Drafting Mechanical Claims Glenn M. Massina, Esq. RatnerPrestia, PC August 26, 2010

Focus on the “Heart” of the Invention Understand what the inventor believes is the invention What has the inventor previously done? What are the advantages of the new design? Is there more than one inventive feature?

Identify Fundamental Elements Understand scope of the prior art What have competitors previously done? Recommend a patentability search? Defines the potential claim limits – what is the target? Ideas of alternatives – can prior art be used to develop alternative embodiments

Terminology and Interrelationship

Terminology and Interrelationship

Terminology and Interrelationship

Terminology and Interrelationship

Terminology and Interrelationship

Terminology and Interrelationship

Terminology and Interrelationship

Terminology and Interrelationship Don’t rely heavily on means-plus-function claims The scope of equivalents is limited to what is disclosed in the specification and its equivalents Eliminate the term “means” Consider structure “configured to” Consider eliminating the element Instead of “means for joining panel A to housing B” Try “a panel A joined to housing B”

Terminology and Interrelationship Generally, try to eliminate “where as” and “such that” clauses which describe intended use or advantages Patent is not a marketing brochure Statute only requires claimed invention to be novel, non-obvious and have a utility

Claim Review and Revision Draft claims narrowly and then eliminate limitations Is the element necessary for preserving the desired functionality of the invention? Can any element be generalized or broadened in terminology without compromising claim novelty? Is the element necessary for distinguishing the invention over the prior art? Can any elements be combined into fewer, more general elements, without compromising claim novelty?

Claim Review and Revision Eliminating and Combining Elements Suggested language: said bracket including a channel, a saddle and opposed intermediate guides between said channel and said saddle; said bracket adapted for connection to the bicycle frame;

Claim Review and Revision General Rule Claim that is 7 pages typed at Veranda 10 pt. and 1½ line space has limitations that can be eliminated

Proposed Claim: Apparatus for moving materials, said apparatus comprising: a frame having at least one handle portion positioned to be grasped for manipulating said frame, said frame also having leg portions positioned for ground contact to resist movement of said frame with respect to the ground; a body connected to said frame and configured for holding the materials to be moved; and a wheel connected for rotation with respect to said frame to facilitate movement of said frame when said leg portions are not contacting the ground.

Dependent Claims A dependent claim should depend from a claim which includes limitations which the dependent claim modifies Simple example of undesired structure 1. A vehicle. 2. Claim 1, with wheels. 3. Claim 2, with a door. 4. Claim 3, with a sunroof. 5. Claim 4, with a headlight. 6. Claim 5, wherein the headlight is a halogen headlight.

Dependent Claims Simple example of with preferred structure 1. A vehicle. 2. Claim 1, with wheels. 3. Claim 1, with a door. 4. Claim 1, with a sunroof. 5. Claim 1, with a headlight. 6. Claim 5, wherein the headlight is a halogen headlight. OR 6. Claim 1, with a halogen headlight.

Specification Impacts Claim Scope Claim language should be clear from specification Write the specification expansively Try to include at least two embodiments Even if there are not multiple embodiments, try to convey that variations are contemplated Do not exclude alternatives Avoid background describing alternatives as inferior Consider leaving out “objects of the invention” If you include objects, consider softening language, for example, “At least one of the proceeding objects is met, in whole or in part, by the present invention, in which . . .”

Prosecution Impacts Claim Scope Prosecution estoppel Avoid claim piling on – add one limitation at a time, but not cumulatively Original claim rejected A vehicle Amended claim rejected – A vehicle with a motor. Final claim allowed A vehicle with a motor and a headlight.