All Things Pros focuses exclusively on patent prosecution. The blog uses PTAB decisions, and the prosecution history that led to appeal, to discuss good and bad strategies for handling 102, 103, 101 and 112 rejections. Claim construction using Broadest Reasonable Interpretation is also a major focus. And sometimes you'll find prosecution topics such as after-final, RCE, and restriction practice.
Sunday, April 3, 2011
Blog posts that pose interesting questions about claim scope
Blog Posts that pose interesting questions about obscure aspects of claim scope:
I haven't researched these topics, so don't know the answers, or if clear answers even exist. I read a lot of case law, and I haven't come across these topics before.
"PatentPoints wonders if including reference numbers in a claim can narrow claim scope?"
I say it would depend on the specification. For example, if the claims recited an elastic rod (10) and applicant's disclosure only discussed one elastic member, i.e. elastic rod (10), then yes including the corresponding reference number would probably "further" narrow the scope of the claims. However, if the specification discussed the possibility of using alternative features, then arguably this should not narrow the scope of the claims. For instance, the applicant could write something like: "The elastic rod (10) is used as a biasing member. However, it should be understood from the drawing and the description herein that various alternative structures can be used as a biasing member such as, for example, a leaf spring." With such language, it could be argued that the claims are not limited to just the elastic rod (10), but perhaps other biasing members as well.
Generally, a statement in the spec about alternative structures serves to broaden scope. Perhaps that cancels out any narrowing effect of claiming "a biasing member 10" rather than "a biasing member."
"PatentPoints wonders if including reference numbers in a claim can narrow claim scope?"
ReplyDeleteI say it would depend on the specification. For example, if the claims recited an elastic rod (10) and applicant's disclosure only discussed one elastic member, i.e. elastic rod (10), then yes including the corresponding reference number would probably "further" narrow the scope of the claims. However, if the specification discussed the possibility of using alternative features, then arguably this should not narrow the scope of the claims. For instance, the applicant could write something like: "The elastic rod (10) is used as a biasing member. However, it should be understood from the drawing and the description herein that various alternative structures can be used as a biasing member such as, for example, a leaf spring." With such language, it could be argued that the claims are not limited to just the elastic rod (10), but perhaps other biasing members as well.
No.
ReplyDeleteAnd no, it is improper to have those numbers in the claim.
>no, it is improper to have those numbers
ReplyDelete>in the claim
What's your reasoning for *improper*? After all, the MPEP says they're not improper, but are ignored.
>I say it would depend on the specification.
ReplyDeleteWell, it always depends on the spec, right :-)
Generally, a statement in the spec about alternative structures serves to broaden scope. Perhaps that cancels out any narrowing effect of claiming "a biasing member 10" rather than "a biasing member."