Claim Drafting Tip #8

When drafting claims, link one element to another. The Court of Appeals for the Federal Circuit has overturned attempts to reject claims as being anticipated over a single reference (under section 102 of Title 35 U.S.C.), when the reference includes all of the elements but fails to show them “arranged as claimed.”[1] By failing to arrange the claim elements within the claim, the claim becomes susceptible to rejection for anticipation.

Some background is necessary to understand the importance of drafting the claims to survive challenge by the patent office. The patent office adopts a “broadest reasonable interpretation” of the claims, and there has been a tendency for the examiners to push this “BRI” standard to make it easier to reject the claims. An overly broad interpretation under the BRI standard makes its difficult to overcome a rejection without further limiting the claims. Prosecution history estoppel limits the scope of equivalence available to the claim elements under the Doctrine of Equivalents, which is a doctrine intended to prevent an infringer from avoiding infringement by making merely insubstantial changes to a device that would otherwise infringe the claims of a patent. In patent litigation, the Doctrine of Equivalents levels the playing field, creating uncertainty in any legal theory that a device does not infringe the claims asserted by the patentee, but further limiting the claims gives rise to a presumption of no scope of equivalence (under prosecution history estoppel) for claim elements that are limited for reasons of patentability. Forcing a more reasonable interpretation of the claims gives rise to this presumption if the claim is further limited by amendment of the claims. The drafter of claims should consider the importance of the Doctrine of Equivalents and the effect of prosecution history estoppel on the scope of equivalence, when drafting claims.

By properly linking the claim elements, the claim drafter makes it more difficult for the patent office to overly broadly interpret the claims under the broadest reasonable interpretation standard, because in order to reject the claims as anticipated by a cited reference (under section 102 of Title 35 U.S.C.), the examiner must show not only that the elements are disclosed in the reference but also the reference must disclose the very same arrangement of the elements as recited in the claims. The alternative for the examiner is to reject the claims as obviousness over one or more cited references under Section 103 of Title 35 U.S.C. However, obviousness can be successfully overcome by arguments or declarations, characterizing the level of ordinary skill in the art, lack of any motivation to combine teachings, or other secondary considerations of nonobviousness, such as failures, unexpected advantages, surprising results, synergy, commercial success and the like, which tend to show that the invention is nonobvious in the particular art. A new arrangement of known components that achieves unexpected advantages over the prior art, and is not merely one of a finite number of possible arrangements obvious to a person having ordinary skill in the art, is likely patentable.

A claim to a four-legged chair may comprise a seat, four legs and a backrest. This list of claim elements is incomplete, if the seat, four legs and backrest are not defined and joined to each other in some way. For example, the seat may be defined as having a surface for accommodating a user’s buttocks, and the legs may have a first end coupled to the seat and an opposite end, such that the four legs extend from the seat, and when the opposite ends of the legs are in contact with the ground, the legs support the seat above the ground. The backrest may be coupled to the seat or the legs, the backrest extending operatively in relation to the surface for accommodating a user’s buttocks such that, when a user’s buttocks is seated on the surface of the seat, a portion of the user’s back is capable of resting against the backrest. To make clear that the human is not a part of the claim, the user’s buttocks and the portion of the user’s back should be introduced in the preamble of the claim. For example, the claim may recite the following independent claim:

1. A chair for accommodating a buttocks of a person, a user of the chair, and for supporting a portion of the user’s back, comprising:
a seat having a surface for accommodating the user’s buttocks;
four legs, each of the four legs having a first end coupled to the seat in spaced relation to the other of the four legs and an opposite end, such that the four legs extend from the seat, and when the opposite ends of the four legs are supported on the ground, the four legs support the seat above the ground; and
a backrest coupled to the seat or the legs, the backrest extending operatively in relation to the surface for accommodating the user’s buttocks such that, when a user’s buttocks is seated on the surface of the seat, the portion of the user’s back is capable of resting against the backrest.

This example functionally arranges the claim elements, without unnecessarily limiting the structure of the invention. Nevertheless, the arrangement of the elements introduces functional limitations on the elements and an arrangement of the elements that might prevent an overly broad interpretation of the elements from being rejected as anticipated by a single reference cited by the examiner.

It is important to capture the nature of the invention in the broadest claims, without unduly limiting the scope of the invention, while preventing an overly broad interpretation of the claim during prosecution of the application before the patent office. Careful attention to the way that one element is linked with the others goes a long way in achieving these objectives and might allow a claim to issue that would otherwise require a limiting amendment, giving rise to a presumption of no scope of equivalence for a claim element.

[1] Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008)