Chapter X: Claims
Section Y: Introduction to Claims
Introduction to Claims
35 USC 112 requires that the applicant shall particularly point out and distinctly claim the subject matter which he or she regards as his or her invention. The portion of the application in which he or she does this forms the claim or claims. The claims are in many respects the most important part of the application because it is the claims that define the invention for which protection is granted.
35 USC 112 states[1]:
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 specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.
Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Like most statutes, Title 35 is not very specific with respect to the details regarding implementation of its directives. Notice that 35 USC 112 only states that a claim is necessary, but does not provide any information on the structure or format of the claim or claims. It is, therefore, necessary to turn to Title 37 of the Code of Federal Regulations to expand upon what is actually required. As you can probably imagine, there are a number of sections within Title 37 of the CFR that relate to various aspects of claim drafting and format. The basic section that deals with claim requirements is 37 CFR 1.75, which states:
(a) The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.
(b) More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.
(c) One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim ("multiple dependent claim" ) shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purposes under § 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes, also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have paid therein the fee set forth in § 1.16(d). Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered.
(d)
(1) The claim or claims must conform to the invention as set forth in the remainder of the specification and the 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 may be ascertainable by reference to the description (See § 1.58(a).)
(2) See §§ 1.141 to 1.146 as to claiming different inventions in one application.
(e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order, (1) a preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known, (2) a phrase such as "wherein the improvement comprises," and (3) those elements, steps and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
(f) If there are several claims, they shall be numbered consecutively in Arabic numerals.
(g) The least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.
(h) The claim or claims must commence on a separate sheet.
(i) Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.
Original Claims
As will be discussed more fully when we address the contents of a patent application, it is necessary to include a full and complete description of the invention in the initial filing with the Patent Office. Rearranging of an application is always allowed, but addition of new material is never allowed. In determining the breadth of what is covered by the initial filing the applicant may rely not only on the description contained in the specification and any drawings filed but also on the originally filed claims.
Where subject matter not shown in any drawing, nor described in the description, is claimed in the application as filed, the original claim or claims constitutes a clear disclosure of this subject matter. If this happens, the claim or claims originally filed fulfill the requirement that the initial application be complete. The claim should not be attacked either by objection or rejection because this subject matter is lacking in the drawing and description. It is the drawing and description that are defective, not the claim. Notice, however, that the drawings and description are not fatally defective because the original filing did contain a legally satisfactory description of the invention. In other words, the modification of the drawings and/or description would not add new matter because the matter was already contained within the initial filing (i.e., in the claims). In this situation, that which was contained only in the claims can then, through amendment, be rearranged within the application to provide the appropriate support in the specification for the claims as written.
To be sure, the originally filed claims need not be exhaustive. Through prosecution claims can be amended and even added, provided of course the initial disclosure is broad enough to cover the added or amended matter. Therefore, when drafting a patent application it is good practice to spend time drafting quality claims. Do not simply rely upon your ability to add claims later. Include enough claims with the initial filing to cover the invention.
Form of Claims
The claim or claims must commence on a separate sheet and should appear after the detailed description of the invention. While there is no set statutory form for claims, the present practice in the Patent Office is to insist that each claim must be the object of a sentence starting with "I claim," "The invention claimed is", or the substantial equivalent thereof. If, at the time of allowance, the quoted terminology is not present, it is inserted by the Technology Center (TC) technical support staff.
Each claim must begin with a capital letter and end with a period. Periods may not be used elsewhere in the claims except for abbreviations. What this means is that each claim can be only one sentence. This is true regardless of how tortured the sentence structure is and how incomprehensible the sentence may be to those not trained in patent claim drafting. Where a claim sets forth a plurality of elements or steps, each element or step of the claim can be separated by a line indentation. Additionally, there may be plural indentations to further segregate subcombinations or related steps. These and other visual methods of making a claim more readable are encouraged by the Patent Office and are good practice.
Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. The reference characters, however, should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. The use of reference characters is to be considered as having no effect on the scope of the claims. Typically, most patent attorneys will not use reference characters in the claims themselves. While, as described above, it is acceptable Office procedure to employ reference characters within the claims, claims that do employ reference characters can become even more burdensome to read, edit and understand.
Claim Arrangement & Numbering
Claims should preferably be arranged in order of scope so that the first claim presented is the broadest (i.e., least restrictive). All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable. Where separate species are claimed, the claims of like species should be grouped together where possible. Similarly, product and process claims should be separately grouped. Such arrangements are for the purpose of facilitating classification and examination. Failure to arrange claims in the desired sequence is certainly not fatal. The examiner who sees an inappropriate arrangement will issue an objection. Objections are issued as to form and do not relate to the substantive patentability requirements.[2]
Independent Claims
An independent claim is a stand alone claim that contains a preamble and all of the elements necessary to define the invention. There are three types of independent claims: (1) a claim for a “thing,” such as a composition, machine, apparatus or device; (2) a claim for a method of making a “thing”; and (3) a claim for a method of using a “thing.” Below are several examples of each type of independent claim.
A Claim for a “Thing”
Below is the primary illustration in US Patent No. 6,009,555, titled “Multiple component headgear system.”
Claim 1, which is the only independent claim in this patent, reads:
1. A headgear apparatus to be worn by a user comprising:
a headband member for fitting about a user's head, said headband member having a frontal portion adapted to substantially extend across the forehead of a user;
a visor member removably secured to said frontal portion of said headband, said visor member independently extendable from said headband; and
an eye shield member removably secured to said frontal portion of said headband, said eye shield member being of a configuration adapted to extend across a portion of a user's face in frontal blocking relationship to a user's eyes.
A Claim for a Method of Making a “Thing”
US Patent No. 6,635,133, titled “Method for making a multilayered golf ball” provides a good example of a method of making. Claim 1 reads:
1. A method of making a ball, comprising:
a) forming an inner sphere by forming an outer shell with a fluid mass center;
b) forming a plurality of core parts from elastomeric material;
c) arranging and adhesively joining the core parts around the inner sphere with a flexible adhesive and then crosslinking the core parts to each other by compressing them together at an elevated temperature to form a substantially spherical core;
d) molding a cover around the assembled core, wherein the elastomeric material has a cohesive strength and the adhesive has an adhesive strength that is stronger than the cohesive strength.
A Claim for a Method of Using a “Thing”
Assume for a second you would like to be an infringer, perhaps just because infringing can be fun, who knows? What you would do is create a sign something like pictured above. Then in a crazy, rebel rousing, impulsive act you run down to the nearest gas station. Before you begin fueling a car you would place this sign on the windshield so that it would obstruct the drivers view. Then when you are finished fueling the vehicle you would remove the sign and thereby signal to the driver through this subtle non-verbal communication that it is safe to proceed. Doing all those things makes you an infringer of US Patent No. 6,631,577, and apparently makes gas stations everywhere safer. This invention will prevent those who suddenly and unexpectedly take off with the hose still inserted into the gas tank. Below are illustrations taken from US Patent No. 6,631,577, titled “Vehicle fueling safety system and method.”
In any event, claim 14 of this patent provides a good example of a method of using:
14. A vehicle fueling safety method for precluding inadvertent premature departure of a vehicle from a fueling station as a result of an action by an inattentive or distracted driver of the vehicle during an ongoing fueling operation at the fueling station, the vehicle fueling safety method comprising the steps of:
providing a visual warning indicator for being viewed by the driver as a reminder of the ongoing fueling operation;
selectively placing the visual warning indicator in a line-of-sight of the driver when the driver is in a driving position in the vehicle during the ongoing fueling operation; and
selectively removing the visual indicator from the line-of-sight upon completion of the ongoing fueling operation.
Below is an illustration taken from US Patent No. 6,398,028, titled “Pizza delivery system and method,” which contains another good example of a method of using.
Claim 6 of the ‘028 patent reads:
6. A method of delivering a pizza, the steps of the method comprising:
providing a box having a bottom, a perimeter wall extending upwardly from a perimeter edge of said bottom of said box, and a top pivotally coupled to said perimeter wall such that said top is pivotable between and open and a closed position;
providing a piece of tape engageable to said box;
placing a pizza into said box;
closing said top of said box;
engaging said piece of tape to said box such that said piece of tape extends between said top and said perimeter wall when said top is in said closed position whereby said piece of tape prevents pivoting said top of said box into said open position without breaking said piece of tape whereby said piece of tape is adapted for indicating to a buyer of the pizza that the box has not been opened since said piece of tape was engaged to said box;
delivering said pizza to the buyer;
providing indicia on said piece of tape for identifying said piece of tape;
reporting said indicia to the buyer when the buyer orders said pizza; and
permitting the buyer to view said indicia on said piece of tape for identifying for facilitating confirmation that said pizza conforms to specifications given by the buyer when the buyer ordered said pizza.
Dependent Claims
37 CFR 1.75(c) explains that One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Claims that refer back to and further limit another claim are called dependent claims. Dependent claims incorporate by reference each of the limitations of the claim from which they depend. Because dependent claims incorporate by reference each of the limitations of the claims from which they depend they are easy to write. Additionally, dependent claims are used in every application because additional fees are charged by the Patent Office if the application has more than three independent claims. Therefore, because of ease in drafting and because of economic considerations, most patent applications have few independent claims and many dependent claims.
It is important to remember that dependent claims must further limit the claim from which they depend. This is most frequently accomplished by claiming a more narrow range (where appropriate) or by the addition of more elements. Claims written in dependent form that broaden the scope of the claim from which they depend are considered to be in improper dependent form, which should result in an objection.
Below are several examples of dependent claims.
Examples of Proper Dependent Form
Returning to US Patent No. 6,009,555, claims 2 through 9 are good examples of proper dependent form. These claims read:
2. A headgear apparatus as recited in claim 1, wherein said eye shield member is adjustable with respect to said headband member.
3. A headgear apparatus as recited in claim 1, wherein said visor member and said eye shield member are secured to said frontal portion of said headband member by a set of rivets.
4. A headgear apparatus as recited in claim 1, wherein said headband member is formed from neoprene fabric.
5. A headgear apparatus as recited in claim 1, wherein a continuous bead of sealant material is selectively placed on said headband member.
6. A headgear apparatus as recited in claim 1, wherein said visor member has a lightwave transmissive portion and an opaque portion.