Practical Tips for Improving Claim Drafting in Patents

JIPA SEMINAR Washington, DC October 29, 2013 Washington, DC October 29, 2013 JIPA SEMINAR Session: Claim Drafting for Electrical and Mechanical Patents (Exercise)

Introduction Brief introduction about me: - 2nd year patent attorney at WHDA. - Worked at LG Electronics in Korea as an engineer before entering the legal field. Now that Mr. Schertler has completed a lecture on claim drafting for Electrical/Mechanical Patents, it is time to practice. All examples are edited from published U.S. Patent Applications and Office Actions. I will give you 1-2 minutes to read the claims, and we will discuss the sample answers afterward. JIPA 2013 2

Exercise 1 1. A wireless communication apparatus for in-flight entertainment system in an aircraft cabin comprising: wireless communication apparatus conversion adapters. 2. The wireless communication apparatus according to claim 1, wherein: to be connected to a portable data device owned by each passenger also have a function as a PCI card. the wireless communication apparatus conversion adapters JIPA 2013 3

Sample Answer 1: Acronym Claim objection: Claim 2 uses the acronym PCI without first clearly indicating what the acronym is intended to represent. Should be amended to: 2. (Currently amended): The wireless communication apparatus according to claim 1, wherein: connected to a portable data device owned by each passenger also have a function as a PCI (Peripheral Component Interconnect) card. the wireless communication apparatus conversion adapters to be JIPA 2013 4

Exercise 2 12. A method of converting liquid to a form which comprises passing the form through a cylindrical constriction to increase the velocity of the form passing therethrough, Note: specification only discloses a process of converting a form to a liquid. JIPA 2013 5

Sample Answer 2: Lack of Support in the Specification MPEP 2163 I.: 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. There should be clear and unambiguous support in the detailed description for all words and phrases in the claim, so that anyone can understand how the claim reads on the description. In addition, all structures described in the claim must be illustrated in the drawing. JIPA 2013 6

Exercise 3 1. A golf ball washer comprising a housing, a first body of absorbent material fixed to a portion of the housing, and a second body of absorbent material, wherein both the first and second bodies are rotated. JIPA 2013 7

Sample Answer 3: Lack of Support in the Claim The recitation is inaccurate and inconsistent with the preceding recitations in the claim, since the first body has previously been defined as being fixed. Therefore, only the second body can rotate. JIPA 2013 8

Exercise 4 6. A bombardment-resistant coating for structures which comprises an inner layer of shock resistant material and a thick external layer formed of asphaltic concrete containing mineral fibers. JIPA 2013 9

Sample Answer 4: Indefinite; Unbased Comparative ( thick ) MPEP 2173.05(b): The fact that claim language, including terms of degree, may not be precise, does not automatically render the claim indefinite under 35 U.S.C. 112 2. Acceptability of the claim language depends on whether one of ordinary skill in the art would understand what is claimed, in light of the specification. If there is no explanation of such a term in the specification, delete this term. Trying to define it after filing may introduce new matter. If its meaning can be shown to be known in the art, Applicant can retain it. JIPA 2013 10

Exercise 5 1. A Mach-Zehnder optical modulator comprising: a join-and-branch portion; two output light waveguides connected with the join-and-branch portion; arm electrodes; light intensity detection electrodes respectively provided on the two output light waveguides; and a leakage suppression electrode provided between the arm electrodes and the light intensity detection electrodes. 6. The Mach-Zehnder optical modulator according to claim 1, wherein the light intensity detection electrodes and the leakage suppression electrodes are connected to a common voltage source. JIPA 2013 11

Sample Answer 5: Lack of Antecedent Claim objection: Claim 6 recites the limitation leakage suppression electrodes . There is insufficient antecedent basis for multiple electrodes in the claim. Should be amended to: 6. (Currently amended): The Mach-Zehnder optical modulator according to claim 1, wherein the light intensity detection electrodes and the leakage suppression electrodes electrode are connected to a common voltage source. JIPA 2013 12

Exercise 6 1. A pattern recognition equipment that matches feature parameters extracted from an input signal against a finite state machine of a tree structure in which a recognition pattern is represented by a path leading from a root to a plurality of leaf nodes to adopt the most likely state transition path reaching the leaf node as a recognition result, comprising: reachable leaf nodes from the each state so that the reward increases in value with an increasing number of leaf nodes reachable. means for calculating a reward according to a number of JIPA 2013 13

Sample Answer 6: Patentable Weight Examiner s assertion in the Office Action: The above underlined sentence (so that the reward increases in value with an increasing number of leaf nodes reachable) is not an element of the claimed equipment but the intended results. In other words, the underlined sentence is not a positively recited limitation and does not carry very much patentable weight. Could be amended to: 1. (Currently amended): means for calculating a reward according to a number of reachable leaf nodes from the each state so that the reward increases in value with an increasing number of leaf nodes reachable, wherein the reward increases in value with an increasing number of leaf nodes reachable. But JIPA 2013 14

Sample Answer 6: Patentable Weight (cont d) Would a wherein clause be given a patentable weight? Short answer: case-by-case. Yes, if a wherein clause limited a process claim where the clause gave meaning and purpose to the manipulative steps. Griffin v. Bertina, 283 F.3d 1209 (Fed. Cir. 2002). Yes, if a whereby clause states a condition that is material to patentability. Hoffer v. Microsoft Corp., 405 F.3d 1326 (Fed. Cir. 2005). No, if a whereby clause simply expresses the intended result of a process step positively recited. Minton v. Nat l Assn n of Securities Dealers, Inc., 336 F.3d 1373 (Fed. Cir. 2003). JIPA 2013 15

Exercise 7 1. A computer-readable recording medium which records a program causing a computer, which processes transparent images each expressed by transparent superimposition of a target and a background different from the target, to realize: transparent images each including the target at a plurality of times; a transparent image acquiring function of acquiring the JIPA 2013 16

Sample Answer 7: Non-Statutory Claim Claim rejection: Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Could be amended to: 1. (Currently amended): A non-transitory computer-readable recording medium which records a program causing a computer, which processes transparent images each expressed by transparent superimposition of a target and a background different from the target, to realize: images each including the target at a plurality of times; a transparent image acquiring function of acquiring the transparent JIPA 2013 17

Sample Answer 7: Non-Statutory Claim (cont d) Then, what is non-transitory computer readable medium?: - Dictionary definition: long-lived and enduring. - Floppy disks, CD, DVD, etc. In re Nuijten (500 F.3d 1346, Fed. Cir. 2007): A signal per se is not patentable subject matter under 35 U.S.C. 101. Guidelines for Subject Matter Eligibility of Computer readable media (1351 OG 212, Feb. 12, 2010): A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. 101 by adding the limitation non-transitory to the claim. JIPA 2013 18

Exercise 8 [Before Amendments] 1-5. (Original) 6-9. (Canceled) [After Amendment: Applicants would like to add 4 new claims] 1-5. (Original) 6-9. (New) JIPA 2013 19

Sample Answer 8: New Claims MPEP 714 II. C.: The new claims must be numbered consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not) in compliance with 37 CFR 1.126. Claims should be renumbered as follows: 1-5. (Original) 6-9. (Canceled) 10-13. (New) Please remember that no amendment shall introduce new matter into the disclosure of the invention (35 U.S.C. 132 and MPEP 2163.06). JIPA 2013 20

Exercise 9 3. A golf ball washer comprising means attached to a shaft for manually rotating a rotatable body. 6. A washer as defined in claim 3, wherein the means for rotating said rotatable body is omitted. JIPA 2013 21

Sample Answer 9: Dependent Claim Error A dependent claim is not proper if it expressly omits a previously recited element. An essential characteristic of a proper dependent claim is that it shall include every element of the claim from which it depends. JIPA 2013 22

Exercise 10 1. An ultrasonic diagnostic apparatus comprising: heart based on a reception signal obtained by transmission and reception of the ultrasound to and from the heart; an image forming unit which forms an ultrasonic image of the JIPA 2013 23

Sample Answer 10: Means-Plus- Function Claims (35 U.S.C. 112 6) Claim interpretation under 35 U.S.C. 112 6: Claim limitation image forming unit has been interpreted under 35 U.S.C. 112, sixth paragraph, because it uses a non-structural term unit coupled with functional language which forms an ultrasonic image ... without reciting sufficient structure to achieve the function. Furthermore, the nonstructural term is not preceded by a structural modifier. Since this claim limitation invokes 35 U.S.C. 112, sixth paragraph, claim 1 and all those depending therefrom are interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof. A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112, sixth paragraph limitation: a digital scan converter, as disclosed in par. [0029] of the published specification. JIPA 2013 24

Sample Answer 10: Means-Plus- Function Claims (35 U.S.C. 112 6) 3 options: - Applicant can accept the Examiner s interpretation. - Applicant can argue that the interpretation under 35 U.S.C. 112 6 is improper. - Applicant can amend the claims so that 35 U.S.C. 112 6 is not invoked. For this case, Applicant can amend claim 1 so that 35 U.S.C. 112 6 is not invoked: 1. (Currently amended): An ultrasonic diagnostic apparatus comprising: ultrasonic image of the heart based on a reception signal obtained by transmission and reception of the ultrasound to and from the heart; an image forming unit which forms processor configured to form an JIPA 2013 25

Questions? Please contact: Sung-Hoon Kim (skim@whda.com) William M. Schertler (wschertler@whda.com) 26