BLOGS: The High-Tech Patent Agent: A View from the Trenches in Silicon Valley

Friday, September 29, 2017, 8:33 AM

Negative Limitations in a Patent Claim – Broad or Narrow?

Negative limitations, using words like “not”, “without”, or “excluding” in a patent claim, understandably make patent practitioners and clients nervous.  Generally, positive limitations are preferred and negative limitations are to be avoided.  Why is that?

Scope of positive claim limitations affects the claim in the same manner as it does the limitation itself.  A narrow claim limitation, positively stated, makes the claim as a whole narrower than a broader claim limitation affecting the same subject matter.  A broad claim limitation, as you might expect, makes the claim as a whole broader than a narrower claim limitation.

Negative limitations behave the opposite of this.  Excluding a narrow amount of subject matter makes the claim broader than excluding a broader amount of the same subject matter.  Excluding a broader amount of subject matter narrows the claim more so than excluding a narrower amount.

Claim scope analysis is vital when crafting a claim.  The above characteristics of negative claim limitations suggest a test for claim scope when using negative claim limitations.  Is what is being excluded narrow or broad?  Is what remains, i.e., what is still included in the claim, narrow or broad?  If the answers to these tests conform to the above characteristics of negative claim limitations, that suggests analysis is correct, and the patent practitioner now has a solid understanding of the scope of the claim and can proceed with writing more claims, etc.  If the answers to these tests are inconsistent with the above characteristics of negative claim limitations, or are counter to the intended scope of the claims, this suggests the claims should be rewritten or reworked, as there is a strong possibility of confusion for claim interpretation, or argument over claim scope.  That is an undesirable situation for patent prosecution and possible later tests in courts.

Whenever negative claim limitations are contemplated, it is wise to consider whether there are positive claim limitations that can more safely express a desired claim scope.  Instead of a claim limitation of “without requiring X”, would “independent of whether X is present” work?  Instead of “A and not B”, would a “B-less A” or “non-B A” do the job?  

A narrower, more extensive set of positive limitations could make it clear that the excluded element is not used.  Another solid tactic is to use well-written definitions in the specification to show that A is not equivalent to B, so that when the claims recite A, it is clear that the claims exclude B.  Claim amendment during prosecution to include part of this definition in the claim could progress the examination without needing negative limitations in the claim.

Sometimes, during patent prosecution, an examiner will turn up some close art, and the patent practitioner may need to carve around the art by amending the claims to include negative claim limitations specifically excluding some aspect of the close art.  An explicit limitation of “excluding X” or “without performing/executing/adding/etc. Y”, when the art shows X or Y, might well suffice, provided the above cautions are observed about scope.  But it could also be worthwhile to try writing variations on this, using positive limitations or positive ways of stating negative limitations, as outlined above, and then test each of these to see which one is most suitable.  One could even try amending each of three independent claims using a different tactic, to preserve breadth of scope.

Exercise caution with negative claim limitations.
Try using positive limitations with various wordings instead of negative claim limitations.
Definitions in the specification can be brought into the claims to exclude an interpretation or possibility.
Amending multiple independent claims using different tactics can preserve breadth of scope.
Test scope of various possibilities for claim limitations.  Scope, as a whole, for negative claim limitations behaves opposite that of positive claim limitations, i.e., the narrower the exclusion, the broader the claim.

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Friday, August 11, 2017, 8:35 AM

Testing a Patent Claim against an Abstract Idea, in Response to 35 USC §101 Rejection

USPTO (United States Patent and Trademark Office) rejection of a patent claim, alleging the claim is not significantly more than an abstract idea under 35 USC §101, is a frequent and often frustrating occurrence during patent examination of claims in any technology that involves computers, controllers or processors.  Here is another useful strategy the patent practitioner can use in writing a response to an Office action, or an appeal brief.

Suppose a USPTO examiner has written a rejection that the claims amount to nothing more than the abstract idea of a mathematical calculation (or other abstract idea) plus the instructions to implement it on a generic computer, and are therefore directed to patent ineligible subject matter.  The patent practitioner could get into a back-and-forth argument with the examiner about whether or not claim limitations are significantly more than the abstract idea, wasting multiple cycles of examination because examiners can be very difficult to convince of this.  One promising approach is to argue that the claims are directed to a specific technological solution to a specific technological problem, as has been successful in the courts.  But, even this may not be convincing, if argued in the abstract, because, after all, we are dealing with abstract ideas to begin with, and it is all too easy for an examiner to dismiss an abstract argument as “not convincing”.

A concrete, bright line test can be constructed, which may sway an examiner (or appeal board, if the rejection is appealed).  Articulate a specific technological problem that the claims solve or are directed to solving.  Analyze the claim and cite some of the important claim limitations that are not present in the alleged abstract idea, and explain the significance of these claim limitations in terms of the technological problem and technological solution.  Then, compare the abstract idea, for example “mathematical calculations” in and of itself, without the claim limitations that extend beyond the abstract idea, to the technological problem.  Does the abstract idea in and of itself, with or without a generic computer, solve the technological problem?  Of course not.  Does the abstract idea plus the claim limitations that extend beyond the abstract idea, solve the technological problem.  Yes, the combination of abstract idea plus claim limitations that extend beyond the abstract idea does solve the technological problem.  This means the claim as a whole amounts to significantly more than the abstract idea plus the instruction to implement the abstract idea on a generic computer.  This bright line test makes it very difficult for an examiner to prove that the claim is nothing more than an abstract idea implemented on a computer.  The examiner would either have to prove that the additional claim limitations are mere field of use limitations, which assertion is readily refuted through the above analysis, or that the claim as a whole does not solve the specific technological problem, which you have just demonstrated it does.  This carefully constructed argument passes logical rigor, and any attempts in further patent examination to defeat it can be addressed on a point by point basis with factually based logic.

Concrete statement of a specific technological problem that the claims solve or address lays a strong foundation for arguments of patent eligible subject matter under 35 USC §101.
Testing to see whether the abstract idea in a claim rejection solves the specific technological problem provides a basis for comparison with the claim as a whole.
Testing to see whether the abstract idea in combination with the claim limitations that are beyond the abstract idea solves the specific technological problem provides a comparison for the claim as a whole versus the abstract idea.
Once the abstract idea has been compared with the claim as a whole, in light of the specific technological problem, the conclusion can be drawn that the claim is significantly more than the abstract idea with instructions to implement it on a generic computer.

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Monday, May 1, 2017, 8:45 AM

Inherency and Patent Claims

A patent claim can be rejected for inherency over a reference.  An inherent property cannot be claimed, even if that property was not known at the time a prior art composition was disclosed or prior art invention was made.  But, what happens if a new invention makes use of an inherent property, and this new use is not known by others?  This is where the art of claims drafting comes in.
Claim limitations directed to an action that makes use of this inherent property could be argued as novel or unobvious, if the known reference(s) only disclose the original article, composition, process that results in a compound or article, etc., but do not disclose the new action that makes use of the inherent property.  Relatedly, claim limitations directed to a structure that makes use of an inherent property could be argued as novel or unobvious, if the known reference(s) explicitly or implicitly suggest the inherent property, but do not explicitly show or suggest a structure comparable to the claimed structure.

Whether arguments about novelty or unobviousness in such a case would be successful is going to depend on the inherent property itself and what can be deduced from the inherent property, as far as usage of the inherent property and structures that make use of the inherent property.
Here are a couple of generic, fictional examples.  Suppose it is inherent that the two different types of memory shown in a reference include fast memory and slow memory.  Even if the reference doesn’t explicitly say one of the types of memory is faster than the other, a claim to some structure that has fast and slow memory is readily rejected as inherent over this reference.  But, a claim to using the faster memory for some new function and using the slower memory for some other new function, or the structural combination of these functions and the memories, might be novel or unobvious over this reference, depending on what those functions are and whether how they make use of the faster and slower memories could be directly inferred from the reference(s).

Suppose it is inherent that some article or compound has some types of behavior or characteristics over various temperature ranges.  A claim to the article or compound exhibiting these types of behavior or characteristics at the various temperature ranges is readily rejected, even if the cited prior art reference(s) do not explicitly disclose these behaviors or characteristics, and they are later determined, because the article or compound itself is known in the prior art.  But, a claim to some use of one of these behaviors or characteristics of the article or compound at some specified temperature or temperature range, or a structure that makes use of one or more of these behaviors or characteristics over some temperature range might be novel or unobvious, if the prior art does not teach or suggest the use or the structure.

Keep in mind, apparatus claims can be directed to a structure, or a structure that performs a function (i.e., functional claiming), method claims are directed to a series or sequence of steps (or actions), and the associated claim limitations are what are compared to cited references during patent examination.  Writing the claim limitations, or amending them during examination, so that the claim limitations exhibit more than just the inherent characteristic(s) of a known material or known structure, for example by showing a new structure or new combination of steps or actions, is a strong strategy to take when faced with possible rejection over inherent characteristics.

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Monday, February 13, 2017, 8:36 AM

Recursive and Iterative Algorithms in Patent Claims

Some inventions operate in a recursive or iterative manner.  This could be so of a machine that repeats actions or functions on a single article or to produce multiple articles, or operates on data.

Software-based inventions, with computer programming sometimes execute recursive or iterative algorithms.  Even so, claiming for the invention might not need to invoke recursion or iteration, as the point of novelty might involve a characteristic or a function itself, and the repetition of that series of actions or functions is a necessary for the novelty.  In that case, it may suffice to mention recursion or iteration in a dependent claim.  Or not, if it really isn’t needed.

But, what if the recursion or iteration is important to the point of novelty?  How could that be represented in a claim, without the claim becoming overly complex and wordy, or worse yet, the claim resembling a software listing?  Below is a handy template for a claim that can be written compactly and elegantly, focusing on the recursion or iteration.

[Independent claim] 1.  A method of [performing a function], performed by [a machine, possibly a computer-based machine], the method comprising:
[some preliminary action, introducing input(s)];
proceeding, starting with the [input(s) or initial value(s) or state of the machine], to [perform a function] in an iterative or recursive manner, with [some intermediate parameter value or machine state] acting as a [initial value or state of the machine] for a next iteration, until [some condition is satisfied or a result is produced];
[some later action, making use of the result, output or end-of-iteration or recursion final state of the machine].

Claims written with the above template capture initial values, iterative values and results in the context of an iterative algorithm tied to a machine (which could be a computing machine of some sort, for computer-based algorithms).  Variations on this can be written for tangible media and for system claims.  This approach should pass muster for arguments and subject matter patent eligibility under 35 USC §101, because the algorithm and presumably tangible result are inextricably tied to the machine that is executing the algorithm, so that a computer is not a mere field of use limitation.

– Decide whether recursion or iteration is important to the novelty of an invention.
– If so, figure out what are the inputs, outputs, intermediate values or states that should be captured in the claim.
– The template provided above can be adapted for method, tangible media and system claims involving recursion or iteration as part of the novel functionality of a mechanical or computing machine.
– Emphasis on a useful result, and the necessity of the machine operating in recursion or iteration, in the claim is a vital part of this strategy.

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Thursday, September 15, 2016, 8:50 AM

Rapid Patent Application Claims Drafting Technique

Here is a technique for rapidly drafting claims, for a patent application.  This is a brainstorming mechanism that works for one person, or two, or more, and uses a free-form drawing or diagram to both gather words and prompt writing.  Patent claims, after all, are collections of words in a highly stylized format, describing an invention.  Grab a piece of paper, pencil and eraser, or pen.  Or use a whiteboard or a computer application.  While thinking about the invention to be claimed, write down a phrase that is at or near the point of novelty.  Or, write down a few sentences or a paragraph describing the invention.  Get another piece of paper, if necessary, or continue on the same paper.
On the paper, write, optionally with a circle or shape around each one, key words, phrases, actions that are part of or essential to the invention.  Draw lines connecting some of these.  Write words or phrases on some of the lines, in explanation of the connections.

Now it’s time to start writing the claim.  What is the invention?  An article, a system, a method?  Pick one type of claim, and write the preamble to the claim, naming the invention or describing a purpose or function of the invention, using some of the words from the paper.  If actions are involved, what is the actor for a system or method claim?

What are the pieces of the invention, and how do they interact or fit together?  If a method, what are the pieces that are used in the method, and what do they do or what is done to or with them?  Choose some of the words or phrases for the pieces, and some of the words for actions and/or connections.  Put these together into a sentence fragment, and write that down as part of the claim.  Repeat this step, forming other sentence fragments.  It is not necessary at first cut to connect all of the sentence fragments, although sometimes that is the way to proceed.  It is not necessary to arrange the sentence fragments in the final order for the claim, at first, although sometimes that happens.

Connect one sentence fragment and another sentence fragment, with an action or a connection, again using words from the drawing.  Any of the above may prompt adding some more words, lines for connections, or notes on the drawing.  And, that may prompt picking more words for sentence fragments are connections between sentence fragments.  Draw arrows to show rearrangement of phrases, other connections to capture.  Draw arrows to show causes, results, and attach words to these.  When you have enough written out this way, do a more formal draft of the claim using a word processor and computer screen.  Proceed from one independent claim to another and another, or to dependent claims, or back and forth among these.

The process is iterative, free-flowing, dynamic.  There is no one correct way to do this, if any of it helps you write a claim, it’s useful.  Alternatively, you can do all of this in your head, and use the above as a conceptual framework for claims drafting.  Of course, claims refinement should be practiced along the way.  Decide what claim terms, actions, connections etc. should be moved to dependent claims, and which claim terms can be simplified or broadened, as well as which claim terms need to be narrowed or made more specific.  Crosschecking back to client disclosure, original thoughts or notes, to make sure that claiming is on track with best understanding of the invention and client needs is a good process to do more than once.  All part of the art of patenting.

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Tuesday, August 2, 2016, 9:05 AM

A Response to Rejections Under 35 USC §101

By Christopher Hall & Mike Gencarella

Here is an argument we are using in response to rejections under 35 USC §101 that allege the claims are directed to an abstract idea and are patent ineligible.  This is useful in Office action responses, and appeals.

The situation we have seen multiple times is that the Examiner, in an Office action, rejects the claims and cites a small number of the claim elements such as “a processor” “a memory” “a module,” and an alleged abstract idea such as an algorithm or data processing, and states that the claim limitations, considered individually and as a whole, are not significantly more than the abstract idea.

The argument, submitted in a response to the Office action or in an appeal, is that the Examiner and/or the Office action have committed a procedural error, and failed to analyze all of the claim limitations.  The assertion that the claim limitations considered as a whole are not significantly more than the abstract idea is an unsupported allegation, because the claim limitations as a whole have not been considered.  The only claim limitations cited in the rejection are the above-mentioned small number of claim elements, and the remainder of the claim limitations have neither been cited nor analyzed.  Because the Office action has a procedural error, the rejection is improper and invalid, and should be withdrawn.

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Tuesday, May 3, 2016, 9:03 AM

Prior Art and Continuation-in-Part Claims

What are the dates to which prior art must adhere, in examination of claims in a continuation-in-part (CIP) nonprovisional patent application?  Each claim in a CIP, whether independent or dependent, has its own priority date.  Each claim in a CIP that is fully supported in the parent application should be examined in comparison with prior art that has a filing date preceding the filing date of the parent application.  Generally, any claims in a CIP that are not supported in the parent application (i.e., which would have been new material and disallowed in a continuation or divisional application) can be examined in comparison with prior art that has a filing date preceding the filing date of the CIP.  This can get messy if there is a long chain of continuations mixed with one or more CIP applications.  Even the parent application itself can be cited as prior art for any CIP claims not supported in the parent (see, e.g., Dennis Crouch, Patentably-O, “Continuations-in-Part (CIPs) and Priority Claims”, September 7, 2012, and “A Higher Written Description Standard for Negative Claim Limitations?”, September 6, 2012, both writing about Santarus v. Par Pharma (Fed. Cir. 2012), brought to my attention by a colleague, Patent Attorney Reg Ratliff).

It is hypothetically possible that a CIP application, during examination, could have an allowed independent claim supported in the parent application, and a dependent claim not supported in the parent application and rejected with art that is newer than the parent application filing date but older than the CIP application filing date.  This would appear to contradict the common (and usually believed inviolable) situation that when an independent claim is allowed, its dependent claims are almost always automatically allowed (e.g., unless they suffer from an objection or some other, non-art related rejection such as under 35 USC §112).  And, the above is the opposite of the occasionally seen rejected independent claim and allowed dependent claim.  Would this seeming paradox be resolved by moving up the independent claim to have the same priority date as the dependent claim, since the independent claim is inclusive of the dependent claim?  But then, two claim sets, one with just that independent claim, and the other with that independent claim (or a slight variation of it) and the dependent claim supported in the CIP but not supported in the parent application would have two different priority dates for the (relatively) same independent claim.  The single independent claim (or one followed by parent-supported dependent claims) would have the priority date of the parent application, and the variation independent claim with the newer dependent claim would have the priority date of the CIP application.  Another paradox.

This curious situation aside, there are some subtleties worth exploring in terms of claim strategy, and which may prove advantageous towards getting claims allowed, which the following genericized examples elucidate.

Suppose the parent application discloses A, B and C, and prior art preceding the filing date of the parent application only shows A and B in combination, but not the combination of A, B and C.  The CIP discloses and claims a method of using A and B, and discloses variation methods for using A and C, and using A, B and C.  During examination of the CIP, prior art preceding the filing date of the CIP is found showing a (similar enough) method of using A and B, which thus anticipates or makes obvious the present claim.  What are some options for amending and arguing the claims?

A method of using A, B and C, if satisfactory to the client and not shown in cited references might be a good choice for an amended claim.  What happens if a reference showing a method of using A, B and C is cited during examination?  Well, if that reference predates the filing date of the parent application, the amended claim is anticipated (and the parent application is likely at risk).  But, if that reference is later than the filing date of the parent application, albeit predating the filing date of the CIP, there may be some room for argument.  True, the method itself is now shown to predate the filing date of the CIP, but the combination of A, B and C is not shown to predate the filing date of the parent application.  One could argue that, since the combination of A, B and C appears in the parent application and is relied on in the amended claim limitations to show novelty supported by the filing date of the parent application, that the amended claim limitations should have the same priority date as the parent application.  A proper rejection of the amended claim would have to show the combination of A, B and C was known prior to the filing date of the parent application.  Success or failure of the argument may depend on the nature of support for the combination in the parent application in comparison to the claim language in the CIP, especially if negative limitations are involved (see Dennis Crouch, op. cit).

An even stronger argument can be made if a rejection of this amended claim combines multiple references, even if some of them predate the filing date of the parent application.  If these references, singly or in combination, do not show the combination of A, B and C is known prior to the filing date of the parent application, especially if some aspect of the motivation cited in the rejection relies on taking a reference that is after the filing date of the parent application, the argument can be made that these references are not properly combined to show A, B and C prior to the filing date of the parent application.

Alternatively, a method of using A and C might be acceptable to the client, and, if not shown in cited references or generally known, might be a worthwhile claim amendment to pursue.  The client might actually be interested primarily in protecting a method of using A, and most competitors would use A and C because B is more expensive or not as reliable, etc., so this would get useful patent protection for the products the client is actually going to make and sell.  These are just examples, and one could develop others with structures and/or methods to explore how prior art and CIP applications interrelate.  This is all part of the art of patenting.

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