How To Write A Patent Application - Book

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

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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 property 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 Carnegie 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 patent 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

PLIREF-PATAPP § 1.1 How to Write Pat. Application s 1.1 (Cite as: PLIREF-PATAPP s 1.1)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute 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, constitute 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 invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting 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 objectives, 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.

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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 wonder 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 excellent 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 competent 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 competent 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 practitioner." 37 C.F.R. § 1.32(a). PLIREF-PATAPP s 1.1 END OF DOCUMENT

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File *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, particularly 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 teachings of this book. It has been the experience of this author that even attorneys with advanced degrees in engineering 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 patent 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 END OF DOCUMENT

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File *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, specification, 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 document is described in chapter 8. Much of the discussion of the application preparation process is with regard to applications for utility patents for mechanical inventions, since most patent practitioners at some time need to write a mechanical application. However, applications for inventions other than mechanical ones have unique features that should be discussed 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 requirements. 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 END OF DOCUMENT

PLIREF-PATAPP § 1.4 How to Write Pat. Application s 1.4 (Cite as: PLIREF-PATAPP s 1.4)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File *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, assignment, 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 purpose 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 context. 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 END OF DOCUMENT

PLIREF-PATAPP § 1.5.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 1.5.1 (Cite as: PLIREF-PATAPP s 1.5.1)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File § 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, diligence *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 determined 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 becomes 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 system. If the United States application is to serve as a basis for foreign applications, then the United States filing 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 system, 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 novelty" 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 speeding up the filing process.

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[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 END OF DOCUMENT

PLIREF-PATAPP § 1.5.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 1.5.2 (Cite as: PLIREF-PATAPP s 1.5.2)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File § 1.5 How Quickly Should the Application Be Filed? *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 application 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 begins 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 incurred 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 prepared, once the search results are available, the application can be polished and the claims modified as required, 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

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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 papers, [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 necessary 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). PLIREF-PATAPP s 1.5.3 END OF DOCUMENT

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File *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 END OF DOCUMENT

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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 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 END OF DOCUMENT

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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 Chapter 2: Parts of a Patent Application § 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 contain 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 incomplete 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. PLIREF-PATAPP s 2.2.1 END OF DOCUMENT

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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 Chapter 2: Parts of a Patent Application § 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 application 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 . [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. PLIREF-PATAPP s 2.2.2 END OF DOCUMENT

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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 Chapter 2: Parts of a Patent Application *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 statutory requirements. PLIREF-PATAPP s 2.3 END OF DOCUMENT

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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 Chapter 2: Parts of a Patent Application § 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 several inventors on the same form. The declarant is also required to attest to his or her belief that the inventor or inventors 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 patent application. The oath or declaration must identify the specification to which it is directed. [FN10] This requirement is usually satisfied by stating the title of the application in the declaration and, in the case of new applications, 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 specification 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 material to the novelty or nonobviousness of the application under 35 U.S.C. §§ 102 and 103. [FN13] The provisions 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 benefit 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 forgetting 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

PLIREF-PATAPP § 2.3.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.3.1 (Cite as: PLIREF-PATAPP s 2.3.1)

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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 designating 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 inventor can read and understand. [FN17] Declarations in the most often-used foreign languages can be found at the PTO website . 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 before 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 document. 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 knowledge, 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 replace 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).

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[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 punishable by fine, imprisonment, or both under 18 U.S.C. § 1001 and may also jeopardize the validity of the application. [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). PLIREF-PATAPP s 2.3.1 END OF DOCUMENT

PLIREF-PATAPP § 2.3.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.3.2 (Cite as: PLIREF-PATAPP s 2.3.2)

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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 Chapter 2: Parts of a Patent Application § 2.3 Formal Papers *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 Office 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 registration 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 required, 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 application and the application itself. It states that the signer authorizes the named attorneys to conduct all business regarding 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 owners 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 recommended 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 distinction 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.

PLIREF-PATAPP § 2.3.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.3.2 (Cite as: PLIREF-PATAPP s 2.3.2)

[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. PLIREF-PATAPP s 2.3.2 END OF DOCUMENT

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PLIREF-PATAPP § 2.3.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.3.3 (Cite as: PLIREF-PATAPP s 2.3.3)

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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 Chapter 2: Parts of a Patent Application § 2.3 Formal Papers *2-11 § 2.3.3 Assignment Patents have the attributes of personal property [FN27] and can be bought, sold, or licensed to another person 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 invented 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 recorded 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 assignment 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 executed 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 representing 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 indication that the document is filed together with a patent application;

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(5) the name and address of the party to whom correspondence regarding the request to record the document 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 assignment is prima facie evidence that the assignment was executed. [FN36] The presumption of validity that attaches 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 submitted. This is because the Patent Office does not return submitted assignment documents after they are scanned into 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 application. 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. PLIREF-PATAPP s 2.3.3 END OF DOCUMENT

PLIREF-PATAPP § 2.3.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.3.4 (Cite as: PLIREF-PATAPP s 2.3.4)

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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 Chapter 2: Parts of a Patent Application § 2.3 Formal Papers *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 entity" status. That fee reduction is granted as an incentive for a small entity to obtain a patent. It applies to all Patent 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 employed 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 entity assigns or licenses its rights to a person or entity that does not qualify as a small entity, except that the federal 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 license to a large entity under a patent application or patent to use a product, that is, software, as long as no ownership 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 assignee 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 payment of a basic filing fee as an implicit assertion of utility. There are two reasons. First, usually the attorney or

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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 incorrect 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 entity eliminates small entity status for the inventor. Exhibit 2-3C is an example of a definition that can be included with such a notice. *2-17 Small entity forms originally sanctioned by the Patent Office are shown in Exhibit 2-4 for an independent 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). PLIREF-PATAPP s 2.3.4 END OF DOCUMENT

PLIREF-PATAPP § 2.4 How to Write Pat. Application s 2.4 (Cite as: PLIREF-PATAPP s 2.4)

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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 Chapter 2: Parts of a Patent Application *2-17 § 2.4 Drawings Drawings of the invention must be filed with the application when they are necessary to understand the subject 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 necessary 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 included in the patent application or the application will be deemed incomplete and a filing date will not be granted. [FN46] Certain classes of inventions, like process *2-18 patents or composition-of-matter patents, are recognized 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 "drawing" 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 essential 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

PLIREF-PATAPP § 2.5 How to Write Pat. Application s 2.5 (Cite as: PLIREF-PATAPP s 2.5)

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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 Chapter 2: Parts of a Patent Application *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 equivalent. [FN50] If the translation is not filed with the application, the Patent Office will issue an office action and allow 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 compact 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 applications 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 requirements 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, starting with 1, the numbers being centrally located above, or preferably below, the text. [FN52]

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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 capital 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 being 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 individual table more than fifty pages in length, or if the total number of pages of all the tables in the application exceeds 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 clarity 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).

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

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PLIREF-PATAPP § 2.5.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.5.1 (Cite as: PLIREF-PATAPP s 2.5.1)

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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 Chapter 2: Parts of a Patent Application § 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, generally 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 Improved 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." PLIREF-PATAPP s 2.5.1 END OF DOCUMENT

PLIREF-PATAPP § 2.5.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.5.2 (Cite as: PLIREF-PATAPP s 2.5.2)

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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 Chapter 2: Parts of a Patent Application § 2.5 Specification *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 continuation-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 benefit 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). PLIREF-PATAPP s 2.5.2 END OF DOCUMENT

PLIREF-PATAPP § 2.5.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.5.3 (Cite as: PLIREF-PATAPP s 2.5.3)

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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 Chapter 2: Parts of a Patent Application § 2.5 Specification *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 included in Exhibit 2-7. [FN60]. M.P.E.P. § 310. END OF DOCUMENT

PLIREF-PATAPP § 2.5.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.5.4 (Cite as: PLIREF-PATAPP s 2.5.4)

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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 Chapter 2: Parts of a Patent Application § 2.5 Specification *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 agreement, 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). PLIREF-PATAPP s 2.5.4 END OF DOCUMENT

PLIREF-PATAPP § 2.5.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.5.5 (Cite as: PLIREF-PATAPP s 2.5.5)

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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 Chapter 2: Parts of a Patent Application § 2.5 Specification *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 sequence 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 determining 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

PLIREF-PATAPP § 2.5.6 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.5.6 (Cite as: PLIREF-PATAPP s 2.5.6)

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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 Chapter 2: Parts of a Patent Application § 2.5 Specification *2-24 § 2.5.6 Background The content of the background section usually includes two distinct parts: the technical field of the invention 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. PLIREF-PATAPP s 2.5.6 END OF DOCUMENT

PLIREF-PATAPP § 2.5.7 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.5.7 (Cite as: PLIREF-PATAPP s 2.5.7)

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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 Chapter 2: Parts of a Patent Application § 2.5 Specification *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). PLIREF-PATAPP s 2.5.7 END OF DOCUMENT

PLIREF-PATAPP § 2.5.8 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.5.8 (Cite as: PLIREF-PATAPP s 2.5.8)

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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 Chapter 2: Parts of a Patent Application § 2.5 Specification *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). PLIREF-PATAPP s 2.5.8 END OF DOCUMENT

PLIREF-PATAPP § 2.5.9 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.5.9 (Cite as: PLIREF-PATAPP s 2.5.9)

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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 Chapter 2: Parts of a Patent Application § 2.5 Specification *2-25 § 2.5.9 Description The specification must include a sufficiently detailed description of at least one embodiment of the invention to enable any person skilled in the art of the invention to make and use the invention without undue experimentation. [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 inventor 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 generally accept any operative example of the invention as the best mode. Moreover, the description can be satisfactory 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 discussed in detail in chapter 7. The description should be as short and specific as possible to adequately and accurately describe the invention. 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 structures or process steps that are commonly known in the field, need not be described in detail, unless a detailed description 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). PLIREF-PATAPP s 2.5.9 END OF DOCUMENT

PLIREF-PATAPP § 2.5.10 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.5.10 (Cite as: PLIREF-PATAPP s 2.5.10)

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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 Chapter 2: Parts of a Patent Application § 2.5 Specification *2-26 § 2.5.10 Claims The specifications must end with one or more claims that particularly point out and distinctly claim the subject 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 dependent 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). PLIREF-PATAPP s 2.5.10 END OF DOCUMENT

PLIREF-PATAPP § 2.5.11 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.5.11 (Cite as: PLIREF-PATAPP s 2.5.11)

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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 Chapter 2: Parts of a Patent Application § 2.5 Specification *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 "Abstract." 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 general, to determine the nature and essence of the invention from a quick, cursory inspection of the patent. The abstract 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 discuss 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. PLIREF-PATAPP s 2.5.11 END OF DOCUMENT

PLIREF-PATAPP § 2.6 How to Write Pat. Application s 2.6 (Cite as: PLIREF-PATAPP s 2.6)

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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 Chapter 2: Parts of a Patent Application *2-28 § 2.6 Preliminary Amendments There are circumstances in which a preliminary amendment is filed with an original application. For example, 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 preliminary 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 amendment 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

PLIREF-PATAPP § 2.7 How to Write Pat. Application s 2.7 (Cite as: PLIREF-PATAPP s 2.7)

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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 Chapter 2: Parts of a Patent Application *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 individuals 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. Information is material if it establishes by itself or in combination with other information a prima facie case of unpatentability of a claim. [FN85] Such information includes material information found in publications and patents 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 disclosure 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 unenforceability of the entire patent, an award of attorney's fees, antitrust liability, and possible suspension or disbarment 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

PLIREF-PATAPP § 2.8 How to Write Pat. Application s 2.8 (Cite as: PLIREF-PATAPP s 2.8)

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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 Chapter 2: Parts of a Patent Application *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 intervening 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 specifying 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 application, 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 application 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 required 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.

PLIREF-PATAPP § 2.8 How to Write Pat. Application s 2.8 (Cite as: PLIREF-PATAPP s 2.8)

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[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

PLIREF-PATAPP § 2.9.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.9.1 (Cite as: PLIREF-PATAPP s 2.9.1)

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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 Chapter 2: Parts of a Patent Application § 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 Trademark 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. PLIREF-PATAPP s 2.9.1 END OF DOCUMENT

PLIREF-PATAPP § 2.9.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.9.2 (Cite as: PLIREF-PATAPP s 2.9.2)

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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 Chapter 2: Parts of a Patent Application § 2.9 Petition to Make Special *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 patent 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 received 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 Statement. [FN92.2]. 37 C.F.R. § 1.102; M.P.E.P. § 708.02; 1308 OG 106. PLIREF-PATAPP s 2.9.2 END OF DOCUMENT

PLIREF-PATAPP § 2.9.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.9.3 (Cite as: PLIREF-PATAPP s 2.9.3)

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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 Chapter 2: Parts of a Patent Application § 2.9 Petition to Make Special *2-34 § 2.9.3 Procedure There are now two different procedures for Petitions to Make Special. If a petition is based on the applicant's health or age or is under the PPH program (categories 1, 2, and 15 in § 2.9.2), the procedure is straightforward. 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 program. 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 electronic 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 applicant 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 identification 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

PLIREF-PATAPP § 2.9.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.9.3 (Cite as: PLIREF-PATAPP s 2.9.3)

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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 reference, 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. PLIREF-PATAPP s 2.9.3 END OF DOCUMENT

PLIREF-PATAPP § 2.9.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.9.4 (Cite as: PLIREF-PATAPP s 2.9.4)

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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 Chapter 2: Parts of a Patent Application § 2.9 Petition to Make Special *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 application, the granting of a Petition to Make Special generally means that any resulting patent has a longer effective term. PLIREF-PATAPP s 2.9.4 END OF DOCUMENT

PLIREF-PATAPP § 2.9.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.9.5 (Cite as: PLIREF-PATAPP s 2.9.5)

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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 Chapter 2: Parts of a Patent Application § 2.9 Petition to Make Special *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 prosecuting 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 accelerated 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 examination program. PLIREF-PATAPP s 2.9.5 END OF DOCUMENT

PLIREF-PATAPP § 2.9.6 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.9.6 (Cite as: PLIREF-PATAPP s 2.9.6)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 2: Parts of a Patent Application § 2.9 Petition to Make Special *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 Office. 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. PLIREF-PATAPP s 2.9.6 END OF DOCUMENT

PLIREF-PATAPP § 2.10.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.10.1 (Cite as: PLIREF-PATAPP s 2.10.1)

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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 Chapter 2: Parts of a Patent Application § 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 number 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 patents is periodically revised by the PTO. Updated information can be obtained from the PTO website . 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 applicants. 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 applicant 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 incurred 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-

PLIREF-PATAPP § 2.10.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.10.1 (Cite as: PLIREF-PATAPP s 2.10.1)

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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 customer 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 applicant subsequently files an application directed to the invention in another country, or under a multilateral international 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 results 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 . Forms that are easy to fill in can be obtained as a subscription service from Legal Star . [FN96]. 35 U.S.C. § 122(b)(2)(B)(iii); 1272 OG 22 (July 1, 2003). PLIREF-PATAPP s 2.10.1 END OF DOCUMENT

PLIREF-PATAPP § 2.10.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.10.2 (Cite as: PLIREF-PATAPP s 2.10.2)

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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 Chapter 2: Parts of a Patent Application § 2.10 Filing the Application *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 papers 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 Office 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 postmark, 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 application, 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-

PLIREF-PATAPP § 2.10.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.10.2 (Cite as: PLIREF-PATAPP s 2.10.2)

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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). PLIREF-PATAPP s 2.10.2 END OF DOCUMENT

PLIREF-PATAPP § 2.10.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2.10.3 (Cite as: PLIREF-PATAPP s 2.10.3)

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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 Chapter 2: Parts of a Patent Application § 2.10 Filing the Application *2-42 § 2.10.3 Checklist A comprehensive checklist for a patent application is provided in Exhibit 2- 12. The checklist lists the components of a patent application and procedural steps calculated to avoid errors in the preparation and filing of the application. PLIREF-PATAPP s 2.10.3 END OF DOCUMENT

PLIREF-PATAPP § 2.11 How to Write Pat. Application s 2.11 (Cite as: PLIREF-PATAPP s 2.11)

FOR EDUCATIONAL USE ONLY

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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 Chapter 2: Parts of a Patent Application *2-43 § 2.11 S-Signatures An S-Signature is a signature between forward slash marks, but not a handwritten signature. [FN101] Exemplary of a situation where an S-Signature can be used is after the practitioner creates a document, and then SSignator 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 inserted 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 suggests 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 How to Write Pat. Application 2 Exh. 2-1 (Cite as: PLIREF-PATAPP 2 Exh. 2-1)

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

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

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 2: Parts of a Patent Application *2EX-5 Exhibit 2-3: ASSIGNMENT WHEREAS, I, _______________________________________________________ respectively, have invented certain 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 representatives 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 continuations-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 Assignee 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 executed, 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, 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 improvements in all countries. IN TESTIMONY WHEREOF, I hereunto set my hand this ____ day of _______, 19 ___.

________________

STATE OF CALIFORNIA COUNTY OF

) ) )

SS.

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

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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

PLIREF-PATAPP 2 Exh. 2-3 END OF DOCUMENT

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

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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 _________________________________________________.

State of ______ ) SS:

__________,

___.

_____________ Signature _____________ Printed Name/Registration No., If applicable

County of ______ )

Before me personally appeared said __________________ and acknowledged the foregoing instrument to be his free

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

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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 officially approved form. PLIREF-PATAPP 2 Exh. 2-3A END OF DOCUMENT

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

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

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 2: Parts of a Patent Application *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 definition, 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 organization 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 organization located in a foreign country which would qualify as a non-profit organization under the Internal Revenue 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

PLIREF-PATAPP 2 Exh. 2-4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-4 (Cite as: PLIREF-PATAPP 2 Exh. 2-4)

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--------------------------------------------------------------------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 Trademark 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 concern 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 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. "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)

PLIREF-PATAPP 2 Exh. 2-4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-4 (Cite as: PLIREF-PATAPP 2 Exh. 2-4)

FULL NAME ADDRESS

Page 2

______________________________ ______________________________ [ ] Individual [ ] Small Business Concern

[ ] Nonprofit Organization

______________________________ ______________________________ [ ] Individual [ ] Small Business Concern

[ ] Nonprofit Organization

______________________________ ______________________________ [ ] Individual [ ] Small Business Concern

[ ] Nonprofit Organization

______________________________ ______________________________ [ ] Individual [ ] Small Business Concern

[ ] Nonprofit Organization

-------------------------------------------------------------------------------

P03/REV01

Patent and Trademark Office-U.S. DEPARTMENT OF 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 maintenance 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 information 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: ______

NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________

DATE: ______

NAME OF INVENTOR _______________

PLIREF-PATAPP 2 Exh. 2-4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-4 (Cite as: PLIREF-PATAPP 2 Exh. 2-4)

SIGNATURE OF INVENTOR ______________

DATE: ______

NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________

DATE: ______

NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________

DATE:

NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________

DATE: ______

NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________

DATE: ______

NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________

DATE: ______

NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________

DATE:

NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________

DATE: ______

--------------------------------------------------

Patent and Trademark Office-U.S. DEPARTMENT OF COMMERCE PLIREF-PATAPP 2 Exh. 2-4 END OF DOCUMENT

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PLIREF-PATAPP 2 Exh. 2-5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-5 (Cite as: PLIREF-PATAPP 2 Exh. 2-5)

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----------------------------------------------------------------------VERIFIED STATEMENT (DECLARATION) CLAIMING SMALL ENTITY Docket No. STATUS (37 CFR 1.9(f) AND 1.27(c)) - SMALL BUSINESS CONCERN -----------------------------------------------------------------------

Serial No.

Filing Date

Patent No.

Issue Date

-------------------------------------------------------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:

PLIREF-PATAPP 2 Exh. 2-5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-5 (Cite as: PLIREF-PATAPP 2 Exh. 2-5)

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[ ] the specification filed herewith with title as listed above. [ ] the application identified above. [ ] the patent identified above. If the rights held by the above-identified small business concern are not exclusive, each individual concern or organization having rights to the invention is listed on the next page and no rights to the invention are held by any parson, other 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).

*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

______________________________ ______________________________ [ ] Individual [ ] Small Business Concern

[ ] Nonprofit Organization

______________________________ ______________________________ [ ] Individual [ ] Small Business Concern

[ ] Nonprofit Organization

______________________________ ______________________________ [ ] Individual [ ] Small Business Concern

[ ] Nonprofit Organization

______________________________ ______________________________ [ ] Individual [ ] Small Business Concern

[ ] Nonprofit Organization

PLIREF-PATAPP 2 Exh. 2-5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-5 (Cite as: PLIREF-PATAPP 2 Exh. 2-5)

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I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information 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 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 PERSON SIGNING: TITLE OF PERSON SIGNING: OTHER THAN OWNER: ADDRESS OF PERSON SIGNING:

______________________ ______________________

SIGNATURE: ________________ DATE: ______ Patent and Trademark Office-U.S. DEPARTMENT OF COMMENCE PLIREF-PATAPP 2 Exh. 2-5 END OF DOCUMENT

PLIREF-PATAPP 2 Exh. 2-6 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-6 (Cite as: PLIREF-PATAPP 2 Exh. 2-6)

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---------------------------------------------------------------------VERIFIED STATEMENT (DECLARATION) CLAIMING SMALL ENTITY Docket No STATUS (37 CFR 1.9(f) AND 1.27(d)) - NONPROFIT ORGANIZATION ----------------------------------------------------------------------

Serial No.

Filing Date

Patent No.

Issue Date

-------------------------------------------------------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-

PLIREF-PATAPP 2 Exh. 2-6 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-6 (Cite as: PLIREF-PATAPP 2 Exh. 2-6)

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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 invention described in: [ ] the specification to be filed herewith. [ ] the application identified above. [ ] the patent identified above. 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 organization having rights to the invention is listed on the next page and no rights to the invention are held by any person, other 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)

*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

______________________________ ______________________________ [ ] Individual [ ] Small Business Concern

[ ] Nonprofit Organization

______________________________ ______________________________ [ ] Individual [ ] Small Business Concern

[ ] Nonprofit Organization

______________________________ ______________________________ [ ] Individual [ ] Small Business

[ ] Nonprofit

PLIREF-PATAPP 2 Exh. 2-6 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-6 (Cite as: PLIREF-PATAPP 2 Exh. 2-6)

Concern FULL NAME ADDRESS

______________________________ ______________________________ [ ] Individual [ ] Small Business Concern

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Organization

[ ] Nonprofit Organization

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) 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)) I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information 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 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 PERSON SIGNING: TITLE IN ORGANIZATION: ADDRESS OF PERSON SIGNING:

______________________ ______________________

SIGNATURE: _______________ DATE: _______ Patent and Trademark Office-U.S. DEPARTMENT OF COMMENCE PLIREF-PATAPP 2 Exh. 2-6 END OF DOCUMENT

PLIREF-PATAPP 2 Exh. 2-7 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-7 (Cite as: PLIREF-PATAPP 2 Exh. 2-7)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 2: Parts of a Patent Application *2EX-19 Exhibit 2-7: Sample Patent TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE *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 animals 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 interesting 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 water 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 annular 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:

PLIREF-PATAPP 2 Exh. 2-7 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-7 (Cite as: PLIREF-PATAPP 2 Exh. 2-7)

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(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 inner 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 terrarium through the access opening. Preferably there is a door which normally closes the access opening in the bottom 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.

PLIREF-PATAPP 2 Exh. 2-7 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-7 (Cite as: PLIREF-PATAPP 2 Exh. 2-7)

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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 suitable 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 container 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 sufficient to totally submerge the inner container 40. The aquarium 60 and thus the water-filled space 50 can be populated with various aquatic life forms, such as aquatic plants, live fish and other marine animals, and other conventional 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 container 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 origin, 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 maintaining 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 supporting 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.

PLIREF-PATAPP 2 Exh. 2-7 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-7 (Cite as: PLIREF-PATAPP 2 Exh. 2-7)

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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 terrarium 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 example, 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 aquarium 60. The inside of the dry tube 80 forms a passageway 95, which is in fluid communication with the terrarium 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 substantially 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-section, 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 within the same aquarium 60. The number of terrariums is limited generally by the sizes of the aquarium and the terrariums, 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,

PLIREF-PATAPP 2 Exh. 2-7 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-7 (Cite as: PLIREF-PATAPP 2 Exh. 2-7)

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such that the air-breathing pets have access to all of the terrariums. Again, the background exhibits in each terrarium 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 framework 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; (c) upstanding, substantially transparent inner side walls which in cooperation with the bottom wall form a single inner container, the inner container also having as enclosing top wall, such that the 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 one portion of the inner side walls to another opening at another portion of the inner 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 inside of the inner container; wherein the top of the outer side walls extend higher than the top wall of the inner 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 inner 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; (c) upstanding, substantially transparent inner side walls which in cooperation with the bottom wall

PLIREF-PATAPP 2 Exh. 2-7 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-7 (Cite as: PLIREF-PATAPP 2 Exh. 2-7)

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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 containers 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 container 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. ***** PLIREF-PATAPP 2 Exh. 2-7 END OF DOCUMENT

PLIREF-PATAPP 2 Exh. 2-8 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-8 (Cite as: PLIREF-PATAPP 2 Exh. 2-8)

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PLIREF-PATAPP 2 Exh. 2-9 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-9 (Cite as: PLIREF-PATAPP 2 Exh. 2-9)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 2: Parts of a Patent Application *2EX-27 Exhibit 2-9: Utility Patent Application Transmittal TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE *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 requirements 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 submission 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 termination 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 submitting 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 system of records may be disclosed, as a routine use, to the International Bureau of the World Intellectual Property 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, General 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-

PLIREF-PATAPP 2 Exh. 2-9 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-9 (Cite as: PLIREF-PATAPP 2 Exh. 2-9)

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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 regulation. PLIREF-PATAPP 2 Exh. 2-9 END OF DOCUMENT

PLIREF-PATAPP 2 Exh. 2-9A FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-9A (Cite as: PLIREF-PATAPP 2 Exh. 2-9A)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 2: Parts of a Patent Application *2EX-29 Exhibit 2-9A: Fee Transmittal for FY 2005 TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE *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 requirements 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 submission 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 termination 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 submitting 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 system of records may be disclosed, as a routine use, to the International Bureau of the World Intellectual Property 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, General 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-

PLIREF-PATAPP 2 Exh. 2-9A FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-9A (Cite as: PLIREF-PATAPP 2 Exh. 2-9A)

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PLIREF-PATAPP 2 Exh. 2-10 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-10 (Cite as: PLIREF-PATAPP 2 Exh. 2-10)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 2: Parts of a Patent Application *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 Claims: No. of Drawings: No. of Declaration of Power of Assignment Fee Enclosed: Amount

Pages ___ Claims ___ Sheets ___ Attorney ___

PLIREF-PATAPP 2 Exh. 2-10 END OF DOCUMENT

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PLIREF-PATAPP 2 Exh. 2-11 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-11 (Cite as: PLIREF-PATAPP 2 Exh. 2-11)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 2: Parts of a Patent Application *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)

PLIREF-PATAPP 2 Exh. 2-11 END OF DOCUMENT

PLIREF-PATAPP 2 Exh. 2-12 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-12 (Cite as: PLIREF-PATAPP 2 Exh. 2-12)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 2: Parts of a Patent Application *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 [ ] TITLE MATCHES APPLICATION TITLE [ ] CUSTOMER NUMBER INCLUDED [ ] POWER OF ATTORNEY BY CORPORATION [ ] EXECUTED BY CORPORATION WHEN ASSIGNED BY APPLICANT [ ] CUSTOMER NUMBER INCLUDED [ ] INFORMATION DISCLOSURE STATEMENT PROVIDED [ ] OFFICE COPIES OF DOCUMENTS IN FILE [ ] WORD "PRIOR" DELETED (BOTH PLACES)

PLIREF-PATAPP 2 Exh. 2-12 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-12 (Cite as: PLIREF-PATAPP 2 Exh. 2-12)

[ ] ALL DOCUMENTS ENCLOSED [ ] TITLE MATCHES APPLICATION TITLE [ ] SIGNED BY ATTORNEY [ ] EXPRESS MAIL PROPERLY DONE [ ] COPIES OF PAPERS FILED BEING SENT TO CLIENT [ ] DOCKETING NOTIFIED OF FILING PLIREF-PATAPP 2 Exh. 2-12 END OF DOCUMENT

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PLIREF-PATAPP § 2A.1 How to Write Pat. Application s 2A.1 (Cite as: PLIREF-PATAPP s 2A.1)

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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 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 applications, and for U.S. national stage applications under 35 U.S.C. § 371. EFS can be used for continuation, divisional, 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 acknowledgment 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

PLIREF-PATAPP § 2A.2 How to Write Pat. Application s 2A.2 (Cite as: PLIREF-PATAPP s 2A.2)

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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 Chapter 2A: Electronic Filing in the Patent Office *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. PLIREF-PATAPP s 2A.2 END OF DOCUMENT

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PLIREF-PATAPP § 2A.3 How to Write Pat. Application s 2A.3 (Cite as: PLIREF-PATAPP s 2A.3)

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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 Chapter 2A: Electronic Filing in the Patent Office *2A-3 § 2A.3 Who Can Electronically File Anyone can electronically file. There are two types of filers: registered filers and unregistered filers. Registered 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. PLIREF-PATAPP s 2A.3 END OF DOCUMENT

PLIREF-PATAPP § 2A.4 How to Write Pat. Application s 2A.4 (Cite as: PLIREF-PATAPP s 2A.4)

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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 Chapter 2A: Electronic Filing in the Patent Office *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, nonpatent 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. PLIREF-PATAPP s 2A.4 END OF DOCUMENT

PLIREF-PATAPP § 2A.5 How to Write Pat. Application s 2A.5 (Cite as: PLIREF-PATAPP s 2A.5)

FOR EDUCATIONAL USE ONLY

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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 Chapter 2A: Electronic Filing in the Patent Office *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 http://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)

PLIREF-PATAPP § 2A.5 How to Write Pat. Application s 2A.5 (Cite as: PLIREF-PATAPP s 2A.5)

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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). PLIREF-PATAPP s 2A.5 END OF DOCUMENT

PLIREF-PATAPP § 2A.6 How to Write Pat. Application s 2A.6 (Cite as: PLIREF-PATAPP s 2A.6)

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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 Chapter 2A: Electronic Filing in the Patent Office *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 Patent 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 customer 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 authorization code (sent by e-mail) and a reference number (sent by regular mail). You can also receive your reference 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 lowlevel security procedure. When using this shortcut, you cannot save an application for later completion; the entire 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 filings. PLIREF-PATAPP s 2A.6 END OF DOCUMENT

PLIREF-PATAPP § 2A.7 How to Write Pat. Application s 2A.7 (Cite as: PLIREF-PATAPP s 2A.7)

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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 Chapter 2A: Electronic Filing in the Patent Office *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 processing 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 ensure 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 document. 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 malicious 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 described 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

PLIREF-PATAPP § 2A.7 How to Write Pat. Application s 2A.7 (Cite as: PLIREF-PATAPP s 2A.7)

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• 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) PLIREF-PATAPP s 2A.7 END OF DOCUMENT

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PLIREF-PATAPP § 2A.8 How to Write Pat. Application s 2A.8 (Cite as: PLIREF-PATAPP s 2A.8)

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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 Chapter 2A: Electronic Filing in the Patent Office *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. PLIREF-PATAPP s 2A.8 END OF DOCUMENT

PLIREF-PATAPP § 2A.9 How to Write Pat. Application s 2A.9 (Cite as: PLIREF-PATAPP s 2A.9)

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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 Chapter 2A: Electronic Filing in the Patent Office *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. PLIREF-PATAPP s 2A.9 END OF DOCUMENT

PLIREF-PATAPP § 2A.10 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2A.10 (Cite as: PLIREF-PATAPP s 2A.10)

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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 Chapter 2A: Electronic Filing in the Patent Office *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 program. 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 correspondence 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 submitted (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 electronically 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 national stage filing. 7. The EFS automatically generates on screen an acknowledgement receipt. See Exhibit 2A-1 for a simulated 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 official filing receipt. 8. Submit any assignment of ownership documents, information disclosure statements, and power of attorney 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 acknowledgment receipt fits the documents filed.

PLIREF-PATAPP § 2A.10 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2A.10 (Cite as: PLIREF-PATAPP s 2A.10)

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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 corresponding field. • PDF files receiving an error notice must be removed. • PDF files receiving a warning notice allow you to continue. PLIREF-PATAPP s 2A.10 END OF DOCUMENT

PLIREF-PATAPP § 2A.11 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2A.11 (Cite as: PLIREF-PATAPP s 2A.11)

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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 Chapter 2A: Electronic Filing in the Patent Office *2A-13 § 2A.11 Using USPTO Fillable Forms The USPTO website has Form-Fillable PDFs that are fillable offline. These include the information disclosure 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. PLIREF-PATAPP s 2A.11 END OF DOCUMENT

PLIREF-PATAPP § 2A.12 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2A.12 (Cite as: PLIREF-PATAPP s 2A.12)

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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 Chapter 2A: Electronic Filing in the Patent Office *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. PLIREF-PATAPP s 2A.12 END OF DOCUMENT

PLIREF-PATAPP § 2A.13 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2A.13 (Cite as: PLIREF-PATAPP s 2A.13)

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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 Chapter 2A: Electronic Filing in the Patent Office *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 submission with an electronically prepared cover sheet. The form is *2A-14 available on line at http://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. PLIREF-PATAPP s 2A.13 END OF DOCUMENT

PLIREF-PATAPP § 2A.14 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2A.14 (Cite as: PLIREF-PATAPP s 2A.14)

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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 Chapter 2A: Electronic Filing in the Patent Office *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 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. 4. The person inserting an EFS coded signature in a document submitted certifies that the inserted signature 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 Office 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 PLIREF-PATAPP s 2A.14 END OF DOCUMENT

PLIREF-PATAPP § 2A.15 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2A.15 (Cite as: PLIREF-PATAPP s 2A.15)

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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 Chapter 2A: Electronic Filing in the Patent Office *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 PLIREF-PATAPP s 2A.15 END OF DOCUMENT

PLIREF-PATAPP § 2A.16 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2A.16 (Cite as: PLIREF-PATAPP s 2A.16)

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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 Chapter 2A: Electronic Filing in the Patent Office *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. PLIREF-PATAPP s 2A.16 END OF DOCUMENT

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

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-----------------------------------------------------------------------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:

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

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------------------------------------------------------------------------------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 Data Sheet

US_ADS_Form.pdf

3326139

16900AppFinal.pdf

73064

yes

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

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

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Drawings

drawingsfinal.pdf

183281

Oath or Declaration filed

DeclPOA.pdf

153730

Fee Worksheet (PTO-875)

fee-into.pdf

8465

------------------------------------------------------------------------------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 documents, characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar 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.

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

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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

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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 Chapter 3: Working with the Inventor *3-2 § 3.1 Introduction There can be no invention without the inventor. Thus, the most important person in preparing a quality patent 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 enabling 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 unavailable, with the person knowledgeable about the invention. END OF DOCUMENT

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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 Chapter 3: Working with the Inventor *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 discussion 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

PLIREF-PATAPP § 3.3 How to Write Pat. Application s 3.3 (Cite as: PLIREF-PATAPP s 3.3)

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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 Chapter 3: Working with the Inventor *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 inventors 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 application 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 ownership 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 inventors. For example, consider a disclosure that teaches using a prior art process for making a chemical compound, 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 Office 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 inventor 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 specific component as one's sole idea, but one must be able to say that without his contribution to the final conception, it would have been less--less efficient, less simple, less economical, less something of benefit.

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[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 method 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 complete 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 intermediate 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 presumption 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 invention, 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.

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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 coinventor. [FN5] However, contribution of an obvious element does not qualify the contributor for inventorship 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 connection. [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 because 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 contribution 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 inventors 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 correct. 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, contributed 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 practitioner 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 prosecution 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 correct 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]

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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 dependent 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 conclusions 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 Disclosure 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 obtain the assignment or would require a payment to do so. Failure to disclose material facts relating to inventorship, 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 question 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 'inventorship' 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 determinations, 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).

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[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 Invention, 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); Sewall 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 END OF DOCUMENT

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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 Chapter 3: Working with the Inventor *3-12 § 3.4 Preparing for the Initial Interview To the extent possible, the inventor should submit all available relevant materials before the initial interview. 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 END OF DOCUMENT

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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 Chapter 3: Working with the Inventor *3-12 § 3.5 Initial Interview The initial interview, as described below, may actually be divided into two segments. Although the following description will cover most of the information that needs to be obtained from the inventor, not all of this information 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 END OF DOCUMENT

PLIREF-PATAPP § 3.5.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 3.5.1 (Cite as: PLIREF-PATAPP s 3.5.1)

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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 Chapter 3: Working with the Inventor § 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 practitioner 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. PLIREF-PATAPP s 3.5.1 END OF DOCUMENT

PLIREF-PATAPP § 3.5.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 3.5.2 (Cite as: PLIREF-PATAPP s 3.5.2)

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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 Chapter 3: Working with the Inventor § 3.5 Initial Interview *3-13 § 3.5.2 Obtain an Enabling Disclosure As described in chapter 7, the patent application must contain an "enabling disclosure." Thus, the practitioner 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 identifies information typically needed to have an enabling disclosure in the chemical, chemical process, and biotechnical 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 examples: 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,

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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. Dating 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 advantages 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. PLIREF-PATAPP s 3.5.2 END OF DOCUMENT

PLIREF-PATAPP § 3.5.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 3.5.3 (Cite as: PLIREF-PATAPP s 3.5.3)

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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 Chapter 3: Working with the Inventor § 3.5 Initial Interview *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 foreign 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 comprehensive 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.) PLIREF-PATAPP s 3.5.3 END OF DOCUMENT

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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 Chapter 3: Working with the Inventor *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 doing 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 inventor 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. END OF DOCUMENT

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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 Chapter 3: Working with the Inventor *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 prepared, 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 preliminary amendment. This is useful only if the changes to be made by the preliminary amendment do not create issues 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 executed, no changes can be made to the application except by amendment. PLIREF-PATAPP s 3.7 END OF DOCUMENT

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

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 3: Working with the Inventor *3EX-1 Exhibit 3-1 TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 3 Exh. 3-1 END OF DOCUMENT

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PLIREF-PATAPP 3 Exh. 3-4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 3 Exh. 3-4 (Cite as: PLIREF-PATAPP 3 Exh. 3-4)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 17, November 2005 Chapter 3: Working with the Inventor *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 publication 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 invention. [ ] 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 competitor 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 patented invention. [ ] Can we protect this as a trade secret?

PLIREF-PATAPP 3 Exh. 3-4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 3 Exh. 3-4 (Cite as: PLIREF-PATAPP 3 Exh. 3-4)

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[ ] 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 University 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. PLIREF-PATAPP 3 Exh. 3-4 END OF DOCUMENT

PLIREF-PATAPP § 4.1 How to Write Pat. Application s 4.1 (Cite as: PLIREF-PATAPP s 4.1)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search *4-2 § 4.1 Introduction 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 END OF DOCUMENT

PLIREF-PATAPP § 4.2 How to Write Pat. Application s 4.2 (Cite as: PLIREF-PATAPP s 4.2)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search *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 reference 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 obvious 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 invention, 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 expended 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 END OF DOCUMENT

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PLIREF-PATAPP § 4.3.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 4.3.1 (Cite as: PLIREF-PATAPP s 4.3.1)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search § 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 novelty 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 substantially less than utility applications, and there is little economic justification for conducting a novelty search before filing a design patent application. PLIREF-PATAPP s 4.3.1 END OF DOCUMENT

PLIREF-PATAPP § 4.3.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 4.3.2 (Cite as: PLIREF-PATAPP s 4.3.2)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search § 4.3 Why Order a Novelty Search? *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 application 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 application. Sometimes chunks of the specification of a prior art patent can be lifted bodily or incorporated by reference, 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 typically 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? PLIREF-PATAPP s 4.3.2 END OF DOCUMENT

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search § 4.3 Why Order a Novelty Search? *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 potential 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 situations, 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. PLIREF-PATAPP s 4.3.3 END OF DOCUMENT

PLIREF-PATAPP § 4.3.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 4.3.4 (Cite as: PLIREF-PATAPP s 4.3.4)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search § 4.3 Why Order a Novelty Search? *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 prior 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). PLIREF-PATAPP s 4.3.4 END OF DOCUMENT

PLIREF-PATAPP § 4.3.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 4.3.5 (Cite as: PLIREF-PATAPP s 4.3.5)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search § 4.3 Why Order a Novelty Search? *4-6 § 4.3.5 Foreign Filing Decisions Many searches are useful in determining whether or not to file international applications. The cost of international 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. PLIREF-PATAPP s 4.3.5 END OF DOCUMENT

PLIREF-PATAPP § 4.4 How to Write Pat. Application s 4.4 (Cite as: PLIREF-PATAPP s 4.4)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search *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 favorable, 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 novelty 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 application 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 preceding 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 often been able to develop a "surprise" reference as a result of a novelty search. PLIREF-PATAPP s 4.4

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PLIREF-PATAPP § 4.5 How to Write Pat. Application s 4.5 (Cite as: PLIREF-PATAPP s 4.5)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search *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 END OF DOCUMENT

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search § 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. PLIREF-PATAPP s 4.5.1 END OF DOCUMENT

PLIREF-PATAPP § 4.5.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 4.5.2 (Cite as: PLIREF-PATAPP s 4.5.2)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search § 4.5 Procedure for Ordering a Novelty Search *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 standard 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 often do this on their own. The examiners are the best source of information for identifying the classes in which a search should be conducted. PLIREF-PATAPP s 4.5.2 END OF DOCUMENT

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search § 4.5 Procedure for Ordering a Novelty Search *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 complement 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 generally 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 literature, other literature, or both can be searched. It all depends upon the particular technology and the budget. Before 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. PLIREF-PATAPP s 4.5.3 END OF DOCUMENT

PLIREF-PATAPP § 4.5.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 4.5.4 (Cite as: PLIREF-PATAPP s 4.5.4)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search § 4.5 Procedure for Ordering a Novelty Search *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 application. 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. PLIREF-PATAPP s 4.5.4 END OF DOCUMENT

PLIREF-PATAPP § 4.5.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 4.5.5 (Cite as: PLIREF-PATAPP s 4.5.5)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search § 4.5 Procedure for Ordering a Novelty Search *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 repeatedly 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. PLIREF-PATAPP s 4.5.5 END OF DOCUMENT

PLIREF-PATAPP § 4.6 How to Write Pat. Application s 4.6 (Cite as: PLIREF-PATAPP s 4.6)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search *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 Patent 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 expectations 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 confirming that a search has been requested, or in the search report itself. PLIREF-PATAPP s 4.6 END OF DOCUMENT

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search *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 expressed 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 application 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 expressing an opinion, and the inventor should be requested to review the references and call and discuss the results. When discussing the references, consider that the references will need to be discussed in an information disclosure 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 crossexamination 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, respectively.

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PLIREF-PATAPP 4 Exh. 4-1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 4 Exh. 4-1 (Cite as: PLIREF-PATAPP 4 Exh. 4-1)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search *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 enclosed United States Patent (c) No. 5,000,000, the portable scanner is extremely lightweight and portable. This was done by replacing 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 housing. 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. PLIREF-PATAPP 4 Exh. 4-1 END OF DOCUMENT

PLIREF-PATAPP 4 Exh. 4-2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 4 Exh. 4-2 (Cite as: PLIREF-PATAPP 4 Exh. 4-2)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search *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 commercial 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 patentability 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. PLIREF-PATAPP 4 Exh. 4-2 END OF DOCUMENT

PLIREF-PATAPP 4 Exh. 4-3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 4 Exh. 4-3 (Cite as: PLIREF-PATAPP 4 Exh. 4-3)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search *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 understanding that the XYZ prevents hijacking. Our search developed the following patents, a single copy of each of which is enclosed:

United States Patent No. -----------------------1,910,473 3,758,999 3,780,835 3,804,725 3,911,790 3,915,111

Inventor -------ABC DEF GHI JKL MNO 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.

PLIREF-PATAPP 4 Exh. 4-3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 4 Exh. 4-3 (Cite as: PLIREF-PATAPP 4 Exh. 4-3)

Sincerely yours, PLIREF-PATAPP 4 Exh. 4-3 END OF DOCUMENT

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PLIREF-PATAPP 4 Exh. 4-4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 4 Exh. 4-4 (Cite as: PLIREF-PATAPP 4 Exh. 4-4)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 4: The Novelty Search *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 motorized 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. -----------------------2,807,759 3,499,039 3,502,816 3,653,436 3,789,403 4,568,428 4,733,798 4,808,789

Inventor ---------Inventor A Inventor B Inventor C Inventor D Inventor E Inventor F Inventor G 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 person 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

PLIREF-PATAPP 4 Exh. 4-4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 4 Exh. 4-4 (Cite as: PLIREF-PATAPP 4 Exh. 4-4)

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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, PLIREF-PATAPP 4 Exh. 4-4 END OF DOCUMENT

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PLIREF-PATAPP § 5.1 How to Write Pat. Application s 5.1 (Cite as: PLIREF-PATAPP s 5.1)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings *5-3 § 5.1 Introduction Drawings can be an important substantive aspect of a patent application. For most patent applications, drawings prove the adage that "a picture is worth a thousand words." Many complex concepts or inventions are difficult, 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 important 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 END OF DOCUMENT

PLIREF-PATAPP § 5.1.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.1.1 (Cite as: PLIREF-PATAPP s 5.1.1)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 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 patent 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 discretion 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 generally 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 arrangement 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 system. [FN6] All these examples have one thing in common: the written description can adequately and completely disclose 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 apparatus. 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 applications in which the nature of the invention merely admits of an illustration by a drawing, without a drawing's being 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 illustrations 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

PLIREF-PATAPP § 5.1.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.1.1 (Cite as: PLIREF-PATAPP s 5.1.1)

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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 awarded 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 insufficiency of the specification due to lack of an enabling disclosure. [FN11] Second, they cannot be used to supplement 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 drawings 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 invention. [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.

PLIREF-PATAPP § 5.1.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.1.1 (Cite as: PLIREF-PATAPP s 5.1.1)

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[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). PLIREF-PATAPP s 5.1.1 END OF DOCUMENT

PLIREF-PATAPP § 5.1.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.1.2 (Cite as: PLIREF-PATAPP s 5.1.2)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 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 generally prepared by professional patent illustrators familiar with the strict formal requirements of the Patent Office. 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 beginning the draft of the specification. PLIREF-PATAPP s 5.1.2 END OF DOCUMENT

PLIREF-PATAPP § 5.1.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.1.3 (Cite as: PLIREF-PATAPP s 5.1.3)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 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 imposed 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 preparing 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 accepted as informal drawings so long as they are readable and reproducible. [FN19] Pencil drawings are not acceptable 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. PLIREF-PATAPP s 5.1.3 END OF DOCUMENT

PLIREF-PATAPP § 5.2.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.2.1 (Cite as: PLIREF-PATAPP s 5.2.1)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 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 amending 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 importance 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).

PLIREF-PATAPP § 5.2.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.2.1 (Cite as: PLIREF-PATAPP s 5.2.1)

PLIREF-PATAPP s 5.2.1 END OF DOCUMENT

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PLIREF-PATAPP § 5.2.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.2.2 (Cite as: PLIREF-PATAPP s 5.2.2)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.2 Contents of the 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 features such as valves, motors, and electrical components may be illustrated in the form of graphic drawing symbols 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 retained 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. PLIREF-PATAPP s 5.2.2 END OF DOCUMENT

PLIREF-PATAPP § 5.2.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.2.3 (Cite as: PLIREF-PATAPP s 5.2.3)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.2 Contents of the 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 substantially 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 invention that are specified in the claims. Variations presented in narrower claims relating to the number and location 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. PLIREF-PATAPP s 5.2.3 END OF DOCUMENT

PLIREF-PATAPP § 5.3 How to Write Pat. Application s 5.3 (Cite as: PLIREF-PATAPP s 5.3)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 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 generally 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 invention, without trying to imagine what the invention looks like from a written description. However, if no prototype 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 invention needs to be conveyed by the drawings, the information provided to the draftsmen should include the materials 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 completely and precisely show the invention. The drawings can contain as many figures as necessary to show the invention. 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 necessary 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 essential 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 excluded 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 draftsman as to exactly what drawings are needed and avoids the problem of draftsmen unnecessarily preparing excessive and expensive drawings. This approach also avoids the problem of a draftsman's not including an important 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 dismantle 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.

PLIREF-PATAPP § 5.3 How to Write Pat. Application s 5.3 (Cite as: PLIREF-PATAPP s 5.3)

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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 substantially 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

PLIREF-PATAPP § 5.3.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.3.1 (Cite as: PLIREF-PATAPP s 5.3.1)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 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. Perspective 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. PLIREF-PATAPP s 5.3.1 END OF DOCUMENT

PLIREF-PATAPP § 5.3.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.3.2 (Cite as: PLIREF-PATAPP s 5.3.2)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.3 Drawing the Invention *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 directions. 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") became 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 determined, the side views or side elevation views are simply the views on the left or right side of the object. Inventions 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 engineering 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 embodiment 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-

PLIREF-PATAPP § 5.3.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.3.2 (Cite as: PLIREF-PATAPP s 5.3.2)

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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. PLIREF-PATAPP s 5.3.2 END OF DOCUMENT

PLIREF-PATAPP § 5.3.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.3.3 (Cite as: PLIREF-PATAPP s 5.3.3)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.3 Drawing the Invention *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 object 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 section is most useful when the novelty of the invention is not in a single plane. It is especially useful when it is necessary 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 section of the invention. Figure 1 of Exhibit 5-3 shows a front perspective view of a simulated neon sign that is partially 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 comprising an elongated housing having a writing element and handcuff locking element axially movable therein." Figures 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 internal 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 section 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 element (14) and the handcuff lock element of the device (16) are shown in perspective in all three figures of Exhibit 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. PLIREF-PATAPP s 5.3.3 END OF DOCUMENT

PLIREF-PATAPP § 5.3.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.3.4 (Cite as: PLIREF-PATAPP s 5.3.4)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.3 Drawing the Invention *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 understand 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. PLIREF-PATAPP s 5.3.4 END OF DOCUMENT

PLIREF-PATAPP § 5.3.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.3.5 (Cite as: PLIREF-PATAPP s 5.3.5)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.3 Drawing the Invention *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 characteristic wavelength, and the like. Exhibit 5-6 shows a plot of unreacted carbon remaining in catalytic carbonaceous 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

PLIREF-PATAPP § 5.3.6 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.3.6 (Cite as: PLIREF-PATAPP s 5.3.6)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.3 Drawing the Invention *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 examples 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. Exhibit 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 Exhibit 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. PLIREF-PATAPP s 5.3.6 END OF DOCUMENT

PLIREF-PATAPP § 5.3.7 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.3.7 (Cite as: PLIREF-PATAPP s 5.3.7)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.3 Drawing the Invention *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 specification rather than as separate drawings. These drawings are of the form shown in Exhibit 5-11. Chemical nomenclature 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. PLIREF-PATAPP s 5.3.7 END OF DOCUMENT

PLIREF-PATAPP § 5.3.8 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.3.8 (Cite as: PLIREF-PATAPP s 5.3.8)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.3 Drawing the Invention *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 drawings of the device are shown in Exhibit 5-2). Figures 4A and 4B illustrate the use of the device in lifting the water 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 illustrates 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). PLIREF-PATAPP s 5.3.8 END OF DOCUMENT

PLIREF-PATAPP § 5.4 How to Write Pat. Application s 5.4 (Cite as: PLIREF-PATAPP s 5.4)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 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 recently been set forth by the Patent Office. Although the "technical" standards of 37 C.F.R. § 1.84 remain unchanged, 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 publication 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 drawing paper. [FN31]. 65 Fed. Reg. 57,024 (Sept. 20, 2000). [FN31.1]. 37 C.F.R. § 1.85(a). END OF DOCUMENT

PLIREF-PATAPP § 5.4.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.4.1 (Cite as: PLIREF-PATAPP s 5.4.1)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 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 surface 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 drawings. 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). PLIREF-PATAPP s 5.4.1 END OF DOCUMENT

PLIREF-PATAPP § 5.4.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.4.2 (Cite as: PLIREF-PATAPP s 5.4.2)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.4 Formal Requirements *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 correction. Computer-drawn illustrations can also be easily corrected. However, it can be more time-consuming to input 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. PLIREF-PATAPP s 5.4.2 END OF DOCUMENT

PLIREF-PATAPP § 5.4.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.4.3 (Cite as: PLIREF-PATAPP s 5.4.3)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.4 Formal Requirements *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 necessary 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 twothirds without blurring the features of the drawing. [FN38] That requirement is imposed because the Patent Office 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). PLIREF-PATAPP s 5.4.3 END OF DOCUMENT

PLIREF-PATAPP § 5.4.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.4.4 (Cite as: PLIREF-PATAPP s 5.4.4)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.4 Formal Requirements *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 pictorial 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. PLIREF-PATAPP s 5.4.4 END OF DOCUMENT

PLIREF-PATAPP § 5.4.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.4.5 (Cite as: PLIREF-PATAPP s 5.4.5)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.4 Formal Requirements *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 hatching patterns should be made by oblique, parallel lines, sufficiently spaced apart to enable the lines to be distinguished 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 different 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

PLIREF-PATAPP § 5.4.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.4.5 (Cite as: PLIREF-PATAPP s 5.4.5)

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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). PLIREF-PATAPP s 5.4.5 END OF DOCUMENT

PLIREF-PATAPP § 5.4.6 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.4.6 (Cite as: PLIREF-PATAPP s 5.4.6)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.4 Formal Requirements *5-26 § 5.4.6 Identification of Drawings Identifying idicia, if provided, should include the application number, the title of the invention, and the inventor'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). PLIREF-PATAPP s 5.4.6 END OF DOCUMENT

PLIREF-PATAPP § 5.5 How to Write Pat. Application s 5.5 (Cite as: PLIREF-PATAPP s 5.5)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 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 important 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

PLIREF-PATAPP § 5.5.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.5.1 (Cite as: PLIREF-PATAPP s 5.5.1)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 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. Exhibit 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 surfaces. 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 exploded 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.

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§ 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 subject 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 depict 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 reject a drawing. PLIREF-PATAPP s 5.5.1 END OF DOCUMENT

PLIREF-PATAPP § 5.5.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.5.2 (Cite as: PLIREF-PATAPP s 5.5.2)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.5 Illustrative Styles and Symbols *5-30 § 5.5.2 Shading Generally, patent illustrations are shaded to appear as if an imaginary light source originates from the upperleft-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, cylindrical 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 circular 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 shading 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 objects. 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). PLIREF-PATAPP s 5.5.2 END OF DOCUMENT

PLIREF-PATAPP § 5.5.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.5.3 (Cite as: PLIREF-PATAPP s 5.5.3)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.5 Illustrative Styles and Symbols *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. PLIREF-PATAPP s 5.5.3 END OF DOCUMENT

PLIREF-PATAPP § 5.5.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.5.4 (Cite as: PLIREF-PATAPP s 5.5.4)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.5 Illustrative Styles and Symbols *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. PLIREF-PATAPP s 5.5.4 END OF DOCUMENT

PLIREF-PATAPP § 5.5.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.5.5 (Cite as: PLIREF-PATAPP s 5.5.5)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.5 Illustrative Styles and Symbols *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 publications 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 apparatus. 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 identified 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 connection 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 component. In lieu of a symbol, a labeled representation can be used to represent a conventional element, a combination 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 Trademark Office, U.S. Govt. Printing Office, Washington, D.C. 20402 (1989). [FN62]. 37 C.F.R. § 1.84(n).

PLIREF-PATAPP § 5.5.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.5.5 (Cite as: PLIREF-PATAPP s 5.5.5)

PLIREF-PATAPP s 5.5.5 END OF DOCUMENT

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PLIREF-PATAPP § 5.6 How to Write Pat. Application s 5.6 (Cite as: PLIREF-PATAPP s 5.6)

FOR EDUCATIONAL USE ONLY

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 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 END OF DOCUMENT

PLIREF-PATAPP § 5.6.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.6.1 (Cite as: PLIREF-PATAPP s 5.6.1)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 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 drawings and are accepted for the purpose of establishing a filing date, provided they are replaced by a formal drawing 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 photograph. 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 applications are electrophoresis gels, blots, histological tissue cross sections, animals, plants, in vivo imaging, thin layer 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 patent. 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). PLIREF-PATAPP s 5.6.1 END OF DOCUMENT

PLIREF-PATAPP § 5.6.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.6.2 (Cite as: PLIREF-PATAPP s 5.6.2)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.6 Special Forms of Illustration *5-34 § 5.6.2 Colored Drawings and Photographs Colored drawings and colored photographs are generally not accepted in view of the substantial administrative and economic burden associated with printing a utility patent with colored drawings. [FN66] Neither the examiner 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 description 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). PLIREF-PATAPP s 5.6.2 END OF DOCUMENT

PLIREF-PATAPP § 5.6.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 5.6.3 (Cite as: PLIREF-PATAPP s 5.6.3)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 Chapter 5: Drawings § 5.6 Special Forms of Illustration *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). PLIREF-PATAPP s 5.6.3 END OF DOCUMENT

PLIREF-PATAPP § 5.7 How to Write Pat. Application s 5.7 (Cite as: PLIREF-PATAPP s 5.7)

FOR EDUCATIONAL USE ONLY

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16, April 2005 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 specification, 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

PLIREF-PATAPP 5 Exh. 5-1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-1 (Cite as: PLIREF-PATAPP 5 Exh. 5-1)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-1 Exhibit 5-1: Front Views of a Grill Cleaner TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-1 END OF DOCUMENT

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PLIREF-PATAPP 5 Exh. 5-2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-2 (Cite as: PLIREF-PATAPP 5 Exh. 5-2)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-3 Exhibit 5-2: Device for Lifting and Inverting Cylindrical Containers TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-2 END OF DOCUMENT

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PLIREF-PATAPP 5 Exh. 5-3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-3 (Cite as: PLIREF-PATAPP 5 Exh. 5-3)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-5 Exhibit 5-3: Partially Broken Away Front Perspective View TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-3 END OF DOCUMENT

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PLIREF-PATAPP 5 Exh. 5-4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-4 (Cite as: PLIREF-PATAPP 5 Exh. 5-4)

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PLIREF-PATAPP 5 Exh. 5-5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-5 (Cite as: PLIREF-PATAPP 5 Exh. 5-5)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-9 Exhibit 5-5: Exploded Views TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-5 END OF DOCUMENT

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PLIREF-PATAPP 5 Exh. 5-6 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-6 (Cite as: PLIREF-PATAPP 5 Exh. 5-6)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-11 Exhibit 5-6: Plot of Unreacted Carbon TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-6 END OF DOCUMENT

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PLIREF-PATAPP 5 Exh. 5-7 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-7 (Cite as: PLIREF-PATAPP 5 Exh. 5-7)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-13 Exhibit 5-7: Flow Sheet TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-7 END OF DOCUMENT

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PLIREF-PATAPP 5 Exh. 5-8 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-8 (Cite as: PLIREF-PATAPP 5 Exh. 5-8)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-15 Exhibit 5-8: Flowchart TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-8 END OF DOCUMENT

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PLIREF-PATAPP 5 Exh. 5-9 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-9 (Cite as: PLIREF-PATAPP 5 Exh. 5-9)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-17 Exhibit 5-9: Schematic: Procedure for the Metered Addition of Copper Ions in Cheese Production TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE

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

PLIREF-PATAPP 5 Exh. 5-9 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-9 (Cite as: PLIREF-PATAPP 5 Exh. 5-9)

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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 produc2 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). TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-9 END OF DOCUMENT

PLIREF-PATAPP 5 Exh. 5-10 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-10 (Cite as: PLIREF-PATAPP 5 Exh. 5-10)

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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 3,802,400

2/1971 4/1974

Minks .............. 123/599 X Minks ................ 123/335

PLIREF-PATAPP 5 Exh. 5-10 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-10 (Cite as: PLIREF-PATAPP 5 Exh. 5-10)

4,402,298 4,404,952 4,411,245 4,491,122 4,528,970 4,608,953 4,625,689 4,644,927 4,664,080 4,697,560 4,699,115 4,776,311

9/1983 9/1983 10/1983 1/1985 7/1985 9/1986 12/1986 2/1987 5/1987 10/1987 10/1987 10/1988

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Morita ............. 123/618 X Fujimoto et al...... 123/618 X Tanaka et al........ 123/618 X Piteo ............ 123/149 C X Fujimoto et al...... 123/618 X Benvenuti ............ 123/335 Komurasaki ........... 123/335 Okuda .............. 123/618 X Minks ................ 123/335 Umehara .............. 123/335 Terada et al........ 123/335 X 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. TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-10 END OF DOCUMENT

PLIREF-PATAPP 5 Exh. 5-11 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-11 (Cite as: PLIREF-PATAPP 5 Exh. 5-11)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-21 Exhibit 5-11: Complex Chemical Structures TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-11 END OF DOCUMENT

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PLIREF-PATAPP 5 Exh. 5-12 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-12 (Cite as: PLIREF-PATAPP 5 Exh. 5-12)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-23 Exhibit 5-12: Use of an Invention TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-12 END OF DOCUMENT

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PLIREF-PATAPP 5 Exh. 5-13 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-13 (Cite as: PLIREF-PATAPP 5 Exh. 5-13)

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PLIREF-PATAPP 5 Exh. 5-14 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-14 (Cite as: PLIREF-PATAPP 5 Exh. 5-14)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-27 Exhibit 5-14: Use of Lines TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-14 END OF DOCUMENT

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PLIREF-PATAPP 5 Exh. 5-15 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-15 (Cite as: PLIREF-PATAPP 5 Exh. 5-15)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-29 Exhibit 5-15: Circular Shading Lines TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-15 END OF DOCUMENT

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PLIREF-PATAPP 5 Exh. 5-16 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-16 (Cite as: PLIREF-PATAPP 5 Exh. 5-16)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-31 Exhibit 5-16: Oblique Shading Lines TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-16 END OF DOCUMENT

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PLIREF-PATAPP 5 Exh. 5-17 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-17 (Cite as: PLIREF-PATAPP 5 Exh. 5-17)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-33 Exhibit 5-17: Shading Lines for Inclined Surfaces vs Flat Surfaces TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-17 END OF DOCUMENT

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PLIREF-PATAPP 5 Exh. 5-18 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-18 (Cite as: PLIREF-PATAPP 5 Exh. 5-18)

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PLIREF-PATAPP 5 Exh. 5-19 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-19 (Cite as: PLIREF-PATAPP 5 Exh. 5-19)

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PLIREF-PATAPP 5 Exh. 5-20 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-20 (Cite as: PLIREF-PATAPP 5 Exh. 5-20)

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PLIREF-PATAPP 5 Exh. 5-21 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-21 (Cite as: PLIREF-PATAPP 5 Exh. 5-21)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-41 Exhibit 5-21: Worm Gear in Mesh TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-21 END OF DOCUMENT

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PLIREF-PATAPP 5 Exh. 5-22 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-22 (Cite as: PLIREF-PATAPP 5 Exh. 5-22)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-43 Exhibit 5-22: Symbols for Conventional Electrical and Mechanical Elements TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-22 END OF DOCUMENT

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PLIREF-PATAPP 5 Exh. 5-23 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. 5-23 (Cite as: PLIREF-PATAPP 5 Exh. 5-23)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 5: Drawings *5EX-47 Exhibit 5-23: Transmission Electron Micrograph of Fibrous Carbon Chain TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-23 END OF DOCUMENT

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PLIREF-PATAPP § 6.1 How to Write Pat. Application s 6.1 (Cite as: PLIREF-PATAPP s 6.1)

FOR EDUCATIONAL USE ONLY

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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 Chapter 6: Preparing the Claims *6-5 § 6.1 Introduction 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 drafting. Also provided in this chapter is a "Checklist of Possible Claim Deficiencies," Exhibit 6-13. This is a valuable checklist that should be used whenever writing claims. PLIREF-PATAPP s 6.1 END OF DOCUMENT

PLIREF-PATAPP § 6.1.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.1.1 (Cite as: PLIREF-PATAPP s 6.1.1)

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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 Chapter 6: Preparing the Claims § 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 inventor and others. They will become the principal medium of communication with the Patent and Trademark Office. 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 difficulty of prosecution generally. They are likely to perform the same function in the prosecution of corresponding foreign applications. PLIREF-PATAPP s 6.1.1 END OF DOCUMENT

PLIREF-PATAPP § 6.1.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.1.2 (Cite as: PLIREF-PATAPP s 6.1.2)

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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 Chapter 6: Preparing the Claims § 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. Somewhere 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 advisers) and the patent practitioner, but also on the budget available. PLIREF-PATAPP s 6.1.2 END OF DOCUMENT

PLIREF-PATAPP § 6.1.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.1.3 (Cite as: PLIREF-PATAPP s 6.1.3)

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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 Chapter 6: Preparing the Claims § 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 practitioners. 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 remainder 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 being 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 unnecessary 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 specification 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 showing 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 application. 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.

PLIREF-PATAPP § 6.1.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.1.3 (Cite as: PLIREF-PATAPP s 6.1.3)

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PLIREF-PATAPP § 6.2 How to Write Pat. Application s 6.2 (Cite as: PLIREF-PATAPP s 6.2)

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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 Chapter 6: Preparing the Claims *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 END OF DOCUMENT

PLIREF-PATAPP § 6.2.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.2.1 (Cite as: PLIREF-PATAPP s 6.2.1)

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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 Chapter 6: Preparing the Claims § 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 requirement "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 specification" 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 defining 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 diagram (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 contentaddressed 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-

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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" regards 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, subjective 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-

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ject of the invention was to place controls on a console, a claim without that limitation was invalid); see also Reifin 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). PLIREF-PATAPP s 6.2.1 END OF DOCUMENT

PLIREF-PATAPP § 6.2.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.2.2 (Cite as: PLIREF-PATAPP s 6.2.2)

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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 Chapter 6: Preparing the Claims § 6.2 Statutory Requirements for the Claims *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 nonobviousness, respectively. For the claims to be allowed by the Patent Office and to survive litigation, the requirements 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 separate 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 person 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 conditions 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 result 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 agreement. 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

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novelty. If a product sought to be patented occurs naturally, or is inherently present in the prior art, a claim directed to the compound may not be novel under 35 U.S.C. § 102. [FN7.8] For example, if a prior art patent discloses 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). PLIREF-PATAPP s 6.2.2 END OF DOCUMENT

PLIREF-PATAPP § 6.2.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.2.3 (Cite as: PLIREF-PATAPP s 6.2.3)

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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 Chapter 6: Preparing the Claims § 6.2 Statutory Requirements for the Claims *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, manufacture, 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-

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imum possible term. Exactly what are "independent and distinct inventions" is murky at best. For example, the Patent Office interprets the word "and" in "independent and distinct" to mean "or." In the Manual of Patent Examining Procedure, M.P.E.P. section 801 et seq., the Patent Office presents its interpretations of restriction and electionof-species requirements. The following are warning signs of situations where the Patent Office is likely to give a restriction requirement: 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 apparatus. 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 components, 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 restriction 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). PLIREF-PATAPP s 6.2.3 END OF DOCUMENT

PLIREF-PATAPP § 6.3 How to Write Pat. Application s 6.3 (Cite as: PLIREF-PATAPP s 6.3)

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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 Chapter 6: Preparing the Claims *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

PLIREF-PATAPP § 6.3.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.3.1 (Cite as: PLIREF-PATAPP s 6.3.1)

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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 Chapter 6: Preparing the Claims § 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

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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 Chapter 6: Preparing the Claims § 6.3 Claim Form and Language *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 application 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). PLIREF-PATAPP s 6.3.2 END OF DOCUMENT

PLIREF-PATAPP § 6.3.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.3.3 (Cite as: PLIREF-PATAPP s 6.3.3)

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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 Chapter 6: Preparing the Claims § 6.3 Claim Form and Language *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, machine, article of manufacture, or composition of matter). For example, the preamble can be "a machine for making felt," or "a method for making felt." Words such as "apparatus," "device," or "circuit" can be used as alternative 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 compositionof-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 function 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 indirectly 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 . . .

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• 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 heating 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 unclear whether "comprising" refers to the "apparatus" or the "impurities." It is better, therefore, to write "Apparatus 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 limitation 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 prosecution 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 patent 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 optical wave guide and not merely any core/cladding combination. [FN14] Similarly, "Apparatus for shaking articles 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.

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*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 preservers 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 invention. The Patent Office will try to review a patent in its entirety in order to determine whether the inventors intended such language to represent an additional structure limitation or mere introductory language. The Patent Office is likely to give the broadest reasonable interpretation consistent with the rest of the disclosure without reading 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 invention. (3) When the preamble is essential to understand limitations or terms in the claim body, the preamble limits claim scope. (4) When the preamble recites additional structure or steps underscored as important by the specification, 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 invention 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 patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. (9) Statements of intended use or asserted benefits in the preamble may, in rare instances, limit apparatus claims, but only if the applicant clearly and unmistakably relied on those uses or benefits to distinguish 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]

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(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 limitation. 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. Sumitomo 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 Compressors, 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

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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. PLIREF-PATAPP s 6.3.3 END OF DOCUMENT

PLIREF-PATAPP § 6.3.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.3.4 (Cite as: PLIREF-PATAPP s 6.3.4)

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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 Chapter 6: Preparing the Claims § 6.3 Claim Form and Language *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 remainder 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 other 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 includes 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 transitional 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).

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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 recited steps. However, in a composition-of-matter claim, closed claims are infringed by a composition that includes 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 infringement 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 "comprising" 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 basic 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 nonobvious aspects of the invention claimed. However, in Ziegler v. Phillips Petroleum Co., [FN31] the Fifth *6-30 Circuit 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 terminology 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 language 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, infringement 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 determine 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

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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 instead 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 example, 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 elastomer--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).

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[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 . . . consisting of . . . [certain chemicals] . . ." did not exclude from it a kit that also included a spatula); Conoco, Inc. v. Energy & 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

PLIREF-PATAPP § 6.3.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.3.4 (Cite as: PLIREF-PATAPP s 6.3.4)

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). PLIREF-PATAPP s 6.3.4 END OF DOCUMENT

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PLIREF-PATAPP § 6.3.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.3.5 (Cite as: PLIREF-PATAPP s 6.3.5)

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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 Chapter 6: Preparing the Claims § 6.3 Claim Form and Language *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 limited 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

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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 affairs 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 container." The word "said" can be used in place of "the." However, it is recommended that use of "said" be avoided as being too legalistic. The claims may need to be interpreted by a jury or judge, and it is best to avoid stilted or legalistic language. § 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 element 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 subsets 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 connected 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

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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 common 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 example, 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 elements. 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 patent 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 coverage, 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

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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 terminology 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 reciprocating a container." The latter language allows a dependent claim to refer to the means clause by shorthand as the "reciprocating 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 dependent upon the tuning in the polyphase circuit, the oscillating means including means for producing the magnetic 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 function" 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 complexity to the matter, the Federal Circuit has also held that a structural term in the *6-42 functional phrase does not always preclude application of section 112, paragraph 6. [FN47]

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A factor in determining whether a claim limitation qualifies as a "step plus function" limitation is whether the method 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" cannot be construed as a step-plus-function limitation unless there is a showing that the limitation recites no act as distinguished from reciting a function. The difference between a function and an act is that a function says what an element accomplishes 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 section 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 specified 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 paragraph 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 element 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 invention 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

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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, magnets, 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 presented 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 functions 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

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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 because 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 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 describe 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

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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 procedure is to start with any element that is in the proper functional or structural sequence, then describe the element or elements 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 example, 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 combination 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 unduly 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 example, a washing machine associated with a dial telephone is an *6-51 unpatentable aggregation because there is no actual cooperation between the elements recited. On the other hand, a claim that reads: "An improved carburetor in combination 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-

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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, another 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 several. 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 elements 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 patentable *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.

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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 physical 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 linkage. 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 statement "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 structural connection can be broadly defined when the precise form of structural connection is not essential to the patentability 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 example: • 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 operative framework of the whole invention. [FN71] For example, in the shaker apparatus claim of Exhibit 6-1(a), the statement 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

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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 regardless of their relative locations--thus, there is no precise structural relationship between those elements. In that situation, cooperation is expressed solely in functional language. An element can also be recited by a generic name that implicitly 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 subelements. [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 dependent 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 numbers 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-

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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 embodiments 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 described. There need not be any physical relationship between the steps of the method claim. For example, the steps of "heating" 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 simultaneously. 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 elements 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)

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(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 "connector 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" imparts 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 elements 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).

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[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.

PLIREF-PATAPP § 6.3.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.3.5 (Cite as: PLIREF-PATAPP s 6.3.5)

[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). PLIREF-PATAPP s 6.3.5 END OF DOCUMENT

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PLIREF-PATAPP § 6.3.6 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.3.6 (Cite as: PLIREF-PATAPP s 6.3.6)

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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 Chapter 6: Preparing the Claims § 6.3 Claim Form and Language *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 preferred 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 separate 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 originate 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 application 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.

PLIREF-PATAPP § 6.3.6 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.3.6 (Cite as: PLIREF-PATAPP s 6.3.6)

[FN82]. Id. PLIREF-PATAPP s 6.3.6 END OF DOCUMENT

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PLIREF-PATAPP § 6.4 How to Write Pat. Application s 6.4 (Cite as: PLIREF-PATAPP s 6.4)

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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 Chapter 6: Preparing the Claims *6-60 § 6.4 Types of Claims There are two basic types of claims: independent claims and dependent claims (including multiple dependent 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 productby-process claims, are useful in special situations. The Jepson claim is used to claim an improvement to an existing 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

PLIREF-PATAPP § 6.4.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.4.1 (Cite as: PLIREF-PATAPP s 6.4.1)

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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 Chapter 6: Preparing the Claims § 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 language, 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 improper 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.

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§ 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 dependent 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 cannot 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;

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(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 oscillation of the container on the legs. Elements can also be qualified in dependent claims by reciting preferred process conditions or concentrations of ingredients. For example: • A method of separation as recited in claim 2, wherein the separating step comprises: distilling the water solution . . . • The process recited in claim 5, wherein the step of heating comprises heating the solution to a temperature 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 ammonium 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). PLIREF-PATAPP s 6.4.1 END OF DOCUMENT

PLIREF-PATAPP § 6.4.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.4.2 (Cite as: PLIREF-PATAPP s 6.4.2)

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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 Chapter 6: Preparing the Claims § 6.4 Types of Claims *6-65 § 6.4.2 Multiple Dependent Claims Multiple dependent claims incorporate by reference one of several alternative claims. [FN87] A multiple dependent 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 dependent 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.

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Each alternative expressed in a multiple dependent claim is in theory treated as a separate claim by the examiner. Consequently, each alternative link of dependency is supposed to be independently examined for its patentability and subject to rejection. Thus, if claim 3 is dependent upon both claim 1 and claim 2, the subject matter 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). PLIREF-PATAPP s 6.4.2 END OF DOCUMENT

PLIREF-PATAPP § 6.4.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.4.3 (Cite as: PLIREF-PATAPP s 6.4.3)

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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 Chapter 6: Preparing the Claims § 6.4 Types of Claims *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 article, 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 improvement 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 doing 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 Exhibit 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,

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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. Furthermore, 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 elements 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). PLIREF-PATAPP s 6.4.3 END OF DOCUMENT

PLIREF-PATAPP § 6.4.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.4.4 (Cite as: PLIREF-PATAPP s 6.4.4)

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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 Chapter 6: Preparing the Claims § 6.4 Types of Claims *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 expressions may not be available. For example, if it is desirable to claim either chlorine or bromine, no simple generic 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 Markushtype 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 encompass 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 relationship 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 patentable 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, substantial features essential to that utility. [FN105] However, disparate items such as air, earth, fire, and water are not sufficiently related members for a

PLIREF-PATAPP § 6.4.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.4.4 (Cite as: PLIREF-PATAPP s 6.4.4)

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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 primarily 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 composition, 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 aluminum 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 describe 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 selected 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 alternatives 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 materials; 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.

PLIREF-PATAPP § 6.4.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.4.4 (Cite as: PLIREF-PATAPP s 6.4.4)

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§ 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 admission 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 because 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, independent claim. If it is possible to use more than one member of the Markush group at the same time when practicing the invention, 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 compounds. [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 categories. [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.

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[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). [FN107]. In re Harnisch, 631 F.2d 716, 206 U.S.P.Q. 300 (C.C.P.A. 1980). [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). PLIREF-PATAPP s 6.4.4 END OF DOCUMENT

PLIREF-PATAPP § 6.4.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.4.5 (Cite as: PLIREF-PATAPP s 6.4.5)

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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 Chapter 6: Preparing the Claims § 6.4 Types of Claims *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 hydrocarbon 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 limitations 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 structural 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 patentability 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 prepared 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 process, but is infringed only by a product made by the process specified in the claim.

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Traditionally, product-by-process claims were allowed only if the patentable features of the product were incapable of being described in terms of the product's structure or properties and could be described only via a description 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)). PLIREF-PATAPP s 6.4.5 END OF DOCUMENT

PLIREF-PATAPP § 6.4.6 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.4.6 (Cite as: PLIREF-PATAPP s 6.4.6)

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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 Chapter 6: Preparing the Claims § 6.4 Types of Claims *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 material 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 composition 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 patentable 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). PLIREF-PATAPP s 6.4.6 END OF DOCUMENT

PLIREF-PATAPP § 6.5 How to Write Pat. Application s 6.5 (Cite as: PLIREF-PATAPP s 6.5)

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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 Chapter 6: Preparing the Claims *6-79 § 6.5 Strategy of Claim Drafting The fundamental rules for drafting claims were presented in the sections above. Mastery of these fundamental 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

PLIREF-PATAPP § 6.5.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.1 (Cite as: PLIREF-PATAPP s 6.5.1)

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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 Chapter 6: Preparing the Claims § 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 described in the specification, without reading on prior art. Any embodiment of an invention disclosed in the specification 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 invention permits. For example, for a simple article invention, the claims that should be considered are claims directed 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 application. Broad claims must be included to ensure that the application claims the broadest definition of the invention 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, meansplus-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 circumstances, the claims can be invalid for lack of enablement. [FN130.1] If it is questionable whether anything within 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).

PLIREF-PATAPP § 6.5.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.1 (Cite as: PLIREF-PATAPP s 6.5.1)

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PLIREF-PATAPP § 6.5.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.2 (Cite as: PLIREF-PATAPP s 6.5.2)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 recommended 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 elements. 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 invention. 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 temperature 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

PLIREF-PATAPP § 6.5.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.3 (Cite as: PLIREF-PATAPP s 6.5.3)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 invention 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 elements. 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 invention *6-83 has commercial value, competitors will spend great effort to design around the claims of the patent. 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 inventor 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 invented a suitcase that has elements A and B, as well as elements C and D, the broadest claim should not necessarily 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 elements of the mount and did not specify the electronic circuitry. Reversing the district court's holding of invalidity 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 purpose 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

PLIREF-PATAPP § 6.5.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.3 (Cite as: PLIREF-PATAPP s 6.5.3)

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not be a single broad claim, but rather a multitude of claims directed to various patentable subelements or subsystems 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 salient 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 description 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 following 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 invention." [FN133] For example, the preamble of the Jepson-type claim clearly limits the claim by excluding the existing 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 removed 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 limiting 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 transition 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.

PLIREF-PATAPP § 6.5.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.3 (Cite as: PLIREF-PATAPP s 6.5.3)

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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 element 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 contains several words and phrases that unnecessarily limit the claim. For example, the phrase "hollow and rectangular" 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 dieselpowered. Similarly, it is not necessary for the invention to have four legs. The invention works equally well having 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 "container," 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 corresponding 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 conventional 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

PLIREF-PATAPP § 6.5.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.3 (Cite as: PLIREF-PATAPP s 6.5.3)

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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 encompass any of several different forms of oscillating mechanisms. The means clause equally applies to a pistoncylinder 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 "equivalent" 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 decision, the Federal Circuit noted that the word "equivalent" is not to be confused with the "doctrine of equivalents." 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 paragraph 6 of section 112. The Federal Circuit hypothesizes that because of technological advances, an insubstantial variant of an invention may be developed after the patent is granted. If this variant is found not to be a section 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 declare 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 element 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

PLIREF-PATAPP § 6.5.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.3 (Cite as: PLIREF-PATAPP s 6.5.3)

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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" language 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 procedure 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 nonpatentability 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 considers 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 corresponding structure. These challenges are discussed in section 7.5.10.3.3. § 6.5.3.3.2 Using Functional Language

PLIREF-PATAPP § 6.5.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.3 (Cite as: PLIREF-PATAPP s 6.5.3)

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Functional expressions provide an alternative technique of broadly defining an element. In general, functional expressions (other than means clauses) should be used only to describe a function or result that necessarily 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 flexibility 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 deployment [of the parachute] creating a region of high porosity between each of the said panels such that the critical 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 formulation generally does not. Thus the use of the term "detent mechanism" is not to be interpreted as a meansplus-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 elements 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.

PLIREF-PATAPP § 6.5.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.3 (Cite as: PLIREF-PATAPP s 6.5.3)

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[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 Depot, 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 Fuetterer, 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). PLIREF-PATAPP s 6.5.3 END OF DOCUMENT

PLIREF-PATAPP § 6.5.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.4 (Cite as: PLIREF-PATAPP s 6.5.4)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 increases 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 using 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 associated 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, comprising aligning a key structure on a handle connecting structure of said handle on one side of a connection axis but not the other side with a cutaway portion functioning as a keyway on a cartridge connecting 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, mating 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, independent 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 mixture 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 excluded 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-

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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 opposed 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). PLIREF-PATAPP s 6.5.4 END OF DOCUMENT

PLIREF-PATAPP § 6.5.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.5 (Cite as: PLIREF-PATAPP s 6.5.5)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 manufactures 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 potential 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

PLIREF-PATAPP § 6.5.6 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.6 (Cite as: PLIREF-PATAPP s 6.5.6)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 allowable. 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 invented. 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 example, 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. PLIREF-PATAPP s 6.5.6 END OF DOCUMENT

PLIREF-PATAPP § 6.5.7 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.7 (Cite as: PLIREF-PATAPP s 6.5.7)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 environment 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. PLIREF-PATAPP s 6.5.7 END OF DOCUMENT

PLIREF-PATAPP § 6.5.8 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.8 (Cite as: PLIREF-PATAPP s 6.5.8)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 independent claim should be the "parent" of many more than five dependent claims. If there are more than five dependent 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 widgets." 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.

PLIREF-PATAPP § 6.5.8 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.8 (Cite as: PLIREF-PATAPP s 6.5.8)

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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 interpretation 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 example, 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 litigation 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 getting 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 litigation 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

PLIREF-PATAPP § 6.5.8 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.8 (Cite as: PLIREF-PATAPP s 6.5.8)

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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 patentable. 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 application 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 revise 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). PLIREF-PATAPP s 6.5.8 END OF DOCUMENT

PLIREF-PATAPP § 6.5.9 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.9 (Cite as: PLIREF-PATAPP s 6.5.9)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 unassembled 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 particular reagents. Such an invention is typically claimed as a method for detecting pregnancy, or as a chemical composition 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 patent 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 significance, because there needs to be a new and unobvious functional relationship between the printed matter and another portion of the kit. [FN151.2] [FN151.2]. In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004). PLIREF-PATAPP s 6.5.9 END OF DOCUMENT

PLIREF-PATAPP § 6.5.10 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.10 (Cite as: PLIREF-PATAPP s 6.5.10)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 inventor 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 infringement). PLIREF-PATAPP s 6.5.10 END OF DOCUMENT

PLIREF-PATAPP § 6.5.11 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.11 (Cite as: PLIREF-PATAPP s 6.5.11)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 multiplicity [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

PLIREF-PATAPP § 6.5.11 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.11 (Cite as: PLIREF-PATAPP s 6.5.11)

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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. PLIREF-PATAPP s 6.5.11 END OF DOCUMENT

PLIREF-PATAPP § 6.5.12 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.12 (Cite as: PLIREF-PATAPP s 6.5.12)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 difficult 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" envisioning 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]

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The term "substantial" can be a modifier that implies "approximate" rather than "perfect." Thus "substantially 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). PLIREF-PATAPP s 6.5.12 END OF DOCUMENT

PLIREF-PATAPP § 6.5.13 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.13 (Cite as: PLIREF-PATAPP s 6.5.13)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 "heating 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 recommended 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 ingredients 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 rejection, 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 numerical limitations. Moreover, it is recommended that a description of the criticality be included in the specification. [FN162.6]. M.P.E.P. § 2144.05.

PLIREF-PATAPP § 6.5.13 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.13 (Cite as: PLIREF-PATAPP s 6.5.13)

[FN162.7]. Id. PLIREF-PATAPP s 6.5.13 END OF DOCUMENT

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PLIREF-PATAPP § 6.5.14 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.14 (Cite as: PLIREF-PATAPP s 6.5.14)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 contesting a restriction requirement. PLIREF-PATAPP s 6.5.14 END OF DOCUMENT

PLIREF-PATAPP § 6.5.15 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.15 (Cite as: PLIREF-PATAPP s 6.5.15)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 "comprising," 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 chromosome 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 similar language. If the language "comprising at least one" were used instead of "comprising," it may not have been necessary, 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). PLIREF-PATAPP s 6.5.15 END OF DOCUMENT

PLIREF-PATAPP § 6.5.16 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.16 (Cite as: PLIREF-PATAPP s 6.5.16)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 infringement of medical and surgical procedure patents. This section can vitiate the value of patents for medical procedures. 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 contributes 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. PLIREF-PATAPP s 6.5.16 END OF DOCUMENT

PLIREF-PATAPP § 6.5.17 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.17 (Cite as: PLIREF-PATAPP s 6.5.17)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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). PLIREF-PATAPP s 6.5.17 END OF DOCUMENT

PLIREF-PATAPP § 6.5.18 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.18 (Cite as: PLIREF-PATAPP s 6.5.18)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 disclosed 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 circumstances, 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 subsequent application were not presented in the original application, 35 U.S.C. § 121 does not immunize the subsequent 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 explicitly 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 unclaimed 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).

PLIREF-PATAPP § 6.5.18 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.18 (Cite as: PLIREF-PATAPP s 6.5.18)

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PLIREF-PATAPP § 6.5.19 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.19 (Cite as: PLIREF-PATAPP s 6.5.19)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 letter, 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 meansplus-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. PLIREF-PATAPP s 6.5.19 END OF DOCUMENT

PLIREF-PATAPP § 6.5.20 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.20 (Cite as: PLIREF-PATAPP s 6.5.20)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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, issued 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 equivalents. (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 equivalents 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 narrow range for temperature, and the reverse can be present in claim B. With this claim structure, it can be difficult 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 overseas, 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).

PLIREF-PATAPP § 6.5.20 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.20 (Cite as: PLIREF-PATAPP s 6.5.20)

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PLIREF-PATAPP § 6.5.21 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.21 (Cite as: PLIREF-PATAPP s 6.5.21)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 invalid 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). PLIREF-PATAPP s 6.5.21 END OF DOCUMENT

PLIREF-PATAPP § 6.5.22 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.22 (Cite as: PLIREF-PATAPP s 6.5.22)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 alternatives 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 consisting 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). PLIREF-PATAPP s 6.5.22 END OF DOCUMENT

PLIREF-PATAPP § 6.5.23 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.23 (Cite as: PLIREF-PATAPP s 6.5.23)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 dictionary 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. PLIREF-PATAPP s 6.5.23 END OF DOCUMENT

PLIREF-PATAPP § 6.5.24 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.24 (Cite as: PLIREF-PATAPP s 6.5.24)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 "receiving 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 infringement 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 infringement 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). PLIREF-PATAPP s 6.5.24 END OF DOCUMENT

PLIREF-PATAPP § 6.5.25 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.25 (Cite as: PLIREF-PATAPP s 6.5.25)

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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 Chapter 6: Preparing the Claims § 6.5 Strategy of Claim Drafting *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 application, 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 "independent 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 nonobvious) 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 inventions. 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 added 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 example, 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 required, 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

PLIREF-PATAPP § 6.5.25 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.5.25 (Cite as: PLIREF-PATAPP s 6.5.25)

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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. PLIREF-PATAPP s 6.5.25 END OF DOCUMENT

PLIREF-PATAPP § 6.6 How to Write Pat. Application s 6.6 (Cite as: PLIREF-PATAPP s 6.6)

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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 Chapter 6: Preparing the Claims *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 END OF DOCUMENT

PLIREF-PATAPP § 6.6.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.6.1 (Cite as: PLIREF-PATAPP s 6.6.1)

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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 Chapter 6: Preparing the Claims § 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. PLIREF-PATAPP s 6.6.1 END OF DOCUMENT

PLIREF-PATAPP § 6.6.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.6.2 (Cite as: PLIREF-PATAPP s 6.6.2)

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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 Chapter 6: Preparing the Claims § 6.6 Claim Deficiencies--What Not to Do *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 sentence 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. PLIREF-PATAPP s 6.6.2 END OF DOCUMENT

PLIREF-PATAPP § 6.6.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.6.3 (Cite as: PLIREF-PATAPP s 6.6.3)

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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 Chapter 6: Preparing the Claims § 6.6 Claim Deficiencies--What Not to Do *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 previously 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 insolubly 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 subsequent 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 introduced, a qualification describing the material used to fabricate the *6-127 gear should be separately introduced, 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.

PLIREF-PATAPP § 6.6.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.6.3 (Cite as: PLIREF-PATAPP s 6.6.3)

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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 differentiate between similar elements, such as "a base rotating member and a connector rotating member," the same adjective 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 specification 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 technique 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 removed 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). PLIREF-PATAPP s 6.6.3 END OF DOCUMENT

PLIREF-PATAPP § 6.6.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.6.4 (Cite as: PLIREF-PATAPP s 6.6.4)

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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 Chapter 6: Preparing the Claims § 6.6 Claim Deficiencies--What Not to Do *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 connection 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 precise 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 patentee 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 individual 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 diameter" was held sufficiently definite. [FN183] The court held that the dimensions of the filament must be pro-

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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 indefinite 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 operatively 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 because 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 associated 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 indefiniteness. 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," "substantially 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, larger than, smaller than, faster than. *6-133 However, the following terms were held to be indefinite because of inadequate guidance in the specification: "relatively flat," "non-reinforcing condition," "length of the order of 5 mm," "relatively small," "relatively 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 correct version would be discerned by one skilled in the art. [FN190] In Hybritech, a claim referred to minimum "affinity" 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 "affinity" should have been defined in the specifications, because the indefiniteness in the claim increased the expense

PLIREF-PATAPP § 6.6.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.6.4 (Cite as: PLIREF-PATAPP s 6.6.4)

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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 indefiniteness 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 essential 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 indefiniteness. [FN196.1] As discussed in § 6.5.8, when words of degree and relational terms are used, dependent claims with numerical limitations can be used to be sure to include in the application claims that do not create indefiniteness issues. § 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 ambiguous because it is not clear if "which" and "it" refer to the handle, the gear, or the axis. When more than one element 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 repeated 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 "connecting 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

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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 elements (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 indefiniteness 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 objection 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 alternatives such as plastic or glass. Means clauses can also be used to avoid alternative language. Also, if the alternative 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).

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[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).

PLIREF-PATAPP § 6.6.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.6.4 (Cite as: PLIREF-PATAPP s 6.6.4)

[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]. In re Harnisch, 631 F.2d 716, 206 U.S.P.Q. 300 (C.C.P.A. 1980). [FN202.1]. Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001). PLIREF-PATAPP s 6.6.4 END OF DOCUMENT

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PLIREF-PATAPP § 6.6.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.6.5 (Cite as: PLIREF-PATAPP s 6.6.5)

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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 Chapter 6: Preparing the Claims § 6.6 Claim Deficiencies--What Not to Do *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 element. 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 container to shake the articles. 2. A Fourier transform processor comprising incremental means for incrementally generating the Fourier 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 operator [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 apparatus 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 shaking 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."

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§ 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 limited 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 decreasing the animal grease content and adding silk threads to support a claim to the desired result. The functional language 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 Office by replacing the word "adapted" by "sized," such as "sized to fit into the aperture." Other suitable alternatives 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 invention 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).

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[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). PLIREF-PATAPP s 6.6.5 END OF DOCUMENT

PLIREF-PATAPP § 6.6.6 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.6.6 (Cite as: PLIREF-PATAPP s 6.6.6)

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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 Chapter 6: Preparing the Claims § 6.6 Claim Deficiencies--What Not to Do *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 example, 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. PLIREF-PATAPP s 6.6.6 END OF DOCUMENT

PLIREF-PATAPP § 6.6.7 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.6.7 (Cite as: PLIREF-PATAPP s 6.6.7)

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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 Chapter 6: Preparing the Claims § 6.6 Claim Deficiencies--What Not to Do *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 requirements 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 remove 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 disclosure 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 trademark 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).

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[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. PLIREF-PATAPP s 6.6.7 END OF DOCUMENT

PLIREF-PATAPP § 6.6.8 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.6.8 (Cite as: PLIREF-PATAPP s 6.6.8)

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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 Chapter 6: Preparing the Claims § 6.6 Claim Deficiencies--What Not to Do *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 invention 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. PLIREF-PATAPP s 6.6.8 END OF DOCUMENT

PLIREF-PATAPP § 6.6.9 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.6.9 (Cite as: PLIREF-PATAPP s 6.6.9)

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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 Chapter 6: Preparing the Claims § 6.6 Claim Deficiencies--What Not to Do *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 anticipation 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 unobstructed. 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 limitations. 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 invention 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-

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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. PLIREF-PATAPP s 6.6.9 END OF DOCUMENT

PLIREF-PATAPP § 6.6.10 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.6.10 (Cite as: PLIREF-PATAPP s 6.6.10)

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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 Chapter 6: Preparing the Claims § 6.6 Claim Deficiencies--What Not to Do *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). PLIREF-PATAPP s 6.6.10 END OF DOCUMENT

PLIREF-PATAPP § 6.7 How to Write Pat. Application s 6.7 (Cite as: PLIREF-PATAPP s 6.7)

FOR EDUCATIONAL USE ONLY

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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 Chapter 6: Preparing the Claims *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 How to Write Pat. Application 6 Exh. 6-1(a) (Publication page references are not available for this document.)

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(a) (Preamble) (Transition) (Body)

What is claimed is:

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 Exhibit 6-10. PLIREF-PATAPP 6 Exh. 6-1(A) END OF DOCUMENT

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

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(b) (Preamble) (Transition) (Body)

What is claimed is:

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

PLIREF-PATAPP 6 Exh. 6-2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-2 (Cite as: PLIREF-PATAPP 6 Exh. 6-2)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 6: Preparing the Claims *6EX-3 Exhibit 6-2: Proper and Improper Cooperation Among Elements of a Claim (a) Proper Cooperation TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE (b) Improper Cooperation TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE END OF DOCUMENT

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PLIREF-PATAPP 6 Exh. 6-3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-3 (Cite as: PLIREF-PATAPP 6 Exh. 6-3)

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PLIREF-PATAPP 6 Exh. 6-4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-4 (Cite as: PLIREF-PATAPP 6 Exh. 6-4)

1. 2. 3.

A widget, comprising... The widget of claim 1 further comprising... The widget of claim 2, wherein...

PROPER

IMPROPER PROPER PROPER

5. 6. 7.

The widget according to either of claims 2 or 3, further comprising... The widget of either claims 3 or 4, wherein... The widget of claim 4, wherein... The widget according to claim 3, wherein...

PLIREF-PATAPP 6 Exh. 6-4 END OF DOCUMENT

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PLIREF-PATAPP 6 Exh. 6-5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-5 (Publication page references are not available for this document.)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 6: Preparing the Claims [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). PLIREF-PATAPP 6 Exh. 6-5 END OF DOCUMENT

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

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 6: Preparing the Claims [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). PLIREF-PATAPP 6 Exh. 6-6 END OF DOCUMENT

PLIREF-PATAPP 6 Exh. 6-7 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-7 (Cite as: PLIREF-PATAPP 6 Exh. 6-7)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 6: Preparing the Claims *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 comprises: 0.5 to 1 gram per liter of boric acid. PLIREF-PATAPP 6 Exh. 6-7 END OF DOCUMENT

PLIREF-PATAPP 6 Exh. 6-8 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-8 (Cite as: PLIREF-PATAPP 6 Exh. 6-8)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 6: Preparing the Claims *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. PLIREF-PATAPP 6 Exh. 6-8 END OF DOCUMENT

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PLIREF-PATAPP 6 Exh. 6-9 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-9 (Cite as: PLIREF-PATAPP 6 Exh. 6-9)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 6: Preparing the Claims *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]. PLIREF-PATAPP 6 Exh. 6-9 END OF DOCUMENT

PLIREF-PATAPP 6 Exh. 6-10 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-10 (Cite as: PLIREF-PATAPP 6 Exh. 6-10)

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PLIREF-PATAPP 6 Exh. 6-11 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-11 (Publication page references are not available for this document.)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 6: Preparing the Claims 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 oscillation 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). PLIREF-PATAPP 6 Exh. 6-11 END OF DOCUMENT

PLIREF-PATAPP 6 Exh. 6-12 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-12 (Publication page references are not available for this document.)

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PLIREF-PATAPP 6 Exh. 6-13 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-13 (Cite as: PLIREF-PATAPP 6 Exh. 6-13)

Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 6: Preparing the Claims *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)

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PLIREF-PATAPP 6 Exh. 6-13 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-13 (Cite as: PLIREF-PATAPP 6 Exh. 6-13)

[ ] 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) PLIREF-PATAPP 6 Exh. 6-13 END OF DOCUMENT

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PLIREF-PATAPP 6 Exh. 6-14 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-14 (Cite as: PLIREF-PATAPP 6 Exh. 6-14)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 6: Preparing the Claims *6EX-27 Exhibit 6-14: Example of Poor Claim Drafting TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE *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 combination 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 reciprocating agitator comprising a brush. These and other objects will appear upon reading the following specification 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 invention 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

PLIREF-PATAPP 6 Exh. 6-14 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-14 (Cite as: PLIREF-PATAPP 6 Exh. 6-14)

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passageway 3, and an exhaust outlet 4 to which is detachably connected a dust bag 5. A motor casing 6 is positioned 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 covering undergoing cleaning. Within the nozzle 1 of the cleaner and extending thereacross is a rotary agitator which, in its general appearance, differs but slightly from a common and well known type. This agitator comprises a large diameter cylindrical body 13 on the surface of which are mounted helically-extending rigid beater elements 14, 14 which extend 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 designated by the reference characters 22, 22 and have a function which will be apparent from the following description. 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 axis 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 comprise 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 permitting the brush a limited range of movement transversely of the agitator mouth, that is, parallel to the longitudinal axis of the agitator itself. To make use of this permissible movement of the brushes 26, 26 in order to obtain 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 correct 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 upper 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.

PLIREF-PATAPP 6 Exh. 6-14 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-14 (Cite as: PLIREF-PATAPP 6 Exh. 6-14)

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In the operation of a suction cleaner constructed in accordance with the present invention, the suction-creating 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 pulleys 15 and 9, the latter carried by the motor shaft. The beating elements 14, 14 upon the agitator function to violently 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 rotating agitator and, through extending below the nozzle lip, contact the surface covering which is positioned adjacent 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 carried 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 removed it is then possible to pivot each brush-holding cover 29 on its supporting pin 30, a recess 32 being conveniently 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 forward 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 rotate. Said nozzle being further provided with a rear lip, a supporting frame for the agitator pivotally mounted 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 recited in the claim to produce suction. See § 6.3.2.

PLIREF-PATAPP 6 Exh. 6-14 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-14 (Cite as: PLIREF-PATAPP 6 Exh. 6-14)

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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 language without supporting structure." The "adapted to" phrase attempts to imply the mounting of the brush element (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 including 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 object 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 conventional 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 recitation 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 additional 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.

PLIREF-PATAPP 6 Exh. 6-14 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-14 (Cite as: PLIREF-PATAPP 6 Exh. 6-14)

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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. PLIREF-PATAPP 6 Exh. 6-14 END OF DOCUMENT

PLIREF-PATAPP 6 Exh. 6-15 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-15 (Cite as: PLIREF-PATAPP 6 Exh. 6-15)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9, December 2001 Chapter 6: Preparing the Claims *6EX-37 Exhibit 6-15: Example of Poor Claim Drafting TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE *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 accompanying 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

PLIREF-PATAPP 6 Exh. 6-15 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-15 (Cite as: PLIREF-PATAPP 6 Exh. 6-15)

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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 eliminates 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 effectively 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.

PLIREF-PATAPP 6 Exh. 6-15 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-15 (Cite as: PLIREF-PATAPP 6 Exh. 6-15)

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*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 invention," as defined in the specification. In particular, there is no specific description of the main point of the invention, 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 "surplusage." 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-

PLIREF-PATAPP 6 Exh. 6-15 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-15 (Cite as: PLIREF-PATAPP 6 Exh. 6-15)

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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, elements 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 feature of the *6EX-44 invention specified in the claims. Also, this is not described in the excerpts from the specification 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 "aggregation," 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 because 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 conventional 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. Dependent method claims should add method steps or further define *6EX-45 method steps. Also, apparatus limitations 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

PLIREF-PATAPP 6 Exh. 6-15 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. 6-15 (Cite as: PLIREF-PATAPP 6 Exh. 6-15)

been held not "to particularly point out and distinctly claim" the invention. See § 6.2.1. PLIREF-PATAPP 6 Exh. 6-15 END OF DOCUMENT

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PLIREF-PATAPP § 7.1 How to Write Pat. Application s 7.1 (Cite as: PLIREF-PATAPP s 7.1)

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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 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" aspects of writing the specification, this chapter presents the legal requirements that must be followed. PLIREF-PATAPP s 7.1 END OF DOCUMENT

PLIREF-PATAPP § 7.1.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.1.1 (Cite as: PLIREF-PATAPP s 7.1.1)

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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 Chapter 7: Writing the Specification § 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 specification. 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 disclosed. 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 understanding 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. PLIREF-PATAPP s 7.1.1 END OF DOCUMENT

PLIREF-PATAPP § 7.1.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.1.2 (Cite as: PLIREF-PATAPP s 7.1.2)

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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 Chapter 7: Writing the Specification § 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 believing they were getting a premixed drink rather than a post-mixed drink is useful, because it provides some identifiable 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 utility for the invention. The specification 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. [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

PLIREF-PATAPP § 7.1.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.1.2 (Cite as: PLIREF-PATAPP s 7.1.2)

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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 inventions, they are applicable to all inventions, *7-9 and thus are discussed here. [FN9] According to the Patent Office, 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 ordinary skill in the art in view of the disclosure and any other evidence of record (for example, test data, affidavits or declarations from experts in the art, patents or printed publications) that is probative of the applicant's assertions. See below for a definition of "credible" utility. 4. The requirement that there be a specific and substantial utility excludes "throw-away," "insubstantial," 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 polynucleotide whose use is disclosed simply as a "gene probe" or "chromosome marker" would not be considered 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 constitute 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 disease 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

PLIREF-PATAPP § 7.1.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.1.2 (Cite as: PLIREF-PATAPP s 7.1.2)

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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 invention 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 satisfied 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 .

PLIREF-PATAPP § 7.1.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.1.2 (Cite as: PLIREF-PATAPP s 7.1.2)

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[FN9]. Application of these principles to biotechnology inventions can be found in chapter 14. [FN10]. Synopsis of Application of .

the

Revised

Utility

Guidelines,

available

[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). PLIREF-PATAPP s 7.1.2 END OF DOCUMENT

PLIREF-PATAPP § 7.2 How to Write Pat. Application s 7.2 (Cite as: PLIREF-PATAPP s 7.2)

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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 Chapter 7: Writing the Specification *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 invented 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 description 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 specification as of the filing date. [FN14] Another description requirement is associated with 35 U.S.C. § 112, ¶ 6, which allows use of meansplus-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 adequate 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 satisfies the written description requirement, namely: 1. Examples;

PLIREF-PATAPP § 7.2 How to Write Pat. Application s 7.2 (Cite as: PLIREF-PATAPP s 7.2)

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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 audiocassette 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 sufficiently 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 directed 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 producing 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 invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession 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 permit a person skilled in the art to clearly recognize that applicant had possession of the claimed invention. Actual reduction to practice of a biological material may be shown by specifically describing a deposit 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 characteristics 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

PLIREF-PATAPP § 7.2 How to Write Pat. Application s 7.2 (Cite as: PLIREF-PATAPP s 7.2)

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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 conventional 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 invention 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 requirement. 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 conventional. *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 description of a representative number of species by actual reduction practice, reduction to drawings, or by disclosure 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 described 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

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"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 within 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 compression" 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); Default 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]. In re Smith, 481 F.2d 910, 178 U.S.P.Q. 620 (C.C.P.A. 1973). [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).

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[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 Description Guidelines, available at . [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 satisfy the enablement requirement rather than the written description requirement. PLIREF-PATAPP s 7.2 END OF DOCUMENT

PLIREF-PATAPP § 7.3.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.3.1 (Cite as: PLIREF-PATAPP s 7.3.1)

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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 Chapter 7: Writing the Specification § 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 enablement 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). PLIREF-PATAPP s 7.3.1 END OF DOCUMENT

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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 Chapter 7: Writing the Specification § 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 minutiae that can unduly lengthen an application. Contrarily, sufficient "minutiae" need to be included to allow a reasonable 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 disclosure 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 infringement 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 encompasses 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 concise specification, it is important to keep the future reader in mind and remember to include sufficient informa-

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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 software 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 patent application for a batch data processor, the inventor did not include the entire computer *7-25 program necessary 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 heating 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 disclosure 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 important 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 specification, the inventor cannot require someone skilled in the relevant art to engage in undue experimentation to practice the invention.

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§ 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. Whether 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 becomes 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, attempted 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 understand 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 include 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 technique 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 experimentation 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 complicated computer program that was critical to the claimed invention. The inventors claimed a numerical control system for machine tools that required a computer program that could control different tools at the same time. No

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information about the program was disclosed, except its trade name, and there was evidence that a skilled programmer 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-deposit 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 enabled 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 human 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 specification cannot enable only a fraction of the claimed subject matter and require undue experimentation to produce the other claimed versions of the invention. [FN54] Therefore, when writing the specification, it is important 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 enabled by a specification that employed only one species in the working examples and mentioned only nine genera. [FN55] An example of a case where the claims were overly broad in relation to the description of the invention involved 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,

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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 specification 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 structure. 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 invalidated 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, particularly 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

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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 experimentation. [FN65] § 7.3.2.9 The Enablement Requirement Does Not Extend to Technology That Arises After the Time of Filing 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. Chesapeake 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).

PLIREF-PATAPP § 7.3.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.3.2 (Cite as: PLIREF-PATAPP s 7.3.2)

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[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). [FN51]. United States v. Telectronics, Inc., 857 F.2d 778, 8 U.S.P.Q.2d 1217 (Fed. Cir. 1988). [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]. United States v. Telectronics, Inc., 857 F.2d 778, 8 U.S.P.Q.2d 1217 (Fed. Cir. 1988). [FN58.1]. Chiron Corp. v. Genentech, Inc., 363 F.3d 1247 (Fed. Cir. 2004). [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 requirement than the written description requirement. [FN59]. R. FABER, LANDIS ON MECHANICS OF PATENT CLAIM DRAFTING 148-50 (3d ed. 1990).

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[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 conduct); Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 66 U.S.P.Q.2d 1341 (Fed. Cir. 2003); Novo Nordisk 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). [FN65.1]. Chiron Corp. v. Genentech, Inc., 363 F.3d 1247 (Fed. Cir. 2004). END OF DOCUMENT

PLIREF-PATAPP § 7.4.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.4.1 (Cite as: PLIREF-PATAPP s 7.4.1)

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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 Chapter 7: Writing the Specification § 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, identifying what should be disclosed as a best mode is both a subjective and a factual determination, based on an assessment of the inventor's state of mind at the time *7-35 the patent application was filed and whether the inventor 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 intentionally 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" requirement. It is extremely rare that an examiner rejects an application because of failure to disclose the best mode. Usually 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 requirement 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. PLIREF-PATAPP s 7.4.1 END OF DOCUMENT

PLIREF-PATAPP § 7.4.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.4.2 (Cite as: PLIREF-PATAPP s 7.4.2)

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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 Chapter 7: Writing the Specification § 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 disclosed about it. The following discussion provides some guidelines. *7-36[ FN71] However, when in doubt, follow 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 Elements 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 synthesis 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 interchangeable with those of an M-16 rifle. Since the application did not claim that the parts were interchangeable with an M-16 rifle, the patent was valid. [FN76]

PLIREF-PATAPP § 7.4.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.4.2 (Cite as: PLIREF-PATAPP s 7.4.2)

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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 invention even though the software was not part of the claims. The specific source code need not be described if creation 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 discovers 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 experimentation 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 patent will be upheld if at the time of filing the inventor discloses the best known information about desired characteristics of the compound. For example, a patent for an explosive was upheld when the inventor had not decided on the exact final formulation at the time of filing, but did include examples that demonstrated the characteristics that led to an effective 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 appreciate 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 inventor cannot simply rely on a particular whim, but must seriously consider all possible modes before deciding

PLIREF-PATAPP § 7.4.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.4.2 (Cite as: PLIREF-PATAPP s 7.4.2)

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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 enablement 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 inventor 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 determine 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 upheld. [FN89] In a case involving the expression of a cloned gene, the Federal Circuit held that it was sufficient

PLIREF-PATAPP § 7.4.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.4.2 (Cite as: PLIREF-PATAPP s 7.4.2)

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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 required 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 produced by expression of a cloned gene, the inventor was not required to deposit the cells used for the best expression 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 depository. The court disagreed and held that where all of the materials needed to obtain the antibody are commercially 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 undue 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 manufacturer 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 properties 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 operate 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

PLIREF-PATAPP § 7.4.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.4.2 (Cite as: PLIREF-PATAPP s 7.4.2)

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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 number of possibilities if it is clear to someone skilled in the art which is the best mode. [FN98] For example, a patent was upheld where the inventor claimed the expression of a cloned gene into protein, and the application described ten different cell types that could be used for expression. The Federal Circuit upheld *7-46 the patent because 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" requirement 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 schedule. [FN100] If too many possibilities are present, the "best mode" requirement can be held to be unsatisfied due to concealment. [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. Instead, 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 obtaining 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 producing a ceramic foam filter consisted of a ceramic slurry of known ingredients and proportions, the specification 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]

PLIREF-PATAPP § 7.4.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.4.2 (Cite as: PLIREF-PATAPP s 7.4.2)

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Another way to conceal the best mode is to fully describe an alternate method while insufficiently disclosing 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 invention *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 invalidated 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 invention 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 compound, 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 requirement." Thus, a patent directed to a particular circuit for a video display did not violate the best mode requirement when the patent application made no reference to a video display as originally filed, but only generally de-

PLIREF-PATAPP § 7.4.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.4.2 (Cite as: PLIREF-PATAPP s 7.4.2)

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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).

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[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). [FN88]. Dale Elec., Inc. v. R.C.L. Elec., Inc., 488 F.2d 382, 180 U.S.P.Q. 225 (1st Cir. 1973). [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. [FN92]. Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 18 U.S.P.Q.2d 1001 (Fed. Cir. 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). [FN101]. Dale Elec., Inc. v. R.C.L. Elec., Inc., 488 F.2d 382, 180 U.S.P.Q. 225 (1st Cir. 1973). [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).

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[FN109]. Randomex, Inc. v. Scopus Corp., 849 F.2d 585, 7 U.S.P.Q.2d 1050 (Fed. Cir. 1988). [FN110]. White Consol. Indus., Inc. v. Vega Servo-Control, Inc., 713 F.2d 788, 218 U.S.P.Q. 961 (Fed. Cir. 1983). [FN111]. Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 16 U.S.P.Q.2d 1033 (Fed. Cir. 1990). [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

PLIREF-PATAPP § 7.5.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.5.1 (Cite as: PLIREF-PATAPP s 7.5.1)

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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 Chapter 7: Writing the Specification § 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 satisfies 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 challenged, 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 understand. 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.

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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. Before 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 computer 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 "allowed" 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. Therefore, when writing the specification, it is important to avoid referring to anything as "the invention" because, until 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 invention." *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 technologies is presented in the chapters describing preparing applications for specific technologies. It is recommended that those chapters be referred to whenever appropriate. PLIREF-PATAPP s 7.5.1 END OF DOCUMENT

PLIREF-PATAPP § 7.5.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.5.2 (Cite as: PLIREF-PATAPP s 7.5.2)

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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 Chapter 7: Writing the Specification § 7.5 Writing the Specification *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 follows 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. PLIREF-PATAPP s 7.5.2 END OF DOCUMENT

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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 Chapter 7: Writing the Specification § 7.5 Writing the Specification *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 descriptive, 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 Manufacturing 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 considered 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, including glass beads, baseballs, and tennis balls. During prosecution, the applicant would want to argue that such references 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 Compositions Containing Ashless Dispersant, [ZDDP], Metal Detergent and a Copper Compound." The Federal Circuit believed that in view of the title and the use of the word "containing," only a final composition that contained all of the ingredients of the claims infringed the patent, and not a composition resulting from mere inclusion 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 subliminally 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"

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"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). PLIREF-PATAPP s 7.5.3 END OF DOCUMENT

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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 Chapter 7: Writing the Specification § 7.5 Writing the Specification *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 following 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 specification 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 specification 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 inventor identification, including the spelling of the inventors' names. However, whenever the inventorship is changed during prosecution, it will be necessary to amend the specification 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 application, but leave them off the final version. PLIREF-PATAPP s 7.5.4 END OF DOCUMENT

PLIREF-PATAPP § 7.5.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.5.5 (Cite as: PLIREF-PATAPP s 7.5.5)

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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 Chapter 7: Writing the Specification § 7.5 Writing the Specification *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 applications. 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 application. Any application that is cross-referenced must be sufficiently described to identify the application. Identification 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, inventor, 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 disclosure 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 Office 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 English 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

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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 incorporates 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 application 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 presented 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 actual 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). PLIREF-PATAPP s 7.5.5 END OF DOCUMENT

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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 Chapter 7: Writing the Specification § 7.5 Writing the Specification *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 finalized 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). PLIREF-PATAPP s 7.5.6 END OF DOCUMENT

PLIREF-PATAPP § 7.5.7 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.5.7 (Cite as: PLIREF-PATAPP s 7.5.7)

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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 Chapter 7: Writing the Specification § 7.5 Writing the Specification *7-61 § 7.5.7 Background 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 invention may not be known until long after the application is written. Ordinarily, it is safer to use the title "Background," 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 under 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]

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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 patents of another person." Mere comparisons with the prior art are not considered to be disparaging, per se. Accordingly, if it is not possible to say anything disparaging about any specific prior art reference, why say anything 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 prior 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 liability 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 client 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 bioengineered human insulin, the Background section should include a description of the problems of diabetes, including the health consequences, the expense of obtaining insulin from animals, and the side effects of using insulin 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-

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ages: __________________. If the prior art does not suffer from at least one disadvantage, there is no real commercial need for the invention. 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 references may not qualify as prior art. For example, the references may include non-analogous art or art the applicant can swear behind. An admission that the references are "prior art" may create difficulty during prosecution. The final paragraph of the Background section should be a punchline that summarizes the need for the invention. 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 temperature 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). PLIREF-PATAPP s 7.5.7 END OF DOCUMENT

PLIREF-PATAPP § 7.5.8 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.5.8 (Cite as: PLIREF-PATAPP s 7.5.8)

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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 Chapter 7: Writing the Specification § 7.5 Writing the Specification *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 usually 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 Background 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 believe 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 correspondence 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 legalese as possible, so that the nature of the invention can be appreciated. For example, consider a patent with a broadest claim as follows:

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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 Background 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 simultaneously. 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 opportunity 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 section. 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 reason 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 advantages. 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 . . ." Occasionally, 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 person, 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 inventorship is required and the change is from sole to joint or from joint to sole, then the specification would have to be

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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 discussed 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). PLIREF-PATAPP s 7.5.8 END OF DOCUMENT

PLIREF-PATAPP § 7.5.9 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.5.9 (Cite as: PLIREF-PATAPP s 7.5.9)

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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 Chapter 7: Writing the Specification § 7.5 Writing the Specification *7-70 § 7.5.9 Drawings The heading for the Drawings section can be "Drawings" or "Description of the Drawings" or "Brief Description 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 sentence 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 understood 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 features 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 operating position, respectively; . . ."

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§ 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 invention are shown in an application, they should be referred as "versions" or "embodiments" and not separate inventions. 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. PLIREF-PATAPP s 7.5.9 END OF DOCUMENT

PLIREF-PATAPP § 7.5.10 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.5.10 (Cite as: PLIREF-PATAPP s 7.5.10)

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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 Chapter 7: Writing the Specification § 7.5 Writing the Specification *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 "Description 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 Description 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, generally longer than fifteen double-spaced pages, it is recommended that headings be used to assist the reader in following 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

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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 interprets 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 appropriate subject for a definition in the specification. This is particularly true if the application will be filed overseas, 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 hierarchial" 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 invention 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 using 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

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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: TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE After introducing the generic formula, then the options for each of R , R , R , and R are described fol1 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 inventions, 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 challenging tasks for the practitioner. The best place to start, of course, is with the inventor, because usually the inventor 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, including 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 function of a "means for" element in the claims, because if such structure *7-78 is not disclosed, the claim can be invalid. [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

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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 recited 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 specification 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 meansplus-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 structures 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 unsuccessful, 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, reference 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."

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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 invention that are not yet realized. A good introduction to the advantages of the invention is: "The previously described 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 advantage 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 disclosed. [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 mechanical 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 versions 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 detailed 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 experiments 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 information 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 following: • This example shows how to manufacture compound A using compounds B and C as starting materials. • 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 water solubility.

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Simulated or predicted test results and prophetic examples (paper examples) are permitted in patent applications. 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 actually 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 inventor 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 possible 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 terminology during a Markman hearing. One technique to provide an alternate approach to an invention is to use generic terminology when describing an element of the invention, followed by identification of the specific species used. For example, when referring 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 alternatively 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 alternatives 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 attorneys 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 specification and which are open to public inspection with this specification, and the contents of all such papers

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and documents are incorporated herein by reference. All the features disclosed in this specification (including any accompanying claims, abstract, and drawings) may be replaced by alternative features serving the same, equivalent or similar purpose, unless expressly 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 description. § 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 undesirable 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." Accordingly, 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

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allowable over prior art teaching a process at a temperature outside that range. Another reason to provide a reason 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 language: *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 water at a temperature up to 99° C. 4. The process of claim 1 wherein the step of dissolving the salt comprises dissolving the salt in the water at a temperature of from 1° C to 99° C. 5. The process of claim 1 wherein the step of dissolving the salt comprises dissolving the salt in the water at a temperature of from 60° C to 70° C. 6. 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 60° C. 7. The process of claim 1 wherein the step of dissolving the salt comprises dissolving the salt in the water 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 narrow 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 accurate, 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 described 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

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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 example, a patent that claimed a computerized control system for machine tools was held invalid because it neglected 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 indicated 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, particularly information known to those skilled in the art. A common use for incorporation by reference is for chemical 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 "essential 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)."

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If incorporated material is considered to be "essential," the only materials that can be incorporated by reference 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. application 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 priority is claimed can be used only upon a showing that the material which is going to be incorporated in the application 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 material 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 meansplus-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 incorporated 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 "incorporated herein by reference." If the original application does not indicate an intent to incorporate material by reference, 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 referenced patent or application that are being incorporated therein should be identified. [FN134]

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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 reference. [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 described 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 following 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 previous 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 invention is prepared. Otherwise, different elements can inadvertently receive the same reference number, or the

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same element can receive multiple reference numbers. Another advantage of this approach is that the same element 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 drawing 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 elements. 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 referred 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 anything 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

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A common mistake in describing an invention is to use spatial directions that do not universally apply. Consider, 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 arbitrary. 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 inventor are "absolutely" sure that an absolute is correct. If a feature of the invention is described as being absolutely 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 powerful writing. Thus, use of the language "reaction of ingredient A with ingredient B results in production of chemical 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 example, 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 discloses material for which copyright or mask protection has previously been established. The conditions for the notice are as follows:

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1. The copyright or mask work notice must be placed adjacent to the copyrighted or mask work material. *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 amendment 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 enclosed 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 nontext 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 permissible, 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 accompanying 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. Digital 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 "substantially," which has numerous ordinary meanings including language of approximation and language of magnitude). [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

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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 ). [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); Chiuminatta 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); Default 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 connecting 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 reliability 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 finding 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).

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[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). [FN131]. White Consol. Indus., Inc. v. Vega Servo-Control, Inc., 713 F.2d 788, 218 U.S.P.Q. 961 (Fed. Cir. 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); Default 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, Sheffield 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). PLIREF-PATAPP s 7.5.10 END OF DOCUMENT

PLIREF-PATAPP § 7.5.11 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.5.11 (Cite as: PLIREF-PATAPP s 7.5.11)

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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 Chapter 7: Writing the Specification § 7.5 Writing the Specification *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 paragraph with 50 to 150 words. The Patent Office will reject the Abstract if it exceeds 150 words, because that exceeds 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 compound 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;

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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 using 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); HillROM 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 process by which courts construe claims in infringement actions). PLIREF-PATAPP s 7.5.11 END OF DOCUMENT

PLIREF-PATAPP § 7.6 How to Write Pat. Application s 7.6 (Cite as: PLIREF-PATAPP s 7.6)

FOR EDUCATIONAL USE ONLY

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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 Chapter 7: Writing the Specification *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 embodiment 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 operable 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 manner. For example, use language such as "preferred benefits" or "preferred advantages." PLIREF-PATAPP s 7.6 END OF DOCUMENT