolation of DNA having functional significance in the organism when
expressed. Inventions in the second category include the manipulation of biological materials to form products having
specific traits, or improved techniques for biological procedures, such as genetic engineering methods. These inventions
can consist of a combination of new or old elements.
Biotechnology inventions can be described and claimed in many different ways. [FN7]
*14-8 The following table provides common claim categories for biotechnology inventions: [FN8]
------------------------------------------------
CLAIM CATEGORIES FOR BIOTECHNOLOGY INVENTIONS
------------------------------------------------
cDNA or recombinant (r)DNA
------------------------------------------------
Protein, Polypepetide or Peptide (Product)
------------------------------------------------
Monoclonal Antibodies (Mabs) vs. Protein

------------------------------------------------
Neutralizing or Blocking Mabs
------------------------------------------------
Engineered Mabs--Fab, F , V , V , SC, etc.
V L H
------------------------------------------------
Receptor for Protein
------------------------------------------------
Anti-Sense DNA
------------------------------------------------
Recombinant Vectors
------------------------------------------------
Host Cells
------------------------------------------------
Transformed Cell Lines
------------------------------------------------
Methods of Producing Protein via Expression
------------------------------------------------
Transgenic Animals
------------------------------------------------
Methods of Using the Protein
------------------------------------------------
Diagnostic/Kits
------------------------------------------------
Pharmaceutical Composition
------------------------------------------------
For example, an application for a new pharmaceutically active compound could include claims for:
• The compound itself;
• The compound conjugated to another molecule, such as a label, targeting antibody, or solid support;
• Salts, esters, and derivatives of the compound;
*14-9 • Antibodies reactive with the compound;
• Methods of therapy or diagnosis using the compound or antibodies to the compound;
• Compositions for treatment using the compound;
• Methods of using the compound in vitro; and
• Methods of making the compound.
An application for a new protein (or peptide) isolated and purified from natural sources can include claims for:
• The protein in purified and isolated form;
• The protein coupled to another molecule;
• Processed forms of the protein;
• DNA encoding the protein (distinguished from the naturally occurring gene, for example, using language "con-
sisting of," "in a transfer vector," "substantially free of");
• Expression systems, that is, DNA linked to control sequences such as promoters, etc.;
• Recombinant host cells containing the encoding DNA or expression system;
• Methods to produce the protein using recombinant cells;

• The recombinant protein produced (if it can be distinguished from native protein);
• Methods of treatment or diagnosis using the protein;
• Pharmaceutical compositions containing the protein for treatment;
• DNA encoding the protein conjugated to another molecule;
• Methods of using the DNA in diagnosis or as a probe;
• Antibodies reactive with the protein;
• Methods to purify the protein from native or recombinant sources; and
*14-10 • Methods to assay for the presence or activity of the protein.
An application directed to an antibody, such as monoclonal antibody preparations reactive with a specific antigen
and fragments thereof, can be claimed as:
• Labeled or otherwise conjugated monoclonal antibodies;
• A hybridoma or immortalized cell line that secretes the monoclonal antibodies;
• A method to produce the monoclonal antibodies by culturing the hybridomas; or
• A method to use the monoclonal antibodies in treatment or diagnosis, and pharmaceutical compositions for
treatment containing the monoclonal antibodies.
Particularly with respect to claims for protein preparations, it may be possible to "paper in" certain aspects of the in-
vention that have not yet been reduced to practice, provided that undue experimentation is not required to carry out those
aspects (see section 14.4 for a discussion of 35 U.S.C. § 112). If a protein was not previously known (that is, identified),
a broader scope of protection encompassing several of the above-enumerated aspects can be claimed. Similarly, if the
protein was previously identified, for example, its activity was known, but the protein has never before been isolated in
pure form, those aspects can be available for patent protection. However, if the protein is already known and more or less
purified, and the inventor has cloned and expressed the DNA encoding that protein, claims to the protein itself or to using
the protein can be difficult to obtain. With the advances in recombinant technology, the Patent Office has increasingly re-
jected claims for cloning and expression based on obviousness of such "known" procedures.
With respect to monoclonal antibody technology, difficulties exist in obtaining claims where the antigen is already
known. A typical rejection is that the monoclonal antibody is *14-11 prima facie obvious under 35 U.S.C. § 103 in view
of a known antigen. Attempts should be made in drafting the application to emphasize such unusual aspects of the pro-
cedure as, for example, screening the antibodies.
[FN6]. U.S. Patent No. 4,738,927.
[FN7]. The description of various types of biotechnology inventions and claim formats was prepared with reference to
the discussions in two chapters of a book published by the American Intellectual Property Law Ass'n (AIPLA): Muras-
hige, Drafting the Application in Biotechnology Practice, in AIPLA, BASIC CHEMICAL AND BIOTECHNOLOGY
PRACTICE SEMINAR (Fall-Winter 1990) (biotechnology inventions); Respess, Preparing a Chemical Patent Applica-
tion, in AIPLA BASIC CHEMICAL AND BIOTECHNOLOGY PRACTICE SEMINAR (Fall-Winter 1990).
[FN8]. Rochelle K. Seide, Drafting Claims for Biotechnology Inventions, in ADVANCED CLAIM DRAFTING AND
AMENDMENT WRITING WORKSHOP 1993, at 393 (PLI Patents, Copyrights, Trademarks, and Literary Property
Series No. 378, 1993).
END OF DOCUMENT


Jeffrey G. Sheldon

*14-11 § 14.3 Patentability of Biotechnology Inventions
Patentable inventions in biotechnology must meet the requirements of 35 U.S.C. §§ 101, 102, and 103, just
as is required of other categories of invention. Thus, under 35 U.S.C. § 101, a biotechnology invention must
have utility as a process, manufacture or composition of matter, or improvement thereof. The invention must
possess novelty and be nonobvious consistent with the prohibitions of 35 U.S.C. §§ 102 and 103. These sections
pose their own set of problems unique to biotechnology inventions. Although it is in rejections from the Patent
Office during prosecution of the application that the provisions of 35 U.S.C. §§ 101, 102, and 103 are directly
encountered, preparation of the biotechnology patent application "defensively" with the requirements of those
sections in mind can increase the practitioner's chances of overcoming such rejections during prosecution of the
application. Thus, the following discussion provides suggestions for writing biotechnology patent applications in
such a way as to optimize the chances for obtaining a patent.
END OF DOCUMENT


Jeffrey G. Sheldon

§ 14.3 Patentability of Biotechnology Inventions
*14-11 § 14.3.1 Patentable Subject Matter
The biotechnology patent practitioner should prepare the application with attention to possible rejections
under 35 U.S.C. § 101 for lack of utility and, possibly, "product of nature" rejections. The latter rejection is
more properly made under 35 U.S.C. § 102 and is discussed below in § 14.3.3.
The issue of what is patentable subject matter with regard to biotechnology is fairly settled, subject to con-
gressional action. The Patent Office has issued a policy decision that *14-12 the Patent Office would issue pat-
ents directed to "non-naturally occurring non-human multi-cellular living organisms," including animals. The
decision stems from interpretation of earlier cases. [FN9] Consistent with this policy, a patent was issued for a
transgenic ("Oncomouse™") mouse having a genetically introduced susceptibility to cancer. [FN10] Reaction to
this policy has been strong, including objections by religious, farm-based, and animal activist groups. Congress,
in fact, imposed a moratorium on issuing animal patents to provide time for further governmental studies on
various issues presented by such patents, as well as acts to create infringement exceptions for farmers and re-
searchers. The moratorium has expired. It remains to be seen whether the Office's policy on granting patents on
genetically engineered animals will be abrogated to any extent by Congress.
Consistent with this policy, the Patent Office will also issue patents for seeds, plants, and tissue cultures.
[FN11] Although a plant may be protectable under the Plant Variety Protection Act (7 U.S.C. § 2321 et seq.)
and/or the Plant Protection Act (35 U.S.C. §§ 161-64), that fact does not preclude utility patent protection.
[FN12]
[FN9]. E.g., Diamond v. Chakrabarty, 447 U.S. 303 (1980); Ex parte Allen, 2 U.S.P.Q.2d 1425 (Pat. Off. Bd.
App. 1987), aff'd, 846 F.2d 77 (Fed. Cir. 1988).
[FN10]. U.S. Patent No. 4,736,866 ("Transgenic Non-Human Mammals," Leder et al.).
[FN11]. Ex parte Hibberd, 227 U.S.P.Q. 443 (Bd. Pat. App. & Interf. 1985).
[FN12]. J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., 534 U.S. 124 (2001).
END OF DOCUMENT


Jeffrey G. Sheldon

*14-12 § 14.3.2 Utility
§ 14.3.2.1 General Principles
A bare assertion of utility in the patent application is usually satisfactory to meet the utility requirement of
35 U.S.C. § 101 for most nonbiotechnology inventions. The specification *14-13 of utility needs to be specific.
Merely asserting that a compound is useful for the "treatment of diseases" and is an "anti-tumor substance" can
be an insufficient disclosure of utility, while a statement that the claimed compound is better than known anti-
tumor substances with known anti-tumor activity against leukemia tumor models is adequate. [FN13]
There are two situations in which the Patent Office may require proof of utility. The first is when the applic-
ation contains incredible statements or statements deemed unlikely to be correct by one skilled in the art in view
of contemporary knowledge. Examples of such claims are chemical compounds that regenerate amputated limbs,
methods for bringing the dead back to life, and, until recently, cures for baldness and cancer. [FN14]
The second situation in which utility can be challenged is when the examiner believes the invention lacks
utility, even when the asserted utility is believable on its face to persons skilled in the art in view of the contem-
porary knowledge of the art. In that situation, the burden is on the Examiner to give adequate support for rejec-
tion. [FN15]
If, in fact, the claim of utility is "incredible," or if the examiner has adequate support for the rejection for
lack of utility, the applicant must provide proof of utility. If a rejection for utility is received, proof of utility can
be provided during prosecution of the application. [FN16] Accordingly, in preparing a patent application, it is
not necessary to provide the proof of utility when writing the application.
If utility evidence does exist at the time of filing the application, it can be included as part of any working
examples. The proof of utility can be established by clinical or in vitro *14-14 data, or combinations thereof that
would be convincing to those skilled in the art.
§ 14.3.2.2 Utility Problems for Biotechnology Inventions
Rejections by the Patent Office under 35 U.S.C. § 101 for lack of utility are fairly common for biotechno-
logy inventions. For example, in applications that claim a method of using a compound for treatment of humans,
a rejection may be made under 35 U.S.C. § 101 for lack of utility because the application only discloses results
obtained outside of a human or animal, that is, "in vitro" instead of "in vivo." The Patent Office Manual of Pat-
ent Examining Procedure (M.P.E.P.) provides "Special Considerations for Asserted Therapeutic or Pharmacolo-
gical Utilities" (see M.P.E.P. section 2107.02). Section 2107.02 is intended to provide for uniform prosecution
of applications disclosing drug or pharmaceutical utility. Current Patent Office practice holds that in vivo, or
"clinical," utility may not be required in certain circumstances, for example, when the utility of a compound as-

serted by the applicant would be believable "on its face" to persons skilled in the art. A higher standard is sought
by the Office for applications when the utility is directed solely to treatment of humans. Of course, when prepar-
ing the patent application, given the current reality of competitiveness in many areas of biotechnology, it may
not be possible to obtain in vivo data even in animal models before filing the patent application. In such cases,
the practitioner should attempt to include statements of utility in the specification such that the data obtained
would be accepted by persons skilled in the art as correlating with the asserted utility. [FN17]
*14-15 The following arguments may be helpful in response to Patent Office attempts to limit method-
of-treatment claims to those supported by clinical demonstrations:
1. Argue that no useful drug is perfect or works in all cases;
2. Explain that there are many treatments routinely used in people that fail to work in a large num-
ber of cases, such as chemotherapeutic treatments for cancer; and
3. Assert that it is incompatible with the requirements of early disclosure required by the patent
system to delay filing an application until clinical trials are available to establish efficacy.
To the extent that the disclosure can contain facts relating to the claimed invention supporting these argu-
ments, those facts should be included in the specification. [FN18]
Because of inconsistent and overly stringent application of the utility requirement by some examiners in the
biotechnology group of the PTO, the Patent Office established guidelines for the examiners with regard to the
utility requirement. [FN19] Although these guidelines and the accompanying*14-16 discussion of the law are
particularly directed to biotechnology inventions, they are applicable to all inventions, and thus are discussed in
chapter 7 (§ 7.1.2). However, since these guidelines were initially prepared with specific concern for problems
in biotechnology patent applications, the predecessor [FN20] to the current guidelines contained an extensive
discussion of utility as applied to pharmacological and therapeutic inventions, and PTO training materials
[FN21] contain multiple examples directed to biological inventions. Thus an attorney/agent preparing an applic-
ation in these arts should carefully review those training materials to anticipate the utility rejections that may
await an application in the Patent Office. The author has gleaned the following principles from the prior
guidelines, the current guidelines, and the PTO training materials:
1. It is not necessary to establish that a therapeutic agent or a therapeutic process based on a claimed in-
vention is a safe or fully effective therapeutic agent or process for humans. The degree of effectiveness and
the safety of a claimed invention are not proper inquiries for the PTO in determining utility.
2. The assertion of utility in the specification requires "specificity." Mere assertion that a composition
has "biological activity" is insufficient.
3. If the utility of the claimed invention is readily apparent to one of ordinary skill in the art, it is not
necessary to specify the utility in the specification.
*14-17 4. An asserted utility should not be challenged by the PTO merely because there has been a pre-
vious lack of success in treating a disease or condition, or the absence of a proven animal model for testing
the effectiveness of drugs for treating a disorder in humans. The mere fact that there is no known cure for a
disease or condition alone should not serve as the basis of a utility rejection.
5. Utility of a pharmacological or other biological activity of a compound can be shown if there is a
"reasonable" correlation between the activity and the asserted utility. It is not necessary that there be a stat-
istically proven correlation, nor actual evidence of success in treating humans where such a utility is asser-
ted.
6. Utility can be shown by structural similarity between a claimed compound and known compounds
with therapeutic or pharmacological uses.
7. Data generated using in vitro assays and testing in animals should be sufficient to support an asserted

therapeutic or pharmacological utility. If the data would be viewed by one skilled in the art as being reason-
ably predictive of the asserted utility, utility is established. The lack of an art-recognized animal model is
not a basis for rejecting utility data if one skilled in the art would accept the animal tests as being "reason-
ably predictive" of utility in humans.
8. As a general rule, if human clinical trials have been initiated for a claimed invention, under the aus-
pice of a government agency, such as the FDA, the subject of the trial has met the burden of being "reason-
ably predictive" of utility.
9. A method of preventing an infection is more likely to receive a utility rejection than a method of
treating an infection since microorganisms can gain entry into the cells of a host through a multitude of ven-
ues, and it is *14-18 unlikely that a compound would be capable of preventing entry via all such avenues.
10. A nucleic acid sequence with no utility other than use as a probe to obtain the full length gene that
corresponds to the nucleic acid sequence lacks a specific asserted utility according to the PTO and will be
rejected on that basis.
The Federal Circuit appears to look favorably on these guidelines. The court has put the burden on the Pat-
ent Office to challenge a presumptively correct assertion of the utility in the disclosure. It is up to the Patent Of-
fice to provide evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility.
If the Patent Office can do this, then the burden is shifted to the applicant to provide rebuttal evidence.
Moreover, it is not necessary that a drug meet FDA requirements for safety and effectiveness to satisfy the util-
ity requirement. [FN22]
Experimental evidence of utility is needed when there is no indication that one skilled in the art would ac-
cept without question statements as to the efficacy of a claimed drug product and no evidence is presented to
demonstrate that the claimed product has these effects. [FN22.1]
Thus in the pharmaceutical arts, practical utility can be shown by adequate evidence of any pharmacologist
activity. Moreover, to the extent that testing is needed to establish utility, all that is required is that the testing be
reasonably indicative of the desired pharmacological response. In vitro testing rather than in vivo testing can es-
tablish practical utility if there is a known correlation between the in vitro tests and in vivo activity. [FN23]
*14-19 An example of compounds that can lack utility is ESTs, which are purified nucleic acid sequences
that include proteins and protein fragments. Where the claimed ESTs are no more than research intermediates
that may help scientists isolate particular underlying protein-encoding genes and conduct further experimenta-
tion on the genes, the utility requirement is not satisfied. Because the claimed ESTs can only be used to detect
the presence of genetic material having the same structure, they are unable to provide any information about the
overall structure or the function of the underlying gene. [FN23.1]
[FN13]. In re Brana, 51 F.3d 1560, 34 U.S.P.Q.2d 1436 (Fed. Cir. 1995); In re Kirk, 376 F.2d 936, 153 U.S.P.Q.
48 (C.C.P.A. 1967).
[FN14]. In re Joyce A. Cortright, 165 F.3d 1353, 49 U.S.P.Q.2d 1464 (Fed. Cir. 1999).
[FN16]. M.P.E.P. § 608.01(p).
[FN17]. See, e.g., Cross v. Lizuka, 753 F.2d 1040, 224 U.S.P.Q. 739 (Fed. Cir. 1985); In re Jolles, 628 F.2d

1322, 206 U.S.P.Q. 885 (C.C.P.A. 1980).

Statements of utility for pharmacological or chemotherapeutic purposes in patent applications may also raise
questions of compliance under 35 U.S.C. § 112, i.e., whether the disclosure enables the asserted use. In particu-
lar, claims that a genus possesses an asserted utility may raise questions with regard to the sufficiency of the
specification, including examples. The M.P.E.P. indicates that the determination of sufficiency may rest on
whether a person skilled in the art would deem it likely that the claimed genus would possess the asserted utility.
See M.P.E.P. § 2107.02.
[FN18]. Murashige, Drafting the Application in Biotechnology Practice, in AIPLA BASIC CHEMICAL AND
BIOTECHNOLOGY PRACTICE SEMINAR 23-44 (Fall-Winter 1990).
[FN19]. 66 Fed. Reg. 1,092 (Jan. 5, 2001); see also Synopsis of Application of the Revised Utility Guidelines,
[FN20]. United States Department of Commerce News PAT 94-28, PTO Announces New Biotechnology
Guidelines, Dec. 22, 1994.
[FN21]. Synopsis of Application of the Revised Utility Guidelines, available at

<http://www.uspto.gov/web/menu/utility.pdf>; see J. Timothy Meigs, Biotechnology Patent Prosecution in View
of PTO's Utility Examination Guidelines, JPTOS, July 2001, at 451.
[FN22.1]. Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318 (Fed. Cir. 2005).
[FN23]. Fujikawa v. Wattanasin, 93 F.3d 1559, 39 U.S.P.Q.2d 1895 (Fed. Cir. 1996).
[FN23.1]. In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005).
END OF DOCUMENT


Jeffrey G. Sheldon

*14-19 § 14.3.3 Novelty
Before drafting the biotechnology patent application, the practitioner must decide whether to conduct a
formal search of information related to the subject matter of the invention, or whether to rely on the inventor's
provision of related art and interpretation of that art. The decision of whether to search is decided on a case-
by-case basis and will certainly be influenced by the inventor's sense of the literature and his or her collection of
related publications. The inventor should provide a list and copies of relevant publications. The inventor may
also be able to supply the names of other researchers, for example known competitors, which can lead to a com-
puter-assisted search for publications by those persons.
The novelty requirements of 35 U.S.C. § 102 with respect to biotechnology inventions are applied by the
Patent Office to biotechnology applications in a manner similar to the application of that section to other areas
of patent law, at least to the extent that "prior art" is cited against an application. A full discussion of possible
rejections by the Patent Office under 35 U.S.C. § 102 during prosecution of a patent application is beyond the
scope of the present discussion. *14-20 However, the following is a brief discussion of problems encountered
under 35 U.S.C. § 102.
The novelty of the biotechnology invention relative to prior art and potential prior art should be stressed
throughout the specification and clearly recited in the claim. The background section of the application is the
usual location for a summary of the existing knowledge and publications of relevant art and for pointing out de-
ficiencies in the prior art, which, of course, the invention will solve.
Claims in a biotechnology patent application can be rejected as including subject matter that occurs in
nature. Once such rejections were common; presently they are less likely to be encountered. Such "product of
nature" rejections have been generally issued under 35 U.S.C. § 101. However, the provisions that actually gov-
ern this question are under 35 U.S.C. § 102, which requires that subject matter of inventions be "new." [FN24]
For example, a claim directed to the sequence of the portion of naturally occurring gene is not patentable under
35 U.S.C. § 102. [FN24.1]
As a general rule, if a product sought to be patented occurs naturally, it can be novel under 35 U.S.C. § 102
if it is prepared at a level of purity not available in nature and if at that level of purity the compound has a prop-
erty that the impure compound does not possess. Thus, "product of nature" rejections have been successfully
avoided by practitioners' using language in the preamble of a claim that recites that the organism or material is
"biologically pure," "substantially pure," "purified," or "isolated." [FN25] For example, a claim might *14-21
read: "A biologically pure culture of microorganism X." Alternatively, the product can be claimed by a physical
property that it does not possess in its natural form, such as "crystalline compound X."
A similar inherency problem can arise when the claimed invention is a metabolite resulting from an admin-

istered drug. Under such circumstances, a claim directed to the metabolite can be anticipated as being an inher-
ent result of the metabolism of the prior art drug. However, by claiming a substantially pure metabolite, or the
metabolite as part of a pharmaceutical composition, or the method of administering the metabolite, anticipation
by inherency is avoided. [FN25.1]
With respect to claims for new products resulting from conventional methods, the novelty often lies in the
biological material generated, for example, recombinant proteins or antibodies, rather than in the method itself.
Thus, for novel protein products, the claims can be directed to novel DNA sequences encoding the protein, novel
vectors, and transformed hosts capable of expressing the desired protein. Monoclonal antibody inventions will
typically contain claims to the antibodies and to the hybridomas that produce them.
A claim directed to a kit comprising instructions for carrying out a method and a suitable reagent was anti-
cipated by prior art showing a kit containing the same reagent and different instructions. The change in the prin-
ted matter did not avoid anticipation because the printed matter was not functionally related to the reagent.
[FN25.2]
[FN24]. See In re Bergy, 563 F.2d 1031, 195 U.S.P.Q. 344 (C.C.P.A. 1977), vacated sub nom. Parker v. Bergy,
438 U.S. 902, 198 U.S.P.Q. 257 (1978), aff'd on remand, 596 F.2d 952, vacated as moot, Diamond v. Chakra-
barty, 444 U.S. 1028, aff'd, 447 U.S. 303, 206 U.S.P.Q. 193 (1980).
[FN24.1]. In re Crish, 393 F.3d 1253 (Fed. Cir. 2004).
[FN25]. In re Bergstrom, 427 F.2d 1394, 1403, 166 U.S.P.Q. 256, 262 (C.C.P.A. 1970).
[FN25.1]. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2003).
[FN25.2]. In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004).
END OF DOCUMENT


Jeffrey G. Sheldon

*14-21 § 14.3.4 Obviousness
The provisions of 35 U.S.C. § 103 for nonobvious subject matter require careful attention when preparing
the specification of the biotechnology patent application. Rejections by *14-22 the Patent Office for obviousness
under 35 U.S.C. § 103 occur almost as a certainty during prosecution of biotechnology patent applications.
Thus, the practitioner is well advised to draft the specification and claims defensively, emphasizing the differ-
ences between the prior art and the invention.
The Patent Office often cites prior art that neither the inventor nor the practitioner has seen before. Thus, the
biotechnology practitioner faces the difficulty of not knowing precisely what must go into the specification and
claims successfully to defeat rejections for obviousness under 35 U.S.C. § 103. A growing body of case law in
the area of biotechnology provides an opportunity to refine arguments for rebutting rejections under 35 U.S.C. §
103 during prosecution of the patent application. These decisions also provide some guidance for drafting patent
applications so as to avoid such rejections or, at least, to place the practitioner in a better position to overcome
the rejections.
For example, an applicant can include in the specification facts to supply support for a rebuttal of an obvi-
ousness rejection. Such facts can include evidence of:
1. Unexpected results;
2. No reasonable expectation of success;
3. Undue experimentation would be required in order to achieve success even if expected, that is,
the effort needed might be extensive where the prior art gave either no indication of which standards
were critical or no direction as to which of many possible choices is likely to be successful; and
4. The invention that might be considered "obvious to try" was an exploration of a new technology
that seemed promising but "the prior art gave only general guidance as to the particular form of the
claimed invention or how to achieve it." [FN26]
*14-23 Thus, during preparation of a biotechnology application, the inventor should be asked about the
obstacles and difficulties presented during performance of any procedures used to produce a claimed product or
carry out a claimed process as well as any unusual or "unexpected" results. Such information can be included in
the specification, perhaps in the examples, to provide a basis for later arguments countering a rejection under 35
U.S.C. § 103.
This strategy has been helpful for claims directed to a gene encoding a known protein because as a matter of
policy the Patent Office routinely rejected such claims under 35 U.S.C. § 103. This policy most likely will not
be followed in view of In re Bell. [FN27] In Bell, the Federal Circuit rejected the proposition that the established
relationship in the genetic code between a nucleic acid and the protein it encircles makes the gene prima facie
obvious over its corresponding protein. The court emphasized that because of the degeneracy of the genetic

code, there are "a vast number of nucleotide sequences that might code for a specific protein," so that the failure
of a prior art reference to suggest which of the possibilities is the human sequence rendered the claimed se-
quences nonobvious. The court indicated however, that if a known amino acid sequence is specified exclusively
by unique codons (that is, an amino acid coded for by a single codon), "a gene might be obvious." The court also
expressed no opinion on whether the knowledge of the structure of a DNA--for example, a cDNA--might make a
coded protein obvious. The Bell decision should remedy the difficulties in obtaining patent protection once an
applicant has successfully isolated a gene encoding a protein whose existence and properties were known, but
the gene had never been successfully cloned. Nevertheless, it can help patentability to include in the application
evidence of the "vast number of *14-24 nucleotide sequences that might code for a specific protein," and other
facts relevant to the nonobviousness of the gene.
For claims directed to monoclonal antibodies, the Patent Office typically rejects the claims, citing as a
primary reference prior art disclosing the "known" antigen. The Patent Office then asserts that the methods of
Kohler and Milstein [FN28] can be used to obtain the claimed monoclonal antibody as an expected result. One
approach during drafting the patent application to overcome or avoid such rejections is to claim procedures for
which the monoclonals are specially suited, and not to simply claim the monoclonal antibody itself. In addition,
the application can be drafted to emphasize unique aspects of screening for the monoclonals, for example, a pro-
cedure for fusion that involves unusual steps or a screening procedure based on a characteristic other than the
desired binding activity of the antibody.
Thus, during drafting of the application, difficulties in isolating a "known" or previously identified product
and differences between the product of the new method and those in the prior art should be emphasized in the
specification and claims.
There is a significant downside to including information in the specification relating to the obstacles and
difficulties presented in making the invention. This information can be used by the examiner to limit the scope
of the claims the examiner is willing to allow. Examiners routinely reject broad claims as not being "enabled,"
particularly where the applicant argues the unpredictability of the art to obtain a patent.
Claims directed to production of proteins or monoclonal antibodies have been typically rejected under 35
U.S.C. § 103 by the Patent Office based on references or "state of the art" by citing In re Durden. [FN29] In that
case, the applicant unsuccessfully *14-25 claimed a method for producing a new product from a novel, nonobvi-
ous, and patentable starting material using a known chemical reaction. The court held that the nonobviousness
and novelty of the starting material did not render the conventional process patentable. Attempts have been
made by applicants to restrict Durden to its facts, i.e., claims involving processes consisting of defined chemical
reactions and predictable results.
After Durden, there has been a clarification, at least with respect to the patentability of claims to methods of
using the compound. In In re Pleuddemann, [FN30] the Federal Circuit distinguished Durden as a case relating
to a method of making a compound as opposed to a method of using a compound. The court emphasized that the
prior art does not include the applicant's novel compound. Therefore, at least with respect to methods of using a
novel compound, Pleuddemann may be used to support arguments against rejection of claims to methods of us-
ing novel compounds or compositions under 35 U.S.C. § 103.
In addition, in Pleuddemann, the court asserted:

[W]hen a new and useful compound or group of compounds is invented or discovered having a particu-
lar use it is often the case that what is really a single invention may be viewed legally as having three or
more aspects permitting it to be claimed in different ways, for example: (1) the compounds themselves; (2)

the method or process of making compounds; and (3) the method or process of using the compounds for
their intended purpose. [FN31]
This decision may reverse the trend in the Patent Office to separate inventions claimed as the compound and
methods of using the compound in a Restriction Requirement.
*14-26 Accordingly, based on the holdings in Pleuddemann, it is recommended that claims be drafted in
"method of use" format. For example, an application might contain claims to a recombinant DNA product and
claims to "a method of using the DNA of claim X to prepare protein Y." Similarly, claims may be drafted to a
hybridoma and also to "a method of using the hybridoma of claim X to produce monoclonal antibody Y." The
success of such an approach in the Patent Office remains to be seen.
The Federal Circuit has retreated from (or, depending on your point of view, clarified) the Durden decision.
In In re Ochiai [FN32] and In re Brouwer, [FN33] the court addressed the issue of whether an otherwise con-
ventional process could be patented if it were limited to making or using a nonobvious product. In both cases,
the court held that the use of per se rules is improper in applying the test for obviousness; rather, a highly fact-
dependent analysis is required. The Federal Circuit overturned the rejection in both cases because there was no
suggestion or motivation in the prior art to make or use the nonobvious products to which the claims were lim-
ited.
In view of these rulings, the Patent Office published a notice to guide its personnel in the treatment of
product and process claims. [FN34] The PTO recognizes that language in a process claim which recites making
or using a nonobvious product must be treated as a material limitation, and a motivation to make or use the
product must be present in the prior art for a section 103 rejection to be sustained.
If one does not want to argue nonobviousness, or if that argument is unsuccessful, an alternative approach is
available to obtain a patent for a biotechnological process using or resulting in a novel and nonobvious composi-
tion of matter. *14-27 An applicant can elect to proceed under 35 U.S.C. § 103(b) to obtain allowance of a bio-
technological process the PTO considers obvious. This subsection of section 103 states that such a process is
considered nonobvious if the process and the composition of matter are contained in the same application or sep-
arate applications having the same effective filing date, and the composition of matter and the process were
owned by the same person or subject to an obligation of assignment to the same person, at the time of the inven-
tion. In view of the Ochiai and Brouwer decisions, the Patent Office believes that reliance on section 103(b) will
be rare. [FN35]
The term "biotechnological process" includes

(a) a process of genetically altering or otherwise inducing a single- or multi-celled organism for
specific purposes,
(b) cell fusion procedures yielding a cell line that expresses a specific protein, and
(c) a method of using a product produced by these processes.
Proceeding under section 103(b) has disadvantages. For example, it can be construed as a tacit admission
that the process is patentable only because the related composition of matter is patentable. In other words, if a
court determines that the composition of matter is not patentable, then the corresponding process claims would
likely be determined to be invalid. Subsection (b)(2) also requires that the process and composition of matter
claims expire on the same day.

[FN26]. See In re O'Farrell, 853 F.2d 894, 7 U.S.P.Q.2d 1673 (Fed. Cir. 1988).
[FN27]. In re Bell, 991 F.2d 781, 26 U.S.P.Q.2d 1529 (Fed. Cir. 1993). In re Deuel, 51 F.2d 1552 (Fed Cir.
1995).
[FN28]. 256 NATURE 495-97 (1975).
[FN29]. In re Durden, 226 U.S.P.Q. 359 (Fed. Cir. 1985).
[FN30]. In re Pleuddemann, 15 U.S.P.Q.2d 1738 (Fed. Cir. 1990).
[FN31]. Id. at 1740.
[FN32]. In re Ochiai, 71 F.3d 1565, 37 U.S.P.Q.2d 1127 (Fed. Cir 1995).
[FN33]. In re Brouwer, 77 F.3d 422, 37 U.S.P.Q.2d 1663 (Fed. Cir. 1996).
[FN34]. PTO Notice on Treatment of Product and Process Claims, Pat. Trademark & Copyright J. (BNA) (Mar.
21, 1996); 1184 OG 8b.
[FN35]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

§ 14.4 Satisfying the Requirements of 35 U.S.C. § 112
*14-28 § 14.4.1 The Requirements of 35 U.S.C. § 112
The first paragraph of 35 U.S.C. § 112 sets forth the requirements for the description portion of all patent
applications, including biotechnology applications. The adequacy of disclosure of a biotechnology patent applic-
ation requires much attention to changes in the knowledge of the relevant art, as procedures that were once con-
sidered "experimental" and "unpredictable" are rapidly becoming "standard" and "well-known." Recent court de-
cisions have held that various procedures, such as preparation of hybridomas producing monoclonal antibodies,
may no longer be considered "new" or "unobvious." The challenge to the practitioner is to draft the application
to support an argument that procedures for obtaining such biotechnology products as monoclonal antibodies are
not predictable, for example, because they involve novel steps, and thus avoid rejections under 35 U.S.C. §§ 102
and 103.
The first paragraph of 35 U.S.C. § 112 requires that a patent specification

(1) provide a written description of the invention;
(2) disclose how to make and use the invention; and
(3) disclose the best mode of carrying out the invention.
Typically, the disclosure meeting these requirements is set forth in the description section of the application. All
aspects of the invention are set forth in this section. For example, formulas for compounds and reaction condi-
tions (for example, ranges of temperature, pH, pressure, etc.) are stated. Where ranges of conditions are
provided, a broad range, intermediate range, and preferred narrow range should be described, with advantages
for narrower ranges to provide a fall-back position if broad claims are defeated during prosecution.
END OF DOCUMENT


Jeffrey G. Sheldon

*14-29 § 14.4.2 Written Description
The written description requirement is met "if the application contains sufficient disclosure, expressly or in-
herently, to make it clear to persons skilled in the art that [applicant] possessed the subject matter claimed."
[FN36] This requirement is separate from the enablement requirement.
In general, the written description requirement is satisfied if the specification contains a statement of the in-
vention that is as broad as the broadest claims. [FN37]
However, the lack of literal, that is, verbatim, support for a claim in a specification does not mean that the
written description requirement has not been met. [FN38] Original claims are treated as part of the specification
for the purpose of satisfying this requirement. [FN39]
It is recommended that the application contain language in the specification that follows closely, if not pre-
cisely, the language used in the claims in order to minimize potential rejections based on compliance with the
written description requirement. Limitations included in dependent claims or narrow independent claims should
be specifically included in the general disclosure of the invention. When writing the summary, it is important
that the invention not be limited to anything other than the broadest claims. To the extent that features are not
present in the broadest claim, it must be made clear that these are optional features. Otherwise, there is a possib-
ility that a court could interpret the claims by reading in these features. [FN39.1] In certain situations, a specific-
ation *14-30 may support a broad claim, but not provide a written description of the invention recited in a nar-
rower claim. For example, a claim to a broad range of temperatures may be supported, whereas a narrower claim
to a range of temperatures within the broader range may be found to be unsupported by the specification. [FN40]
For claims directed to the DNA per se, even verbatim support for a claim may not satisfy the description re-
quirement. The Federal Circuit has held that the description requirement was not satisfied for a claim for "[a]
DNA which consists essentially of a DNA which codes for a human fibroblast interferon-beta polypeptide,"
even though the claim was enabled and described verbatim in the specification. The basis for this holding was
that the description requirement requires complete conception of an invention. The court held that to claim
DNA, other than as a product-by-process claim, "requires conception of its structure, name, formula, or definite
chemical or physical properties." [FN41]
This holding strongly implies that any patent application directed to DNA should include a description of
the DNA nucleotide sequence to satisfy the description requirement. Alternatively, the DNA should be claimed
as a product-by-process rather than the DNA per se.
Similarly, the Federal Circuit held that merely disclosing the nucleotide sequences for cDNA encoding rat
insulin, which was a species within the scope of generic claims, did not provide adequate written description of

claims generically reciting cDNA encoding vertebrate insulin and human insulin. The court also held that a con-
structive example providing a general method for obtaining human cDNA along with the amino acid sequences
of human insulin does not *14-31 provide a written description of human cDNA, even if it provides an enabling
disclosure for obtaining human cDNA. [FN42]
In dicta, the Federal Circuit held that the complete amino acid sequence of a protein may put one in posses-
sion of the genus of DNA sequences encoding it, even if individual species within that genus might not be de-
scribed or rendered obvious. However, in its actual holding, the Federal Circuit held that disclosing a sequence
of only ten of the 185 to 192 amino acids comprising a particular protein does not put one in possession of the
claimed DNA sequence, and thus the description requirement is not satisfied. [FN42.1]
Similarly, a description of a mouse antibody does not satisfy the written description requirement for a claim
directed to human antibody or a genus that encompasses both human and mouse antibodies. [FN42.2] In Noelle,
the Federal Circuit described different ways to satisfy the description requirement for an antibody, namely
(1) disclosing a fully characterized antigen to the antibody either by its structure, formula, chemical unit
or physical properties, where the antibody is claimed by its binding affinity to the described antigen;
(2) depositing the antigen in a public depository and claiming the antibody by its binding affinity to the
deposited antigen;
(3) disclosing the structural elements of the antibody; or
(4) depositing the antibody in a public depository. [FN42.3]
Accordingly, whenever possible, include in the specification the entire DNA sequence of interest. However,
under some circumstances, as biotechnology develops, it is not necessary. *14-32 For example, when claiming
chimeric DNA when the component DNA sequences are known, it is not necessary to reiterate the structure of
formula or chemical name of the nucleotide sequences of the claimed chimeric genes. [FN42.4]
The written description requirement can also be invoked to invalidate what the author considers to be
"wouldn't it be nice" inventions. For example, a claim directed to selectively inhibiting prostaglandin synthesis
of a non-steroid compound, without describing any particular compound that achieved the function was invalid
because the specification did not satisfy the written description requirement. No compound that could be used to
practice the claimed method was known at the time the application was filed. [FN42.5] Thus the claim was dir-
ected to "wouldn't it be nice if there was a compound that . . . ."
In view of this increased emphasis of the description requirement by the Federal Circuit, the Patent Office
has proposed guidelines for examination of a patent application under the written description requirement.
[FN43] With an understanding of these guidelines, it is possible to write an application that will avoid rejections
based on lack of "written description."
See § 7.2 for a detailed discussion of the description requirement and the PTO guidelines.
In view of these guidelines, the following ideas suggest themselves for satisfying the description require-
ment.
A. Define the field of the invention to be one in which there is a high level of predictability and do not
include statements in the specification about the unpredictability of the art. (However, this may adversely
impact the ability to persuade the examiner that the invention is nonobvious).
*14-33 B. For each species claimed, provide the structure, preferably by a sequence listing.
C. For each genus claimed, provide many species within the scope of the claim.
D. Include claims of varying scope in the application, including genus and species claims.

A deposit of a microorganism can be used to satisfy the written description if one skilled in the art would
find the claimed sequences adequately described, on the basis of a specification that described only the function
but not the structure of the claimed material, combined with the actual structure that is accessible in the reposit-
ory. [FN43.1]
The Federal Circuit has identified certain information that can be absent from the specification and still sat-
isfy the written description requirement, namely:
1. Examples;
2. Evidence of an actual reduction to practice;
3. Recitation of a known structure of a biological macromolecule. [FN43.2]
[FN36]. See Ex parte Harvey, 3 U.S.P.Q.2d 1616 (Pat. Off. Bd. App. 1987); In re Eickmeyer, 202 U.S.P.Q. 655
(C.C.P.A. 1979).
[FN37]. See In re Robins, 429 F.2d 452, 166 U.S.P.Q. 552 (C.C.P.A. 1970).
[FN38]. See In re Wertheim, 541 F.2d 257, 191 U.S.P.Q. 90 (C.C.P.A. 1976); Kennecott Corp. v. Kyocera Int'l,
Inc., 835 F.2d 1419, 5 U.S.P.Q.2d 1194 (Fed. Cir. 1987), cert. denied, 108 S. Ct. 1735 (1988).
[FN39]. See In re Gardner, 475 F.2d 1389, 177 U.S.P.Q. 396 (C.C.P.A. 1973).
[FN39.1]. See Microsoft Corp. v. Multi-Tek Sys., 357 F.3d 1340 (Fed. Cir. 2004) (statements in the Summary
used to narrowly interpret certain claim terms).
[FN40]. See Martin v. Mayer, 823 F.2d 500, 3 U.S.P.Q.2d 1333 (Fed. Cir. 1987).
[FN41]. Fiers v. Revel, 984 F.2d 1164, 25 U.S.P.Q.2d 1601 (Fed. Cir. 1993); see also Amgen, Inc. v. Chugai
Pharm. Co., 927 F.2d 812, 18 U.S.P.Q.2d 1016 (Fed. Cir. 1991).
[FN42]. Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 43 U.S.P.Q.2d 1398 (Fed. Cir. 1997), cert. denied, 118
S. Ct. 1548 (1998).
[FN42.1]. In re Wallach, 378 F.3d 1330 (Fed. Cir. 2004).
[FN42.2]. Noelle v. Lederman, 355 F.3d 1343, 69 U.S.P.Q.2d 1508 (Fed. Cir. 2004).
[FN42.3]. Id.
[FN42.4]. Capon v. Eshar, 418 F.3d 1349 (Fed. Cir. 2005).
[FN42.5]. Univ. of Rochester v. G.D. Searle & Co., Inc., 375 F.3d 1303 (Fed. Cir. 2004).
[FN43]. 64 Fed. Reg. 71,427 (Dec. 21, 1999).
[FN43.1]. Enzo Biochem, Inc. v. Gen-Probe, Inc., 285 F.3d 1013, 62 U.S.P.Q.2d 1289 (Fed. Cir. 2002).
[FN43.2]. Falkner v. Engliss, 448 F.3d 1357 (Fed. Cir. 2006).

END OF DOCUMENT


Jeffrey G. Sheldon

*14-33 § 14.4.3 Enablement
The requirement for enablement, or instructions on how to make and use an invention, presents special
problems for drafting biotechnology application, because (1) often it is difficult to describe how the biological
material was made (for example, an organism obtained by random mutagenesis) and (2) biotechnology inven-
tions are typically claimed broadly.
The legal test for determining whether 35 U.S.C. § 112 has been satisfied is usually posed as a question of
whether a person skilled in the art can practice the invention without *14-34 "undue experimentation." [FN44]
Factors that are considered by the courts in deciding whether a disclosure requires undue experimentation have
been set forth. [FN45] A need for some experimentation is not sufficient to place a burden on applicants to prove
that the experimentation is not undue. [FN46]
Generally, the specification should include as much information as is generally included in a scientific paper
reporting the results of experiments demonstrating the invention. Such papers usually contain sufficient informa-
tion that scientists can duplicate the study to confirm the results obtained.
The determination of whether any necessary experimentation is "undue" is decided on a case-by-case basis.
Any showing by the examiner substantiating doubts regarding enablement can be countered by demonstrating
that any experimentation required is not undue and any elements allegedly missing from the disclosure are well
known or would be obvious to one skilled in the art.
A biotechnology patent application typically contains examples that represent experiments. However, there
is no obligation to provide examples to satisfy the enablement requirement of 35 U.S.C. § 112. [FN47] If the ex-
periments were *14-35 actually performed, these are known as "working" examples. Alternatively, hypothetical
or "prophetic" examples are used. In practice, these examples are clearly indicated by the use of the present
tense, as compared to the past tense to describe working examples. The examples often resemble the "Materials
and Methods" and "Results" sections of reports of research published in scientific literature. It is generally in
connection with examples that drawings (figures) are provided summarizing results of experiments. The draw-
ings are summarized in the above-mentioned section entitled "Brief Description of the Drawings."
One example may be insufficient for an enabling disclosure. For example, claims directed to processes for
producing live, nonpathogenic vaccines against pathogenic RNA viruses and methods were held to be unpat-
entable because they were not supported by an enabling disclosure. The specification only provided a general
description of the claimed vaccines and methods of use, and only disclosed a single working example. [FN48]
Similarly, claims directed to producing "a mammalian peptide" in "plant cells" was not enabled by a single
working example in which gamma-interferon was produced in dicot plant cells. [FN49]

The language "biologically functional equivalent" can be so broad as to render the specification non-
enabling. Thus a claim directed to a "recombinant DNA vector comprising a DNA sequence . . . having an
amino acid sequence which includes . . . the sequence . . . displayed in Figure 4, or a biologically function equi-
valent thereof, and having a . . . BCGF biological activity" was unpatentable, because the claim was far broader
than what was enabled by the specification. The PTO board held that "biologically functional equivalent there-
of" encompasses any recombinant DNA, vector, or cell that encodes any protein having sufficient BGF biologic-
al *14-36 activity. Since the specification disclosed only a specific DNA segment, the very broad claim was not
enabled. [FN50]
The unpredictability of the biological arts and biological processes creates unique problems in obtaining
broad claim coverage in the biological arts, and can limit the scope of claim coverage to exactly what is dis-
closed in the specification. Decisions that can be cited by the Patent Office to limit the scope of claim coverage
include the following:
1. Isolation of a protein does not entitle an applicant to a claim for the DNA sequence encoding the
gene. [FN51]
2. A gene encoding a protein is not conceived or reduced to practice until the DNA is actually cloned
and sequenced. [FN52] Thus a claim directed to a DNA molecule encoding a mammalian growth factor is
not "described" by a specification unless the DNA code is provided, even when the specification describes
bovine growth factor and its amino acid sequence, a theoretical (and eventually incorrect) DNA sequence
for the bovine growth factor, and a method for producing cDNA corresponding to the bovine growth factor.
[FN53]
3. A human protein (erythropoietin) gene is not obvious in view of the monkey cDNA because the de-
gree or relatedness between monkey cDNA because the degree or relatedness between monkey and human
sequences was not known. [FN54]
*14-37 4. Disclosure of a DNA sequence encoding a particular protein (erythropoietin) does not enable
claims directed to any sequence encoding a protein with the same activity. [FN55]
5. A claim directed to producing human growth hormone (hGH) by expressing a conjugate protein con-
taining hGH and a cleavable sequence, and then cleaving the conjugate protein, was not enabled by a spe-
cification not describing specific material to be cleaved or any reaction conditions for the cleavable fusion
expression. [FN56]
6. A claim directed to tomato plants incorporating a gene capable of producing insecticidal protoxin
was not enabled by a disclosure teaching the technique with tobacco plants. The Federal Circuit stated that
experiments using tobacco plants would not provide those skilled in the art with the ability to predict suc-
cess in transferring the technique to tomato plants without undue experimentation. [FN56.1]
7. A claim broad enough to read on monoclonal antibodies produced by known hybridoma technology,
but also monoclonal antibodies produced by chimeric antibodies, was not enabled by a first parent applica-
tion because at the time the first parent application was filed, chimeric antibodies were not known. The
claim was not enabled by a later filed second parent *14-38 application, because although chimeric antibod-
ies were known at the time of the filing of the second parent application, the technology was "nascent,"
which requires a "specific and useful" teaching to be enabled. [FN56.2]
The effect of these decisions means that, for many inventions, for the applicant to be entitled to broad claim
coverage, extensive experimentation will be required, and the results of the experiments will have to be included
in the application. Where claim compositions are limited by functional characteristics, the specification should
describe how to test compositions for the function.
The Federal Circuit may be loosening the requirements for enablement in biotechnology as the technology

matures. For example, the Federal Circuit affirmed a finding of enablement for an invention directed to manu-
facture of human EPO through recombinant DNA techniques, where the specification only contained a general
reference to use of "mammalian" and "vertebrate" cells. [FN56.3]
[FN44]. See Utter v. Hiraga, 845 F.2d 993, 6 U.S.P.Q.2d 1709 (Fed. Cir. 1988); In re Vaeck, 20 U.S.P.Q.2d
1438 (Fed. Cir. 1991). See also Fiers v. Revel, 984 F.2d 1164, 25 U.S.P.Q.2d 1601 (Fed. Cir. 1993), holding that
the enablement requirement is satisfied for a claim directed to DNA encoding for a particular human protein
where it "sets forth a detailed teaching of a method for obtaining a DNA coding" for the protein.
[FN45]. In re Wands, 858 F.2d 731, 8 U.S.P.Q 1400 (Fed. Cir. 1988); Ex parte Forman, 230 U.S.P.Q. 546 (Pat.
Off. Bd. App. 1986). These factors include the (1) quantity of experimentation necessary, (2) amount of direc-
tion or guidance presented, (3) presence or absence of working examples, (4) nature of the invention, (5) state of
the prior art, (6) relative skill of those in the art, (7) predictability or unpredictability of the art, and (8) breadth
of the claims.
[FN46]. In re Angstadt, 537 F.2d 498, 190 U.S.P.Q. 214 (C.C.P.A. 1976).
[FN47]. See In re Strahilevitz, 668 F.2d 1229, 212 U.S.P.Q. 561 (C.C.P.A. 1982).
[FN48]. In re Wright, 999 F.2d 1557, 27 U.S.P.Q.2d 1510 (Fed. Cir. 1993).
[FN49]. In re Goodman, 11 F.3d 1046, 29 U.S.P.Q.2d 2010 (Fed. Cir. 1993).
[FN50]. Ex parte Maizel, 27 U.S.P.Q.2d 1662 (Bd. Pat. App. & Interf. 1992).
[FN51]. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 18 U.S.P.Q.2d 1016 (Fed. Cir.), cert. denied, 502
U.S. 856 (1991). As a corollary, an article disclosing the amino acid sequence of a protein does not make the
specific sequence for the gene obvious. In re Bell, 991 F.2d 781, 26 U.S.P.Q.2d 1529 (Fed. Cir. 1993).
[FN52]. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 18 U.S.P.Q.2d 1016 (Fed. Cir.), cert. denied, 112 S.
Ct. 169 (1991); Fiers v. Revel, 984 F.2d 1164, 25 U.S.P.Q.2d 1601 (Fed. Cir. 1993).
[FN53]. Fiddes v. Baird, 30 U.S.P.Q.2d 1481 (Bd. Pat. App. & Interf. 1993).
[FN54]. Id.
[FN55]. Amgen, 927 F.2d 1200. The claim was directed to "a DNA sequence encoding a polypeptide having an
amino acid sequence sufficiently duplicative of that of erythropoietin to allow possession of the biological prop-
erty of causing bone marrow cells to increase production of reticulocytes and red blood cells, and to increase
hemoglobin synthesis or iron uptake." Id. at 1204.
[FN56]. Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 42 U.S.P.Q.2d 1001 (Fed. Cir. 1997).
[FN56.1]. In re Adang v. Fischhoff, 286 F.3d 1346, 62 U.S.P.Q.2d 1504 (Fed. Cir. 2002).
[FN56.3]. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003).

END OF DOCUMENT


Jeffrey G. Sheldon

*14-38 § 14.4.4 Best Mode
A description of the best mode for carrying out the invention must be included in the description of the in-
vention.
The "best mode" requirement is distinct from the enablement requirement and refers to the best mode con-
templated by the inventor at the time of filing the application. The best mode may be identified in the specifica-
tion as a "particularly preferred," "most preferred," or "preferred" embodiment. The Patent Office must show
that the applicant knew of and *14-39 concealed a better mode than that disclosed to prove that the "best mode"
requirement is not satisfied. [FN57]
The requirement for disclosure of best mode causes concern when the owner of the technology wants certain
aspects of the technology to be kept as a trade secret. Typically, a question of compliance with the "best mode"
requirement in biotechnology applications arises when an applicant attempts to retain the best embodiment for
the applicants own use, for example, where one does not deposit the best cell line, depositing a "second-best"
cell line. Interestingly, it has been suggested in at least one decision by the Federal Circuit that there is a require-
ment of disclosing the best mode known to the inventor at the time of filing even if it constitutes an improve-
ment to the invention that is separately patentable by someone else. [FN58] Thus, if an inventor is aware at the
time the application is filed of a subsequently developed, improved embodiment of the invention, regardless of
who invented the improvement, the improved embodiment must be disclosed in the application because it would
be the best mode contemplated for carrying out the invention.
In general, because the Patent Office is usually not in a position during ex parte prosecution to determine
whether the best mode for carrying out an invention has been set forth, as long as one specific embodiment is set
forth in an application, the Office assumes that the "best mode" requirement has been met. When no specific em-
bodiment is described, disclosure of preferred characteristics for each element of the invention can also provide
a suitable basis for fulfilling that requirement. [FN59]
[FN57]. Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 U.S.P.Q. 81 (Fed. Cir. 1986), cert.
denied, 480 U.S. 947 (1987).
[FN58]. See Aktiebolaget Karlstads Mekaniska Werkstad v. United States Int'l Trade Comm'n, 705 F.2d 1565,
217 U.S.P.Q. 865 (Fed. Cir. 1983).
[FN59]. See In re Bundy, 642 F.2d 430, 209 U.S.P.Q. 48 (C.C.P.A. 1981).

END OF DOCUMENT


Jeffrey G. Sheldon

*14-40 § 14.4.5 Deposits
One of the difficulties in providing a written description for biotechnology applications is in describing cer-
tain organisms. The problem can arise when the organism is the claimed invention or is used to make the
claimed invention. If a cell line has properties that cannot be duplicated from available organisms, a written de-
scription is not adequate to enable production by others.
In these cases, unique to biotechnology applications, the requirements of 35 U.S.C. § 112 can be met by
making a deposit of the biological material and referencing the deposit in the patent application by naming the
depository used and providing the designation given to the deposited material. [FN59.1] Section 112 does not re-
quire that the public have access to the cell line until after the patent issues. If the patent does not issue, access
to the deposited material remains restricted. The deposit does not have to be made in the United States or in a
public depository.
Issues presented in depositing biological materials include determining whether a deposit is necessary, mak-
ing sure the deposits are and remain viable, timing the deposits, and assuring that the deposits are permanent and
will be made available to the public after a patent issues on the application.
With respect to whether a deposit is required, the case law is sparse. In Tabuchi & Ave v. Nubell, [FN60] the
court held that Candida strains capable of carrying out the claimed method were readily obtainable and, thus,
not required as a deposit, and in In re Reinhardt, [FN61] a written description was found adequate when it in-
cluded the location of marine organisms needed to obtain the claimed compounds. A deposit is typically *14-41
required if a specific cell line is claimed and the cell line cannot be obtained simply by transforming an available
organism with a defined DNA. Thus, immortalized monoclonal antibody-secreting cell lines, or hybridomas, if
claimed specifically, should be deposited.
The Patent Office rules on the deposit of biological materials [FN62] address the issues previously raised in
that connection. [FN63] The rules define "biological material" as any "material that is capable of self-replication
either directly or indirectly." [FN64] Biological material need not be deposited if it is known and readily avail-
able to the public or can be made or isolated without undue experimentation. [FN65] A deposit can be made be-
fore or during the pendency of the application, but deposit before filing the patent application is recommended.
[FN66] If a deposit becomes contaminated or loses its capability to function as described in the specification, it
can be replaced during pendency or after issuance of the patent application. It can be necessary for the patent
owner to show diligence after finding out that the original deposit needs replacement. [FN67] The deposit must
be made for at least thirty years and at least five years after the most recent request for the furnishing of a
sample of the deposit was received by the depository. [FN68]
A viability test must demonstrate that the deposited material is capable of reproduction but does not have to

demonstrate that the material can perform any of the functions described in the patent application. [FN69] The
conditions of the deposit must assure that the Patent Office will have access to *14-42 the deposits during pen-
dency of the application and that all restrictions imposed by the depositor on the availability to the public of the
deposited material will be irrevocably removed upon the grant of a patent. [FN70] For each deposit, the specific-
ation shall contain:
1. the accession number for the deposit;

2. the date of deposit;
3. a description of the deposited biological material sufficient to specifically identify it and permit ex-
amination; and
4. the name and address of the depository.
Although the United States rules permit a deposit to be made during the pendency of the application, many
foreign jurisdictions require that it be made before or at the date of the priority application. Thus, it is important
to deposit before filing a United States application if a foreign application is contemplated. [FN71]
A deposit can satisfy the written-description and enablement requirements of 35 U.S.C. § 112 and the "best
mode" requirement. It can also be helpful to establish a date of invention preceding the filing date of the applica-
tion to avoid prior art, even if reference to the deposit is not made in the application.
The Patent Office guidance on the practices and procedures for implementation of the deposit rules is
provided in M.P.E.P. sections 2401 through 2421.
Although the USPTO will accept a deposit made with any depository that meets the statutory standards,
[FN72] it is recommended that a depository recognized by the Budapest Treaty be used. This is because most
foreign jurisdictions require *14-43 use of a depository complying with the rules of the Budapest Treaty on the
International Recognition of the Deposit of Microorganisms for the Purpose of Patent Procedure. [FN73]
[FN59.1]. Enzo Biochem, Inc. v. Gen-Probe, Inc., 296 F.3d 1316 (Fed. Cir. 2002).
[FN60]. Tabuchi & Ave v. Nubell, 194 U.S.P.Q. 521 (C.C.P.A. 1977).
[FN61]. App. No. 564-47 (Pat. Off. Bd. App. Jan. 10, 1985).
[FN62]. 37 C.F.R. §§ 1.801-1.809; M.P.E.P. § 2401 et seq.
[FN63]. 37 C.F.R. § 1.801 et seq.; 54 Fed. Reg. 33,864.
[FN64]. 37 C.F.R. § 1.801.
[FN65]. 37 C.F.R. § 1.802.
[FN66]. 37 C.F.R. § 1.804.
[FN67]. 37 C.F.R. § 1.805.
[FN68]. 37 C.F.R. § 1.806.

[FN69]. 37 C.F.R. § 1.807.
[FN70]. 37 C.F.R. § 1.808.
[FN71]. 37 C.F.R. § 1.804.
[FN72]. 37 C.F.R. § 1.803.
[FN73]. The PCT Applicant's Guide, vol. I, at Annex L, lists the deposit requirements of each PCT country, as
well as a list of depository institutions.
END OF DOCUMENT


Jeffrey G. Sheldon

*14-43 § 14.4.6 Presentation of Nucleotide or Amino Acid Sequence Data or Both
The Patent Office has rules [FN74] designed to standardize the disclosure of nucleotide and amino acid se-
quences in biotechnology patent applications. These rules require that all patent applications relating to biotech-
nology inventions and containing sequence data comply with the new requirements. The sequence data must be
submitted in computer-readable form (CRF) and must be provided in a uniform manner using standardized sym-
bols and format. A "hard," or paper, copy of the data becomes part of the patent application.
The rules are part of an international effort to facilitate the electronic transfer of sequence information for
universal use. Subsequently, the Office made available for a fee a modified "Author In Data Input Program"
(Patent In) developed by GenBank® (November 1990) to assist the practitioner in implementing the sequence
rules in individual patent applications.
The rules require the use of sequence identification numbers for any disclosed sequence, whether claimed or
not, to identify and make reference to the sequence data in the specification and claims. Not only must be
claimed sequences be provided, but in addition, prior art sequences. [FN75]
Any sequence can still be shown in a figure. The rules facilitate the examination and printing of detailed se-
quence *14-44 information and do not alter the substantive requirements of patent law under title 35 of the
United States Code. [FN76]
Included in the rules are listings of specific symbols and formats that can be used to represent sequences.
The patent application must also contain a section, "Sequence Listing," immediately preceding the claims sec-
tion. A "paper copy" of the "Sequence Listing" serves as the official copy for purposes of the Patent Office pat-
ent application file. Each sequence listed must be given a "sequence identification number." [FN77] An identical
copy of the information contained in the "Sequence Listing" must also be submitted in CRF (diskette, magnetic
tape, 8 mm cartridge, CD-ROM, or magneto optical disk). A statement must also be submitted verifying that the
information in the "paper copy" of the "Sequence Listing" is identical to that submitted in the CRF. Require-
ments for readability of the CRF of the "Sequence Listing" by computer operating systems are also set forth.
[FN78] Small fragments within large amino acid sequences in drawings can either be cross referenced as separ-
ate Sequence ID or by location reference without separate Sequence ID. A submission is not required for se-
quences with fewer than four specifically defined nucleotides or amino acides. [FN79] The paper sequence list-
ing is to be at the end of the application, preferably with separately numbered pages. [FN80]
In any continuation, continuation-in-part, or divisional patent applications containing a "Sequence Listing"

identical to that of an application on file at the Patent Office, reference *14-45 can be made to the prior applica-
tion instead of filing an additional hard machine CRF.

The requirements for submitting information on a compact disc are set forth in 37 C.F.R. § 1.52(e).
The effective date of the current rules is July 1, 1998, except for (1) applications that claim the benefit of a
prior application under 35 U.S.C. § 120, filed before July 1, 1998, and which do not add subject matter in-
volving a sequence listing; and (2) reissue applications in which the application for the patent sought to be reis-
sued was filed before July 1, 1998. The rules apply during a reexamination proceeding if the application for the
patent sought to be reexamined was filed on or after July 1, 1998.
To facilitate processing by the Patent Office, all papers directed to the new "Sequence Listing" requirements
should be addressed to the Office and marked "BOX SEQUENCE." If an application is filed that does not com-
ply with the new rules (that is, the application does not contain either a "paper copy" or "hard machine"
[computer-readable] copy), the Office will issue an Office Action requiring compliance within one month with
possible extensions of time under section 1.136 of title 37 of the Code of Federal Regulations. Failure to comply
will result in abandonment of the application. Upon exceptional circumstances via petition, the Office may
waive the requirements.
The Patent Office guidance on the practices and procedures for implementation of the sequence rules is
provided in sections 2422-31 of the M.P.E.P.
[FN74]. 37 C.F.R. §§ 1.821-1.825.
[FN75]. M.P.E.P. § 2421.02.
[FN76]. The reader is referred to the full text of the new rules on standards for sequence data for detailed in-
formation regarding the requirements set forth herein.
[FN77]. See 37 C.F.R. § 1.823 (description of information to be included in "Sequence Listing").
[FN78]. 37 C.F.R. § 1.824.
[FN79]. 37 C.F.R. § 1.821.
[FN80]. 37 C.F.R. § 1.823.
END OF DOCUMENT


Jeffrey G. Sheldon

§ 14.5 Claims
*14-46 § 14.5.1 Claim-Breadth Problems
The second paragraph of 35 U.S.C. § 112 requires that the claims "particularly point out" and distinctly
claim what the applicant considers to be the invention. The role of the claims is to define the limits of the inven-
tion. [FN81] The type of rejection under this paragraph usually encountered during prosecution before the Patent
Office is an assertion that the claims are broader than the enabling disclosure or that the specification lacks a
written description to support the claims. In addition, the second paragraph of 35 U.S.C. § 112 is used to reject
claims for "indefiniteness." The fact that a claim is broad, however, does not render it indefinite. [FN82]
Claim breadth, a favorite target of examination in the Patent Office, is determined by the number of ele-
ments in the claim and limitations placed on those elements. Claims to a "genus" that includes the "species"
compound X are obviously broader than claims to compound X. A process comprising steps A and B is broader
than one comprising steps A, B, and C.
The breadth-of-claim coverage available depends on the particular invention claimed and the state of the art.
For proteins, the trend has been to pursue claims of broad scope, at least with respect to amino acid sequence.
There are many examples of issued claims for which the amino acid sequence is not restricted to that given in
the specification. [FN83] In claims for proteins, inoperative embodiments can be removed by incorporation into
the claim of a functional requirement. For example, a claim can recite "protein X having the ability to *14-47
catalyze the reaction Y." The specification should then include a method, for example, an assay for determining
whether the material claimed is functional, to permit a later argument that the claims are not unduly broad be-
cause applicant is claiming only that the material that is in fact functional.
An additional technique to obtain broad claims for proteins is to include claims that use homology to the
native protein or hybridization of naturally occurring DNA encoding the protein to DNA encoding the claimed
protein. Generally, conditions of hybridization must be specified. An example of such a claim is: "Protein X en-
coded by a gene that hybridizes to the known genomic sequence of the native protein X under conditions of . . ."
When claiming a purified protein, identification of the DNA sequence is not always necessary. The desire to
obtain the earliest possible filing date in highly competitive and fast-moving technologies, such as molecular
biology, can dictate that an application be filed with prophetic examples describing how the DNA sequence is
obtained. When the actual DNA sequence is determined, a continuation-in-part application can be promptly
filed.
In the area of monoclonal antibody inventions, it is difficult to obtain claims of broad scope. The applicant
can be limited to claims to a designated hybridoma and the antibody it produces. In the case of deposit of a spe-
cific hybridoma, it may be possible to obtain claims that are not limited to the deposit. Thus, in In re Wands,
[FN84] the court held that the patentee did not have to limit claims to a procedure of using particular mono-

clonal antibodies to use of only the deposited antibody. The court agreed that a person skilled in the art could re-
producibly obtain antibodies other than those deposited for use in the procedure.
*14-48 Another approach to broadening the scope of claims to organisms is to claim the (deposited) mi-
croorganisms and their mutants. [FN85]
Even if broad claims issue, they can be interpreted narrowly. Claims broadly directed to "a DNA isolate
consisting essentially of a DNA sequence encoding human tissue plasminogen activator" were interpreted to be
limited to DNA coding natural human tissue plasminogen activator (t-PA), and not DNA encoding a derivative
missing one region and part of another region and having other differences from natural t-PA. [FN86]
The PTO considers nucleotide sequences encoding different proteins to be structurally distinct chemical
compounds and unrelated to one another. Thus each such sequence is an application deemed to normally consti-
tute independent and distinct intentions within the meaning of 35 U.S.C. § 121. However, rather than requiring
ten separate applications, the Patent Office will examine up to ten independent and distinct nucleotide sequences
in a single application without restriction. [FN87]
Examples of nucleotide sequence claims that will be limited to ten independent claims are:
(1) An isolated and purified DNA fragment compromising DNA having at least 95% identity to a DNA
sequence selected from SEQ ID Nos. 1-1000;
(2) A combination of DNA fragments compromising SEQ ID Nos. 1-1000; and
*14-49 (3) A combination of DNA fragments, the combination containing at least thirty different DNA
fragments selected from SEQ ID Nos. 1-1000. [FN88]
[FN81]. In re Johnson & Farnham, 558 F.2d 1008, 194 U.S.P.Q. 187 (C.C.P.A. 1977); In re Roberts, 470 F.2d
1399, 176 U.S.P.Q. 313 (C.C.P.A. 1973).
[FN82]. In re Gardner, 427 F.2d 786, 166 U.S.P.Q. 138 (C.C.P.A. 1970).
[FN83]. See U.S. Patent No. 4,677,195, No. 4,677,603 and No. 4,738,927.
[FN84]. In re Wands, 8 U.S.P.Q.2d 1400 (Fed. Cir. 1988).
[FN85]. See Ex parte Jackson, 217 U.S.P.Q. 804 (Pat. Off. Bd. App. 1982).
[FN86]. Genentech, Inc. v. Wellcome Found., 29 F.3d 1555, 31 U.S.P.Q.2d 1161 (Fed. Cir. 1994).
[FN87]. 52 BNA 716-17, 728-30, Oct. 31, 1996; Official Gazette, Nov. 19, 1996.
[FN88]. Id.
END OF DOCUMENT


Jeffrey G. Sheldon

§ 14.5 Claims
*14-49 § 14.5.2 Restriction Requirements
Depending on the invention, multiple independent broad claims may be required to cover all the aspects of
the invention. Thus, an application for an invention involving synthesis of a novel compound can include claims
to the compound, its method of use, and its method of synthesis. Typically, the Patent Office issues a Restriction
Requirement placing each of the claims corresponding to those inventions in separate groups and requiring that
the applicant elect one group of claims to prosecute. The remaining groups, if the Restriction Requirement is not
successfully opposed by the applicant, must be pursued in separate copending divisional patent applications. An
advantage of including the inventions in a single application is that, if a restriction is required, examination can
be deferred on one or more of the inventions until a later time when a divisional patent application is filed.
END OF DOCUMENT


Jeffrey G. Sheldon

§ 14.5 Claims
*14-49 § 14.5.3 Claim Format
Typically, claims for biotechnology inventions begin with a preamble that characterizes the kind of inven-
tion, for example: "A compound for . . .," "A method for . . .," "A device for . . ." A transition phrase linking the
preamble to the body of the claim follows and usually employs the words "comprising," "consisting of," or "con-
sisting essentially of." Claims containing the transition "comprising" are considered "open-ended," in that they
are open to the inclusion of additional, unspecified elements. In contrast, "consisting of" has *14-50 been inter-
preted to close the claim to other materials, except for impurities that are usually associated with the claimed
material. "Consisting essentially of" is limited to the inclusion of unspecified ingredients that do not materially
affect "the basic and novel" characteristics of the compound. [FN89] It is strongly advised that these terms be
employed and other language be avoided because of the potential for introducing confusion or uncertainty into
the claim, resulting in a challenge from the examiner during prosecution of the application.
In biotechnology applications, functional language is often employed in the claims to accommodate the dif-
ficulties of describing and claiming biotechnology inventions. In the absence of a recitation of function, a claim
can be susceptible to rejection on the ground that it is indefinite. Functional language can also prevent the claim
from including inoperative embodiments or excluding operative ones. For example, the term "pharmaceutically
effective amount" was found acceptable. [FN90] However, wherever possible, numerical or easily measurable
and ascertainable limitations are preferable to avoid extensive litigation over the meaning of functional terms.
A claim format common to biotechnology practice is the "Markush claim" used to encompass a plurality of
compounds or compositions having a property in common. The claim specifically lists the members of the
group: "wherein the compound is selected from the group consisting of X, Y, and Z." Current Patent Office prac-
tice permits a variation of this wording: "wherein the compound is X, Y, or Z."
The Jepson claim, defining improvements on existing technology, has been frequently used to claim bio-
technology inventions. The preamble of such claims provides a description *14-51 of the prior technology fol-
lowed by the phrase "wherein the improvement comprises . . ." followed by the improvement. For example, a
Jepson claim might be as follows: "In a composition comprising a mixture of A and B, the improvement com-
prising encapsulating the mixture in C." The preamble can be treated as a limitation to a claim for purposes of
determining patentability and infringement. One disadvantage of the use of Jepson format is that such claims
have been held to constitute a rebuttable implied admission that the technology recited in the preamble is prior
art. [FN91] In addition, the Jepson format appears to be increasingly disfavored by the Patent Office; biotechno-
logy examiners frequently suggest amending such claims to recite the invention portion of the claim. For ex-
ample, the above claim might be restated as "A composition comprising a mixture of A and B encapsulated in
C."
The "product-by-process" claim is another commonly used format in biotechnology. This type of claim is

used when a process results in a compound or composition too complex to characterize using traditional descrip-
tion. Such a claim typically reads: "The product of the process comprising . . . [insert steps of process]," or, in
dependent form, "The product of the process of claim 1." Previously, practitioners were warned that product-
by-process claims were of limited usefulness because courts have held that the same product made by another
process does not infringe a product-by-process claim. [FN92] Recently, however, the Federal Circuit has held
that patentability of a product-by-process claim should be determined independently of the process stating: "The
correct reading of product-by-process claims is that they are not *14-52 limited to product prepared by the pro-
cess set forth in the claims." [FN93]
Information regarding use of product-by-process claims can be found in § 6.4.5.
[FN89]. Ex parte Davis & Tuukkanen, 80 U.S.P.Q 448 (Pat. Off. Bd. App. 1948).
[FN90]. Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 48 U.S.P.Q.2d 1911 (Fed. Cir. 1998).
[FN91]. In re Ehrreich, 590 F.2d 902, 200 U.S.P.Q. 504 (C.C.P.A. 1979).
[FN92]. Parke, Davis & Co. v. Am. Cyanamid Co., 207 F.2d 571. 99 U.S.P.Q. 237 (6th Cir. 1953); In re Thorpe,
777 F.2d 695, 227 U.S.P.Q. 964 (Fed. Cir. 1985) (dicta: "product-by-process claims are limited by and defined
by the process").
1991).
END OF DOCUMENT


Jeffrey G. Sheldon

§ 14.5 Claims
*14-52 § 14.5.4 Claim Definiteness
With respect to rejections under the second paragraph of 35 U.S.C. § 112 for indefiniteness, the practitioner
can use an approach in responding to such rejections that quotes from the decision in Hybritech v. Monoclonal
Antibodies, [FN94] in which the district court found the Hybritech patent failed to disclose how to make mono-
clonal antibodies, failed to disclose how to screen, and failed to disclose how to measure monoclonal antibody
affinity. On the issue of definiteness of claim language and whether "monoclonal antibody affinity" could be
measured precisely, the Federal Circuit stated, "[I]f the language is as precise as the subject matter permits, then
the Courts can demand no more."
[FN94]. Hybritech v. Monoclonal Antibodies, 231 U.S.P.Q. 81 (Fed. Cir. 1986).
END OF DOCUMENT


Jeffrey G. Sheldon

§ 14.5 Claims
*14-52 § 14.5.5 Use of Method Claims
Method claims for biotechnology inventions are important for enforcement purposes and for obtaining pro-
tection in foreign countries. The product of a claimed process is covered by the process claim so that use or sale
of the product of the process is an infringement of the process claims. 35 U.S.C. § 271 was amended to define
infringement to include importation into or use or sale within the United States of a product made by a process
patented in the United States. Therefore, process claims have been given more protection and can be needed
when it is difficult to obtain claims to the *14-53 product itself, for example, when the product is found in
nature.
In foreign countries, products prepared by chemical processes, such as pharmaceuticals or foods, are not
patentable; however, the product may be protected by claims to the process of making the product.
Generally reactions for making novel and unobvious compounds by process steps known to the art for mak-
ing similar compounds are obvious and unpatentable. [FN95] Thus a claim: "A method of making X comprising
the steps of mixing Y and Z, heating, and decanting" is unpatentable even if X per se is patentable, if the method
is known for making similar materials. [FN96] However, a claim directed to use of an unknown and unobvious
material in a known sequence of steps to produce known compositions of matter is patentable. [FN97] Thus a
claim directed to use of X in a known process is generally patentable.
[FN95]. In re Durden, 763 F.2d 1406, 226 U.S.P.Q. 359 (Fed. Cir. 1985). Legislation is pending in Congress to
overrule Durden.
[FN96]. Subsequently the Federal Circuit, in dicta, interpreted Durden as not establishing a per se rule of unpat-
entability, reminding practitioners that the invention "as a whole" must be considered. In re Dillon, 919 F.2d
688, 16 U.S.P.Q.2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
[FN97]. In re Pleuddemann, 910 F.2d 823, 15 U.S.P.Q.2d 1738 (Fed. Cir. 1990).
END OF DOCUMENT


Jeffrey G. Sheldon

§ 14.5 Claims
*14-53 § 14.5.6 Exemplary Biotechnology Claims
As a guide to the practitioner, exemplary biotechnology claims are presented to show the various ways an
invention can be claimed. [FN98]
*14-54 Example 1
This first example shows various ways a single invention may be claimed.
What is claimed is:
1. Substantially purified DNA encoding the amino acid sequence of XYZ enzyme as shown in Fig-
ure 1, the DNA being substantially free of DNA that does not encode the amino acid sequence of Figure
1 or a functional equivalent thereto.
2. The DNA of claim 1 having the nucleotide sequence of Figure 2.
3. An expression vector for XYZ enzyme comprising the DNase sequence of claim 1 operatively
linked to at least one control sequence compatible with a suitable bacterial host cell.
4. An expression vector for XYZ enzyme comprising the DNase sequence of claim 2 operatively
linked to at least one controlled sequence compatible with a suitable bacterial host cell.
5. The vector of claim 3 wherein the DNA encoding the XYZ enzyme is linked to at least one se-
quence from bacteriophage.
6. The vector of claim 3 wherein the DNA encoding the XYZ enzyme is linked to at least one se-
quence from bacteriophage.
7. A bacterial host cell transformed with the expression vector of claim 3 in a manner allowing the
transformed bacterial host cell to express XYZ enzyme encoded by the DNA incorporated within the ex-
pression vector of claim 3 in a detectable quantity.
8. A bacterial host cell transformed with the expression vector of claim 4 in a manner allowing the
transformed bacterial host cell to express the XYZ enzyme encoded by the DNA incorporated within
*14-55 the expression vector of claim 4 in a detectable quantity.
9. A process for producing substantially purified XYZ enzyme comprising:

(a) culturing the bacterial host cell of claim 7;
(b) using the cultured bacterial host cell to express the DNase B enzyme; and
(c) purifying the enzyme from the cultured bacterial host cell.
10. A process for producing substantially purified XYZ enzyme comprising:
(a) culturing the bacterial host cell of claim 8;
(b) using the cultured bacterial host cell to express the DNase B enzyme; and
(c) purifying the enzyme from the cultured bacterial host cell.
11. XYZ enzyme prepared by the process of claim 9.
12. XYZ enzyme prepared by the process of claim 11.

13. XYZ enzyme fused at its amino terminus with a leader peptide, the leader peptide having the se-
quence M-L-S.
14. A mutein of the protein whose amino acid sequence is shown in Figure 3 in which at least one
of the cysteine residues is replaced with a naturally occurring L-amino acid other than cysteine, the
mutein having DNase activity.
15. Substantially purified XYZ enzyme substantially free of proteins other than XYZ enzyme and
XYZ enzyme fused at its amino terminus with a leader peptide.
16. A process for preparing substantially purified XYZ enzyme comprising the steps of:
(a)
(b)
(c)
*14-56 17. Substantially purified XYZ enzyme produced by the process of claim 16.
18. A single-stranded DNAse probe hybridizing with at least the DNA sequence coding for the
amino-terminal twenty-four amino acids of the XYZ enzyme with no greater than about a 10% mismatch
under stringent conditions.
19. An antibody specifically binding the XYZ enzyme of claim 11.
23. A method for detecting and/or determining XYZ antibody in a test sample, comprising the steps
of:
(a) providing a test sample suspected of containing XYZ enzyme antibody;
(b) adding a quantity of the XYZ enzyme of claim 11 to the test sample, the quantity being suf-
ficient to produce a detectable level of enzymatic activity in the absence of inhibition of the en-
zymatic activity by anti-XYZ enzyme antibody in the test sample; and
(c) determining a level of activity of XYZ enzyme in the test sample by performing an enzyme
assay to detect and/or determine the XYZ enzyme antibody in the test sample.
24. Substantially pure cDNA encoding the amino acid sequence shown in Figure 1 or functional
equivalents thereof, the cDNA being substantially free of cDNA that does not encode the amino acid se-
quence shown in Figure 1 or functional equivalents thereof.
*14-57 25. Substantially purified genomic DNA whose exons encode human protein Q.
26. Substantially purified genomic DNA whose exons code for a protein that has the activity of
protein Q, the genomic DNA having at least about 60% homology in its exons with the DNA sequence
of Figure 1.
Example 2
These claims demonstrate various techniques that may be effective for broadening claims beyond the
exact DNA discovered to cover variants that encode substantially the same protein. This is necessary for ad-
equate claim coverage due to the redundancy in the genetic code. Three techniques used are equivalent bio-
activity, hybridization, and significant homology approaches.
a. Equivalent Bioactivity
1. A purified and isolated DNA sequence consisting essentially of a DNA sequence encoding a
polypeptide having an amino acid sequence sufficiently duplicative of that of XYZ to allow posses-
sion of the biological properties of XYZ. (U.S. Patent 4,703,008) [FN99]

b. Hybridization
2. A recombinant DNA molecule consisting of segments of DNA . . . selected from the group
consisting of:
(a) the DNA inserts of [named clones],
(b) DNA sequences which hybridize to any of the foregoing DNA inserts and that *14-58
code on expression for a polypeptide of the XYZ type,
(c) DNA sequences that code on expression for a polypeptide of the XYZ type coded for an
expression of any of the foregoing DNA sequences and inserts. . . . (U.S. Patent 4,530,901)
[FN100]
c. Significant Homology
3. An isolated DNA molecule having a nucleated sequence encoding an XYZ receptor wherein
the DNA is substantially homologous to the sequence in FIGS. 1A--1C (SEQ ID NO:3). (U.S. Pat-
ent 5,280,112)
The exact degree of homology the Patent Office accepts varies, including 40% (U.S. Patent
4,761,371), 50% (U.S. Patent 5,260,208), 75% (U.S. Patent 5,268,275), and 90% (U.S. Patent 5,196,329).
Example 3
These claims demonstrate different techniques for claiming a hair growth protein. [FN101]
1. A purified protein for stimulating hair follicle formation comprising the sequence of amino acids
set forth in Sequence ID 1.
2. A hair growth stimulating composition comprising a protein comprising the sequence of amino
acids set forth in Sequence ID 1 and a pharmaceutically acceptable skin penetrating vehicle.
3. A DNA encoding the protein of claim 1.
4. A transformed cell which expresses the DNA of claim 3.
*14-59 5. A method of stimulating hair formation comprising applying the protein of claim 1 or the
composition of claim 2 to germinative epithelial cells in the skin of a mammal for a time and at a con-
centration sufficient to initiate formation and maturation of hair follicles at the locus of application.
6. A purified protein comprising a sequence of amino acids sufficiently duplicative of that set for in
Sequence ID 1 such that upon application to germinative epithelial cells said protein initiates hair
follicle formation and maturation.
7. The protein of claim 6 wherein the sequence comprises:
..................................................
8. The protein of claim 6 wherein the protein has at least ___ % homology with the Sequence ID 1.
9. The protein of claim 6 wherein the sequence defines a pair of anti parallel Beta-pleated sheets
wherein the C-terminal sheet comprises the structure
Asp--Xaa--Pro--Asn--Xaa--Phe
wherein each Xaa is an amino acid or derivative thereof which occurs in human proteins.
10. The protein of claim 6 wherein the protein is encoded by DNA that hybridizes under stringent
conditions with the DNA encoding the sequence in Sequence ID 1.
Example 4
The following claims represent various techniques for claiming plants:

a. U.S. Patent No. 4,527,352
1. A method of producing full-dwarf hybrid sunflower seeds which will produce sunflowers

with reduced internode length under normal growing conditions, which comprises:
*14-60 (a) growing a pair of parent plants (P and P ) wherein in at least one parent sub-
1 2
stantially all pollen is nonfunctional and at toast one parent has gametes with nuclei which
carry at least one dominant gene for reduced internode length (Dr);
(b) cross pollinating the plants (P and P ) to produce hybrid seeds F ; and
1 2 1
(c) harvesting the hybrid seeds.
b. U.S. Patent No. 4,626,610
2. A novel process to produce seeds of a soybean variety resistant to iron deficiency chlorosis
comprising the steps of:
(a) crossing plants grown from seeds of Beeson and Corsoy:
(b) developing a pure plant line from the seeds produced in (a) and crossing plants grown
from said line with plants grown from seeds of Hodgson;
(c) developing a pure plant variety from the seeds produced in (b), said variety being se-
lected for those resistant to iron deficiency chlorosis; and
(d) harvesting the seeds of said pure resistant plant variety.
3. Seeds produced according to the process of claim 2.
4. Novel soybean variety CX174.
c. U.S. Patent No. 4,827,061
5. Cut flowers of the Chrysanthemum plant named Caricia.
6. Propagating material of the Chrysanthemum plant named Caricia.
d. U.S. Patent No. 4,843,186
7. A heterozygous tomato plant resulting from crossing a male parent containing the Rin/Rin
*14-61 gene with a female parent, said tomato plant having a Rin gene from the male parent as a
heterozygote and having the characteristics of a very firm fruit with excellent tomato-like taste hav-
ing a shelf life of at least two weeks, without substantially deteriorating taste or firmness, and de-
veloping a full red color.
8. Tomato fruit produced by a plant in accordance with claim 7.
9. Tomato seeds that when grown yield a tomato plant in accordance with claim 5.
10. Tomato hybrid BR-201.
e. U.S. Patent No. 5,157,207
11. A modified rice plant comprising a bacterial inoculant of Calvibacter xyli subp. cynodontis.
12. A modified rice plant as claimed in claim 11, wherein said bacterial inoculant is introduced
into the plant by a process comprising wounding the plant and contacting the wound with the bac-
terial inoculant.
f. U.S. Patent 4,713,532
13. A hybrid maize plant characterized by a genetic factor which confers an extra leaf pheno-
type, said genetic factor being capable of transmission to progeny substantially as a single domin-
ant gene.
g. U.S. Patent 4,569,152
14. A male-sterile corn plant comprising a cytoplasm conferring the property of male-sterility
wherein said cytoplasm is LBM.
Example 5
The following claims represent various techniques for claiming non-human animals:
a. U.S. Patent No. 4,736,866
1. A transgenic non-human mammal all of whose germ and somatic cells contain a *14-62 re-

combinant activated oncogene sequence introduced into said mammal, or an ancestor of said mam-
mal, at an embryonic stage.
b. U.S. Patent No. 4,873,316
2. A process for the production and secretion into mammal's milk of an exogenous recombinant
protein comprising the steps of:
(a) producing milk in a transgenic mammal characterized by the expression system com-
prising a casein promoter operatively linked to an exogenous DNA sequence coding for the re-
combinant protein through a DNA sequence coding for a signal peptide effective in a secreting
and maturing the recombinant protein in mammary tissue;
(b) collecting the milk; and
(c) isolating the exogenous recombinant protein from the milk.
c. U.S. Patent No. 5,183,949
3. A rabbit infected with HIV-1 virus, said rabbit produced by injection of human T-cells infec-
ted in vitro with HIV-1.
[FN98]. For a comprehensive listing of claim ideas for plant utility patents, see Nicholas Seay (Quarles &
Brady, Madison, WI), How to Protect Agricultural Biotechnology Plants, AIPLA Annual Meeting, Oct. 1997,
AIPLA, Wash., D.C.
[FN99]. This claim was held invalid by the Federal Circuit due to insufficient support in the specification for
"sufficiently duplicative" sequences. Such a claim, to be enabled, needs listing of sequences that are "suffi-
ciently duplicative."
[FN100]. Due to the degeneracy of the genetic code, the claim might not "particularly point out" the invention
because the claim could read on many unrelated inventions.
[FN101]. These claims were provided by Edmund R. Pitcher, Esq., Boston, Massachusetts.
END OF DOCUMENT


Jeffrey G. Sheldon

§ 14.5 Claims
[FN102]
Biotechnology claim strategy needs to consider the fact that many inventions to be claimed have challen-
ging issues such as close prior art, naturally occurring compounds, homologous compounds, and degenerate
variants. The following discussion presents various strategies for dealing *14-63 with these issues and other is-
sues for a wide variety of biotechnology inventions.
§ 14.5.7.1 Nucleic Acids
The following claims are for a novel cDNA sequence "SEQ ID NO:1" encoding an undiscovered human
protein X (SEQ ID NO:2). (See section 14.5.7.8 for claims for the protein.)
1. An isolated DNA the nucleotide sequence of which consists of SEQ ID NO:1.
This is a narrow claim. The term "isolated DNA" (or alternatively "modified DNA" or "purified DNA") dis-
tinguishes the claimed DNA from its naturally occurring counterpart. The use of "consists of" excludes genomic
DNA that contains more than the sequence (that is, introns) A problem with claim 1 is that cDNA typically is in-
serted into a vector, and rarely exists in a form that has no sequence in addition to SEQ ID NO:1. Further literal
infringement may be avoided by simply substituting one nucleotide, adding one nucleotide, or subtracting one
nucleotide.
2. An isolated nucleic acid comprising the nucleotide sequence of SEQ ID NO:1, or a degenerate vari-
ant of SEQ ID NO:1.
The use of "comprising" results in this claim, unlike claim 1, covering vectors containing more than the
cDNA sequence, as well as probes that contain the entire cDNA sequence. The "degenerate variant" clause cov-
ers nucleotide changes that do not affect the coding properties of cDNA.
3. An isolated nucleic acid comprising a sequence that encodes a polypeptide comprising the amino
acid sequence of SEQ ID NO:2.
Claim 3 differs in scope from claim 2 in that it covers not only cDNA's and other intronless nucleic acids,
but also DNA's (for example, genomic DNA) with introns, assuming *14-64 that those introns have splice donor
and acceptor sites that ensure that the introns are spliced out of the corresponding transcript.
4. A cDNA encoding a vertebrate protein X.
Because this claim is very broad, there can be significant enablement problems. [FN103]
5. An isolated nucleic acid comprising a sequence that hybridizes under stringent conditions to a hy-
bridization probe, the nucleotide sequence of which consists of SEQ ID NO:1, or the complement of SEQ
ID NO:1.
Claim 5 covers nucleic acids that differ in sequence from SEQ ID NO:1, so long as they hybridize to the

probe. Thus the claim can cover nucleic acids that encode variants of protein X, and fragments of SEQ ID NO:1
long enough to hybridize. The amount of difference in sequence of the nucleic acids is defined by the stringency
of the hybridization conditions, which usually needs to be defined in the specification.
bridization probe having the nucleotide sequence of the coding sequence of SEQ ID NO:1, or of the comple-
ment of the coding sequence.
bridization probe having a fragment of the nucleotide sequence of SEQ ID NO:1 at least ___ (choose a num-
ber) nucleotides in length.
Claims 6 and 7 provide coverage where SEQ ID NO:1 contains a non-coding sequence at the 5' or 3' end.
*14-65 8. An isolated nucleic acid comprising a sequence at least 80% identical to SEQ ID NO:1.
9. An isolated nucleic acid comprising a sequence that encodes a polypeptide the amino acid sequence
of which is at least 80% identical to SEQ ID NO:2.
Claims 8 and 9 extend the claim scope beyond nucleic acids encoding SEQ ID NO:2 without utilizing "hy-
bridization" language. Variations of claim 9 using percentages other than 80% can be used depending on the pri-
or art and support in the specification. The specification may need to specify the algorithm used to calculate per-
cent identify to avoid an indefiniteness rejection.
10. An isolated nucleic acid comprising a sequence that encodes a polypeptide having the sequence of
SEQ ID NO:2, or SEQ ID NO:2 with conservative amino acid substitutions.
Claim 10 covers sequences where amino acid residues are replaced with different residues having similar
biochemical characteristics, such as size, charge, and polarity versus nonpolarity. It is advisable that the spe-
cification define what is meant by "conservative" substitutions.
11. An isolated nucleic acid comprising a sequence that encodes a polypeptide comprising the amino
acid sequence of SEQ ID NO:2, or of a fragment of SEQ ID NO:2 at least 8 residues in length.
Claim 11 covers nucleic acids encoding protein X, fragments of protein X, fusion proteins containing part or
all of protein X, and additional sequences. There can be a dependent claim specifying the fragment is an "immun-
ogenic" fragment.
§ 14.5.7.2 Promoter Sequences
The following claim is for the minimal promoter sequence SEQ ID NO:3 that drives expression of a known
gene.
*14-66 12. A DNA the sequence of which comprises SEQ ID NO:3 operably linked to a heterologous
coding sequence.
The phrase "heterologous coding sequence" can exclude naturally occurring DNA by defining it as such in
the specification. The term "operably linked" is commonly used to denote a linkage between an expression con-
trol sequence and coding sequence, where the linkage permits the expression control sequence to control expres-
sion of the coding sequence.
§ 14.5.7.3 Vectors and Transfected Cells
It is advisable to not only claim the discovered DNA, as shown in section 14.5.7.1, but also a vector based
on the DNA and a cell containing the DNA. The following claims do this.

13. An expression vector comprising the nucleic acid of claim 3 operably linked to an expression con-
trol sequence.
14. A cultured cell comprising the vector of claim 13.
15. A cultured cell comprising the nucleic acid of claim 3, operably linked to an expression control se-
quence.
16. A cultured cell transfected with the vector of claim 13, or a progeny of the cell, wherein the cell ex-
presses the polypeptide of SEQ ID NO:2.
17. A method of producing a protein, comprising culturing the cell of claim 14 under conditions permit-
ting expression of the polypeptide of SEQ ID NO:2.
18. A method of producing a protein comprising the steps of:
(a) culturing the cell of claim 15 under conditions permitting expression under the control of the
expression control sequence, and
(b) purifying the polypeptide of SEQ ID NO:2 from the cell or the medium of the cell.
*14-67 The term "cell" should be defined in the specification, that is, to include bacteria, tissue culture, etc.
§ 14.5.7.4 Expressed Sequence Tags (ESTs)
An EST is a short nucleic acid sequence that represents part of the sequence of an mRNA expressed in a
cell. As shown by the next two claims, ESTs are normally claimed in the same way that nucleic acids are
claimed. For example an EST having the sequence SEQ ID NO:4 can be claimed as:
19. An isolated nucleic acid consisting of the nucleotide sequence of SEQ ID NO:4.
20. An isolated nucleic acid comprising the nucleotide sequence of SEQ ID NO:4.
§ 14.5.7.5 Antisense Nucleic Acids
The term "antisense" for nucleic acids is usually used for single stranded oligonucleotides complementary to
a portion of a mRNA and that inhibit translation. The strategy for claiming antisense nucleic acids is generally
the same as for claiming nucleic acids. The following three claims are representative of claims for antisense nuc-
leic acids.
21. A single-stranded nucleic acid that hybridizes under highly stringent conditions to a nucleic acid
having the sequence of SEQ ID NO:1.
22. An isolated nucleic acid comprising at least ten consecutive nucleotides of the complement of SEQ
ID NO:1.
23. An antisense oligonucleotide that inhibits the expression of protein X encoded by SEQ ID NO:1.
Claim 23 requires substantial disclosure, including guidance as to what oligonucleotides inhibit expression
and what oligonucleotides do not. As usual, there should be backup narrower claims such as the following:
*14-68 24. An antisense oligonucleotide consisting of a sequence of at least eight nucleotides comple-
mentary to a region between nucleotides 40 and 120 of SEQ ID NO:5.
25. The antisense oligonucleotide of claim 24, wherein the oligonucleotide comprises at least three nuc-
leotides of SEQ ID NO: 5
26. A single-stranded oligonucleotide consisting of a sequence selected from the group consisting of
SEQ ID Nos: ___ -- ___.
27. A single stranded oligonucleotide consisting of the sequence of SEQ ID NO:5.
It is advisable to have narrower claims dependent from claim 24 where the number of complementary nucle-

otides is greater.
When claiming antisense nucleic acids, corresponding claims for expression vectors and hybridization
methods can be included, such as the following claims:
28. An expression vector comprising an expression control sequence that directs production of a tran-
script that hybridizes under physiological conditions to SEQ ID NO:1.
29. A method of hybridization comprising the steps of:
(a) providing a single-stranded oligonucleotide being complementary to a portion of SEQ ID NO:1;
and
(b) contacting the oligonucleotide with a nucleic acid comprising the sequence of SEQ ID NO:1,
under conditions that permit hybridization of the oligonucleotide with the nucleic acid.
30. A method of hybridization comprising:
(a) providing a single-stranded oligonucleotide having the sequence of SEQ ID NO:5; and
(b) contacting the oligonucleotide with a nucleic acid comprising the sequence of SEQ ID NO:1 un-
der conditions that permit hybridization of the oligonucleotide with the nucleic acid.
*14-69 If the oligonucleotide is known in the prior art, but was not know to have expression-inhibiting
activity, this function of the oligonucleotide can be claimed as follows:
31. A method of inhibiting translation of an mRNA comprising the steps of:
(a) providing an oligonucleotide consisting of the sequence of SEQ ID NO:5;
(b) providing a human cell comprising an mRNA comprising the sequence of SEQ ID NO:1; and
(c) introducing the oligonucleotide into the cell, wherein the oligonucleotide inhibits translation of
the mRNA in the cell.
§ 14.5.7.6 Transgenic Animals
Animals carrying non-naturally occurring DNA have a variety of uses, including serving as models of hu-
man disease states and for producing quantities of human proteins. The PTO requires that such claims be limited
to non-humans, and typically to the animal species specifically enabled in the specification Also, the PTO gener-
ally requires that the claims be limited to the specific phenotype conferred by the genetic to avoid covering inop-
erative embodiments. The following claims are directed to a transgenic mouse, and are representative of trans-
genic animal claims:
32. A transgenic mouse the nucleated cells of which comprise a transgene encoding human protein Z,
wherein the mouse exhibits an increased susceptibility to infection by HIV as compared to a wildtype
mouse.
33. A transgenic mouse whose somatic and germ cells comprise a disrupted hormone X receptor gene,
the disruption being sufficient to inhibit the binding of hormone X to its receptor, said disrupted gene being
introduced into the mouse or an ancestor of the mouse at an embryonic state, wherein the mouse, if homo-
zygous for the disrupted gene, is infertile.
*14-70 Since these claims cover both heterozygotes and homozygotes, it may be advisable to include a
claim specifically to the heterozygote, which usually is the commercial product. Such a claim is:
34. A transgenic mouse whose genome is heterozygous for an engineered disruption in a XXX gene,
wherein said engineered disruption in a homozygous state inhibits production of functional XXX protein res-
ulting in a transgenic mouse that is infertile.
§ 14.5.7.7 Genetic Therapy

Genetic therapy generally involves introduction of DNA into a cell for the purpose of expressing RNA or a
protein. Claims directed to the discovery that protein S is deficient in "Smith's disease" can include:
35. An expression vector comprising a coding sequence encoding protein S.
36. An expression vector comprising a coding sequence encoding protein S, the vector being suitable
for genetic therapy.
37. An expression vector comprising a coding sequence encoding protein S, the vector being suitable
for genetic therapy.
38. A method of treating a patient with Smith's disease, comprising introducing into the patient an ex-
pression vector encoding protein S, such that an amount of protein S effective to alleviate the symptoms of
Smith's disease is expressed in the patient.
Most likely the PTO will reject claim 36 for lack of enablement or utility on the basis that "genetic therapy"
has fundamental problems the art has not yet solved. Claim 35 requires support in the specification for a use of
the claimed expression vector that does not involve in vivo genetic therapy.
*14-71 The PTO may limit claim 37 to in vitro therapy unless data is available showing in vivo expression
of protein S following delivery of the vector, or the specification describes non-therapeutic uses for the claimed
method.
The following claims are directed to an invention comprising the discovery of promoter Q that functions
only in lung cancer cells, and the concept that the promoter can drive expression of a toxin that kills the cell in
which is expressed. The evidence of utility in the specification is based on cultured lung cancer cells transfected
with a retroviral vector containing a toxin coding sequence operably linked to promoter Q.
39. An expression vector comprising promoter Q operably linked to a heterologous nucleotide se-
quence.
40. A method of killing a lung cancer cell, comprising introducing into the cell an expression vector
comprising promoter Q operably linked to a nucleotide sequence encoding a protein that is toxic to the cell.
41. A method of treating lung cancer in a patient, comprising introducing into the vicinity of the lung
cancer in the patient an expression vector comprising promoter Q operably linked to a nucleotide sequence
encoding a cytotoxic protein.
To avoid an enablement or utility rejection of claim 39 based on the PTO scepticism of gene therapy, it is
advisable to include a utility in the specification that is non-therapeutic. The applicant needs to be prepared to
argue the enablement of claims 40 and 41.
§ 14.5.7.8 Polypeptides
The following claims are for encoding an undiscovered human protein X (SEQ ID NO:2) produced by a
novel cDNA sequence "SEQ ID NO:1", where the applicants are the first to produce highly purified protein X.
(See section 14.5.7.1 for claims for the DNA sequence.)
*14-72 42. A purified polypeptide, the amino acid sequence of which consists of SEQ ID NO:2.
43. A purified polypeptide, the amino acid sequence of which consists of SEQ ID NO:2A.
The term "polypeptide" is used to unambiguously encompass amino acid sequences of any length, unlike the
terms "peptide" (short sequences) or "protein." The term "purified" is used to distinguish from protein X as it oc-
curs in nature, and can be defined in the specification in such a way to avoid prior art that may have inherently
partially purified the protein. [FN104]

SEQ ID NO:2A is SEQ ID NO:2 minus the signal sequence that is initially part of protein X when it is trans-
lated and that is cleaved off by a post-translational modification. Thus claim 42 is directed to the expressed pro-
tein and claim 43 is directed to the secreted protein, which is generally the commercial composition.
Claims 44-47 are broader versions of claim 42.

44. A purified polypeptide, the amino acid sequence of which comprises SEQ ID NO:2.
45. A purified polypeptide, the amino acid sequence of which comprises at least ten consecutive
residues of SEQ ID NO:2.
46. A purified immunogenic polypeptide, the amino acid sequence of which comprises at least ten con-
secutive residues of SEQ ID NO:2.
47. A purified polypeptide, the amino acid sequence of which comprises residues ___ -- ___ of SEQ ID
NO:2.
*14-73 The breadth of claims 44 and 45 may require substantial support in the specification. [FN105] A
series of claims like 47 can be included, dependent on what the inventor knows or can speculate about the activ-
ity of various regions of the protein X sequence.
Claims 48-51 are exemplary of other broad polypeptide claims:

48. A purified polypeptide, the amino acid sequence of which comprises a sequence at least 50%
identical to SEQ ID NO:2.
49. A purified polypeptide, the amino acid sequence of which comprises SEQ ID NO:2, or SEQ ID
NO:2 with at least one conservative amino acid substitution.
50. A purified polypeptide that binds specifically to a monoclonal antibody produced by the hybridoma
designated ATCC #H-8760.
51. A purified polypeptide that binds specifically to an antibody that binds specifically to protein X.
With regard to "identical" in claim 48, the specification needs to specify the algorithm used to calculate per-
cent identify. As to use of "conservative" substitutions in claim 49, see section 14.5.7.1. To support a claim hav-
ing the breadth of claim 50, it is desirable that the specification provides a utility for the claimed polypeptides
such as a control in an assay utilizing the antibody. Claim 50 requires an ATCC deposit, which can be made
after filing the application for the PTO, but not for most, if not all, foreign jurisdictions. See § 14.4.5.
Claims 48-51 may be subject to an overbreadth rejection. As a backup position, dependent claims can be in-
cluded that specify a specific activity for the polypeptide.
*14-74 § 14.5.7.9 Vaccines
A vaccine is a composition useful for stimulating a specific immune response in a vertebrate. Exemplary of
such compositions are antigens, DNA encoding an antigen, killed cells, and live attenuated cells. The following
claims are directed to vaccines:
52. A composition comprising purified antigen X.
53. A method of eliciting an immune response in an animal, comprising introducing into the animal a
composition comprising purified antigen X.
54. A method of generating antibodies specific for antigen X, comprising introducing into an animal a
composition comprising purified antigen X.
55. A bacterium Z cell that lacks a viable gene encoding virulence factor A.
56. A live bacterial cell vector that (a) infects a human and (b) is stably transformed with, and ex-
presses, a heterologous DNA encoding antigen X.

The PTO generally rejects claims to vaccines per se unless there is substantial evidence of a protective im-
mune response in human subjects, or experiments in a recognized animal model susceptible to infection by virus
A. That is why none of these claims refer to a vaccine per se. An attempt to include such a claim may result in
prosecution history estoppel that prevents the allowed claims from being interpreted to cover a vaccine.
The specification should support claims 53 and 54 with evidence of therapeutic effectiveness, or identifica-
tion of a non-therapeutic utility such as an aid in the purification of antigen X.
Claim 55 is directed to a live cell vector that expresses recombinant proteins. Claim 56 is directed to a vac-
cine vector that expresses a particular heterologous polypeptide.
*14-75 § 14.5.7.10 Antibodies and Hybridomas
When a new gene and its protein are discovered, commonly claims directed to an antibody to the protein
and the hybridoma used to produce the antibodies are included. Exemplary of such claims are the following:
57. An antigen that binds specifically to protein X.
58. An antibody that selectively binds to an epitope in the receptor-binding domain of protein X.
59. The antibody of claim 58, wherein the epitope is within the sequence Ala-
Met-Lys-Gln-Pro-Ser-Ser-Leu-Phe-Arg-His (SEQ ID NO: ___ ).
60. The antibody of claim 59, wherein the epitope comprises Lys-Gln-Pro.
61. An antibody that binds to protein X and inhibits the binding of protein X to its receptor.
62. An antibody that selectively binds to protein X but not to protein X'.
63. An antibody that binds selectively to melanoma cells, but not to normal skin cells.
4
64. An antibody that is specific for polio virus and achieves 50% neutralization of 10 infectious units
of polio virus in a twenty-four-hour assay at a concentration of 1 microgram antibody per milliliter.
65. A monoclonal antibody produced by hybridoma G27, ATCC accession number H-187322.
66 A monoclonal antibody having the same epitope specificity as hybridoma G27, ATCC accession
number H-187322.
67. A cell of hybridoma G27, ATCC accession number H-187322.
68. A method of making an antibody, comprising immunizing a non-human animal with an immuno-
genic fragment of human protein X.
69. A method of making an antibody, comprising providing a hybridoma cell that produces a mono-
clonal antibody *14-76 specific for protein X, and culturing the cell under conditions that permit production
of the monoclonal antibody.
70. A method of inhibiting polio virus infection in a patient, comprising administering to the patient a
composition comprising the antibody of claim 64, wherein the antibody is a humanized antibody.
71. A method of determining whether a biological sample contains a melanoma cell, comprising con-
tacting the sample with the antibody of claim 63 and determining whether the antibody specifically binds to
the sample, said binding being an indication that the sample contains a melanoma cell.
72. A method of purifying protein X from a biological sample containing protein X, comprising
providing an affinity matrix comprising the antibody of claim 57 bound to a solid support;
contacting the biological sample with the affinity matrix, to produce an affinity matrix-protein X
complex;
separating the affinity matrix-protein X complex from the remainder of the biological sample; and
releasing protein X from the affinity matrix.
The antibody claims require a description of methods that can be used to make the antibodies and how to

use the antibodies. For broad coverage, the specification can define "antibody" to include variants such a mono-
clonal and polyclonal antibodies, antibody fragments, and "humanized" chimeric antibodies.
Some of these claims may require an ATCC deposit, which can be made after filing the application for the
PTO, but not for most, if not all, foreign jurisdictions. See § 14.4.5.
*14-77 § 14.5.7.11 DNA Chips (Microarrays) and Their Use
DNA chips are used to screen samples containing biological molecules. Claim 73 [FN106] is directed to a
DNA chip, and claim 74 is directed to use of a DNA chip.
3
73. A substrate with a surface comprising 10 or more groups of oligonucleotides with different known
3
sequences covalently attached to the surface in discrete known regions, said 10 or more groups of oligo-
2
nucleotides occupying a total area of less than 1 cm on said substrate, said groups of oligonucleotides hav-
ing different nucleotide sequences.
74. A method for determining the genetic relatedness between two species, comprising
providing a first set of DNA molecules consisting of fragments of the genomic DNA of a first spe-
cies, the molecules being covalently fixed to a substrate;
contacting, under hybridizing conditions, the first set of DNA molecules with a second set of DNA
molecules consisting of fragments of the genomic DNA of a second species; and
detecting hybridization between the first and second sets of DNA molecules, wherein the amount of
hybridization between the first and second sets is an indication of the genetic relatedness between the
first and second species.
§ 14.5.7.12 Combinatorial Libraries
Combinatorial libraries are used in new drug development by screening the members of the library in biolo-
gical or biochemical assays to identify compounds that are candidates for more detailed evaluation. Claims for
combinatorial chemistry inventions can be directed to a compound with a *14-78 generic formula that defines
the members of the library, the library itself, a process for generating the library, and a method of screening the
library. Representative claims are the following:
75. A combinatorial library comprising a plurality of compounds of formula I:
[FORMULA I]
1
wherein R is selected from the group consisting of a hydrogen atom, C to C alkyl, and phenyl;
2 1 6
R is selected from the group consisting of . . .
76. A combinatorial library of polypeptides, the library comprising at least five members that differ in
structure from each other, each member having the formula
A-B-C-D,
wherein each of A, B, C, and D is independently selected from the group consisting of an amino acid
sequence that binds to a SH2 domain, an amino acid sequence that is a ligand of CD45, an amino acid se-
quence that confers sequence-specific DNA binding on the member, and lipoglycan.
The use of "a plurality of compounds" and "at least five members" is to distinguish over prior art disclosures
of singe compounds that fall within the formula. Back up dependent claims requiring larger numbers of com-
pounds is desirable. To be sure to satisfy the written description requirement of 35 U.S.C. § 112, it is advisable
to specifically identify in the specification a large number of compounds in the library.
§ 14.5.7.13 Assays for Biological Compounds

Assay claims generally have the following format:

• A preamble that states what the assay is intended to find
*14-79 • A description of the steps of the assay, which usually involves combining a sample with assay
reagents
• A statement relating the results of the assay steps to the intent of the assay specified in the preamble
Representative assay compounds are claims 77-81:

77. A method of identifying a compound that inhibits the binding of hormone A to the hormone A re-
ceptor, the method comprising the steps of:
(a) providing a non-neuronal cell transfected with a DNA encoding the hormone A receptor,
wherein the cell expresses the hormone A receptor on its surface;
(b) contacting the cell with hormone A and a test compound; and
(c) determining whether binding of hormone A to the receptor is decreased in the presence of the
test compound, wherein a decrease in said binding is an indicating that the test compound inhibits the
binding of hormone A to the receptor.
78. A method of identifying a compound that inhibits binding of hormone A to the hormone A receptor,
the method comprising the steps of:
(a) providing a polypeptide comprising the ligand-binding domain of hormone A receptor (residues
42-121 of SEQ ID NO:7), but lacking the transmembrane domain of hormone A receptor (residues
277-94 of SEQ ID NO:7);
(b) contacting the polypeptide with hormone A and a test compound; and
(c) determining whether binding of hormone A to the polypeptide is decreased in the presence of
the test compound, a decrease in said binding being an indication that the test compound inhibits the
binding of hormone A to the hormone A receptor.
*14-80 79. A method of identifying a compound that inhibits the phosphorylation of TF, the method
comprising the steps of:
providing a cell expressing TF;
contacting the cell with a test compound; and
determining whether phosphorylation of TF is decreased in the presence of the test compound, said
decrease in phosphorylation being an indication that the compound inhibits the phosphorylation of TF.
80. A method of identifying a compound that inhibits the activity of protein kinase D, the method com-
prising the steps of:
contacting protein kinase D with a substrate for protein kinase D and a test compound; and
determining whether the phosphorylation of the substrate is decreased in the presence of the test
compound, said decrease in phosphorylation being an indication that the compound inhibits the activity
of protein kinase D.
81. A process for making a compound that inhibits the binding of hormone A to the hormone A receptor,
the method comprising the steps of:
carrying out the method of claim 77 to identify a compound that inhibits the binding of hormone A
to the hormone A receptor; and
manufacturing the compound.
Claims 79 and 80 are useful for claiming a newly discovered observation about a known compound. The
purpose of claim 81 is to try to have a person importing the identified compound, where the compound was
made outside the United States, be liable as an infringer under 35 U.S.C. § 271(g).

*14-81 § 14.5.7.14 New Uses of Known Biological Molecules
Sometimes the patentable invention is not a new biological molecule per se, but rather a new method of us-
ing the compound. This type of inventions can be claimed in assay claims, which are presented in section
14.5.7.13, methods of use claims, and kit claims. Useful method claims for such an invention are the following:
82. A method of identifying a liver stem cell, comprising the steps of:
providing a cell; and
determining whether the cell has receptor A on its surface, wherein the presence of receptor A is an
indication that the cell is a liver stem cell.
83. A method of purifying a liver stem cell, comprising the steps of:
providing a mixture of cells comprising a liver stem cell;
contacting the mixture of cells with a substance that binds to receptor A; and
isolating from the mixture a cell to which the substance is bound, wherein said cell is a liver stem
cell.
84. A method of determining whether an individual is at risk for myocarditis, comprising the steps of:
providing a muscle tissue sample of an individual; and
comparing the level of substrate B in the tissue sample to the level of substrate B in a control
sample from a healthy subject, wherein a higher level in the sample from the individual is an indication
that the individual is at risk from myocarditis.
85. A method of determining whether an individual is at risk for myocarditis, comprising the steps of:
providing a muscle tissue sample of an individual; and
*14-82 comparing the level of enzyme A expression in the tissue sample to the level of enzyme A
expression in a control sample from healthy subject, wherein a lower level in the sample form the indi-
vidual is an indication that the individual is at risk for myocarditis.
86. A method of treating myocarditis in a patient, comprising the steps of:
identifying a patient at risk for myocarditis; and
administering enzyme A to the patient.
The "identifying" step of claim 86 is useful for distinguishing over prior art therapeutic uses of enzyme A
unrelated to myocarditis.
Often the commercial product involves combining the known compound with other elements in a kit. Useful
kit claims for this type of an invention are:
87. A kit comprising a vessel or vessels containing purified cytokine A and purified cytokine B.
88. An article of manufacture comprising a vial containing purified cytokine A and purified cytokine B,
or, packaged together, a vial containing purified cytokine A and a vial containing purified cytokine B.
89. An article of manufacture comprising, packaged together:
a vessel containing enzyme A; and
instructions for use of enzyme A for the treatment of myocarditis in a method comprising (a) identi-
fying a patient suspected of having myocarditis, and (b) administering an effective amount of enzyme A
to the patient.
90. An article of manufacture comprising packaging material and, contained within the packaging ma-
terial, enzyme A, wherein the packaging material comprises a label that indicates that the enzyme A can be
used for treating myocarditis in a patient.
*14-83 The "purified" limitation is included in claim 88 to distinguish over a vial of serum that happened to con-
tain the two cytokines.

[FN102]. This section is based on "Biotech Prosecution," by Janis K. Fraser, Mark S. Elllinger, John W. Free-
man, Eldora L. Ellison, Anita L. Meiklejoh, Gary L. Creason, and John T. Li, Fish & Richardson, and is used
with permission.
[FN103]. See Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 43 U.S.P.Q.2d 1398 (Fed. Cir.
1997).
[FN104]. Evans Med. Ltd. v. Am. Cyanamid Co., 215 F.3d 1347 52 U.S.P.Q.2d 1455 (Fed. Cir. 1999)
(nonprecedential) ("purified" not defined in the specification and interpreted in such a way that the there was no
infringement).
[FN105]. See Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 18 U.S.P.Q.2d 1016 (Fed. Cir. 1991).
[FN106]. Claim 1 of U.S. Patent No. 5,445,934.
END OF DOCUMENT


Jeffrey G. Sheldon

Chapter 15: Preparing Foreign Patent Applications Based on a U.S.
Application [FNa1]
*15-4 § 15.1.1 Scope of This Chapter
The protection provided by a United States patent is limited to the United States in that at least some act that
gives rise to the claim of infringement must occur in the United States. To achieve patent protection outside the
United States, foreign patents are needed. This chapter provides guidelines for the preparation and filing of for-
eign patent applications based on a previously-filed United States application. These guidelines will not be en-
tirely appropriate for every case. But they will provide a basis for understanding some of the most important dif-
ferences between the law and practice in the United States and in foreign countries, and for communication with
foreign associates, who can give advice on a particular case.
A particular focus of these guidelines is the desirability of revising the U.S. specification to make foreign
filing as cost-effective as possible.
An objective of this chapter is to inform patent practitioners about the options available for foreign filing,
and to encourage them to be pro-active in implementing cost-effective filing of foreign patents. Foreign patent
filing and prosecution are going to remain relatively expensive, but a better informed approach can mitigate the
costs and result in a more effective product.
Exhibit 15-1 summarizes the factors to be considered when filing foreign patent applications, as further dis-
cussed below.
[FNa1]. Drafted by Timothy P. Richardson; edited by Jeffrey G. Sheldon. Mr. Richardson is a U.S. Registered
Patent Agent, a European Patent Attorney and a U.K. Chartered Patent Agent.
END OF DOCUMENT


Jeffrey G. Sheldon

Application [FNa1]
*15-4 § 15.1.2 The Cost/Benefit Ratio of Foreign Filing
The cost/benefit ratio of obtaining patent protection in foreign countries is usually much less favorable than
in the United States. It is particularly important, therefore, that foreign costs should be controlled, and that de-
cisions to file foreign *15-5 patent applications should be based on realistic understanding of the countries in
which patent protection is needed, either for enforcement or for licensing purposes, and of the extent and timing
of all the costs involved. The initial costs of foreign filing are substantial, but the subsequent costs of prosecu-
tion, translation, grant and maintenance are even greater.
END OF DOCUMENT


Jeffrey G. Sheldon

Application [FNa1]
*15-5 § 15.1.3 Should the U.S. Specification Be Revised for Foreign Filing?
For many U.S. applicants, the standard procedure for filing foreign patent applications simply makes use of
the original U.S. specification and claims. This procedure ignores the substantial differences in patent law and
practice between the U.S. and the rest of the world. It also ignores the fact that revision of the U.S. specification
before foreign filing can substantially improve the cost-effectiveness of foreign filing.
END OF DOCUMENT

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