WEB PATENT NEWS–October, 2002 by Robert M. Hunter, Registered Patent Agent

News about patents, licensing and seed capital sources for inventors and
innovating organizations.

CONTENTS

I. THE NAME OF THE GAME IS CLAIMS – A recent court decision emphasizes
the importance of the wording of patent claims.

II. AVOIDING INADVERTENT LOSS OF CLAIM BREADTH – A checklist to help you
avoid claim-breadth-limiting pitfalls during preparation and prosecution
of patent applications.

III. UNIVERSITY OF HAWAII BUSINESS PLAN COMPETITION – With at least one
UH student on your team, you can compete for for $50,000 in cash prizes.

IV. LINKS – View this newsletter in HTML at the following link:
http://www.webpatent.com/news/news10_02.htm

I. THE NAME OF THE GAME IS CLAIMS

The U.S. Court of Appeals for the Federal Circuit (Federal Circuit) and
U.S. Supreme Court have signaled to inventors the importance of the
wording of claims in patents. This article discusses the implications
of a recent significant court decision on this subject.

In Johnson & Johnston Assoc. v. R.E. Service, No. 99-1076, the Federal
Circuit reasserted “the fundamental principle that claims define the
scope of patent protection” and that “the claims made in the patent are
the sole measure of the grant.” In this case, the claims in the patent
specifically limited the substrate of the invention to “a sheet of
aluminum” and “the aluminum sheet.” The specification of the patent,
however, disclosed: “While aluminum is currently the preferred material
for the substrate, other metals, such as stainless steel or nickel
alloys may be used.” The Federal Circuit decided that, having
disclosed, but not claimed the steel substrates, the patent holder could
not later invoke the doctrine of equivalents to extend its aluminum
limitation to encompass steel. Thus, the patent holder could not assert
the doctrine of equivalents to cover the disclosed but unclaimed
embodiments of the invention.

The Federal Circuit reminded inventors that “a patentee who
inadvertently fails to claim disclosed subject matter, however, is not
left without remedy. Within two years from the grant of the original
patent, a patentee may file a reissue application and attempt to enlarge
the scope of the original claims to include the disclosed but previously
unclaimed subject matter. 35 U.S.C. § 251 (2000). In addition, a
patentee can file a separate application claiming the disclosed subject
matter under 35 U.S.C. § 120 (2000) (allowing filing as a continuation
application if filed before all applications in the chain issue).”

This case emphasizes the importance of claiming all embodiments of an
invention that are disclosed in a patent application, preferably in the
application as filed, but at least before the final Office action is
mailed. Disclosing without claiming an embodiment of an invention makes
no sense because “what is not claimed is public property.” The Federal
Circuit quoted this statement of the law by the Supreme Court from a
case decided in the 1880’s: “The presumption is, and such is generally
the fact, that what is not claimed was not invented by the patentee, but
was known and used before he made his invention. But, whether so or not,
his own act has made it public property if it was not so before. The
patent itself, as soon as it is issued, is the evidence of this. The
public has the undoubted right to use, and it is to be presumed does
use, what is not specifically claimed in the patent.”

II. AVOIDING INADVERTENT LOSS OF CLAIM BREADTH

The wording of a patent claim (the limitations it recites) determines
the potential extent of the intellectual property owned by the patentee.
That potential claim breadth can be reduced by the actions of the patent
applicant during preparation or prosecution of his/her patent
application. Recent decisions by the U.S. Court of Appeals for the
Federal Circuit (Federal Circuit) illustrate how limitations can be read
into claims based on the actions of the patent applicant. This article
presents a checklist for avoiding inadvertent erosion of claim breadth.

1. Avoid unqualified and limiting statements anywhere in the
specification about what the invention is. If a statement in any way
limits the breadth of potential claims, preface the statement with an
open-ended phrase, such as “Preferably” or “In a preferred embodiment”
or “In another embodiment.” This is important because statements about
“the invention” or “all embodiments of the present invention” have been
used by the Federal Circuit to limit claim coverage. In Wang Labs, Inc.
v. America Online, Inc., No. 98-1363, the Federal Circuit concluded that
“when the ‘preferred embodiment’ is described as the invention itself,
the claims are not entitled to a broader scope than that embodiment.”

2. Avoid distinguishing the invention from the background art in the
Background of the Invention section in ways that limit claim breadth.
This is important because words used to describe elements and
limitations in the background art may be used to exclude those elements
in the claimed invention, unless the specification explicitly includes
them. In Ekchian v. Home Depot, Inc., No. 96-1207, the Federal Circuit
noted “since, by distinguishing the claimed invention over the prior
art, an applicant is indicating what the claims do not cover, he is by
implication surrendering such protection.”

3. Ensure that a description of the invention in the Summary of the
Invention section mirrors the broadest claims. In Scimed Life Systems
v. Advanced Cardiovascular Systems, No. 99-1499, the Federal Circuit
stated “where the specification makes clear that the invention does not
include a particular feature, that feature is deemed to be outside the
reach of the claims of the patent, even though the language of the
claims, read without reference to the specification, might be considered
broad enough to encompass the feature in question.” Amend the summary
during prosecution if necessary.

4. Avoid providing definitions of terms in the specification that
narrow the breadth of claims that contain those terms. Terms can be
defined explicitly (“The term . . . means . . . .”) and implicitly (by
consistent usage) as the Federal Circuit found in O.I. Corp. v. Tekmar
Co., No. 96-1427, when it held that “we conclude that one skilled in the
art reading the claims, description, and prosecution history would
conclude that the term “passage” in claim 17 does not encompass a
smooth-walled, completely cylindrical structure.” Thus, the patentee
could not prevent others from avoiding infringement by using "a
smooth-walled, completely cylindrical structure" as a "passage."

5. While U.S. law requires only that the best mode (the best way of
practicing the invention) be disclosed in a patent application,
applicants are advised to disclose a range of alternative embodiments.
In Unique Coupons v. Northfield, No. 00-1300 (unpublished), the
applicant disclosed one embodiment of the invention, and the Federal
Circuit held that all claims would “require” the limitations associated
with that embodiment. It is wise to also ensure, however, that the
specification cannot be interpreted to limit the invention to elements
found in common among alternative embodiments or to exclude
unintentionally omitted embodiments. Permissive language, such as
“e.g.” or “may” can be used to advantage when describing alternative
structures or steps. Note that under Festo Corp. v Shoketsu Kinzoku
Kogyo Kabushiki decision of the Supreme Court, the approach of leaving
embodiments out of the specification so that they can be recaptured
under the doctrine of equivalents does not work. Under Festo,
equivalents that are foreseeable by one having ordinary skill in the art
are excluded from equivalent protection unless they are claimed. So,
all foreseeable embodiments must be disclosed and claimed to be covered
by a patent. As stated in Judge Rader’s concurring opinion in Johnson
and Johnston v. R.E. Service, No. 99-1076, “the doctrine of equivalents
does not capture subject matter that the patent drafter reasonably could
have foreseen during the application process and included in the
claims.”

6. Consider drafting some process claims in a “step plus function”
format) e.g., by using the words “a step for” to begin the recitation of
each process step. Similarly, consider drafting some product claims in
a “means plus function” format) e.g., by using the words “means for” to
begin the recitation of each element of the product. In Epcon Gas Sys.
v. Bauer Compressors, No. 01-1043, these approaches have been deemed by
the Federal Circuit to invoke the benefits of 35 U.S.C. 112. During
prosecution, casting some narrowing amendments in a step- or means
plus-function form should also be considered in light of the fact that
Festo left Section 112 equivalents unchanged. A Section 112 equivalent
is anything that represents “an insubstantial change which adds nothing
of significance to the structure, material, or acts disclosed in the
patent specification.” Thus, Section 112 equivalents may not be as broad
as equivalents under the doctrine of equivalents, but they are still
better
than no equivalents at all.

7. Include in the Abstract of the Disclosure section a description of
the invention that reflects the broadest independent claim. In Hill-Rom
Co. v. Kinetic Concepts, Inc., No. 99-1314, the Federal Circuit
interpreted the term “cushion” in the claims more narrowly, citing the
way the term was used in the abstract by noting “the abstract states
that
‘[t]he inflatable structure preferably has two components: a) lower
inflatable layer which is selectively operable to provide basic support
for the patient,’ and ‘a second inflatable layer includ[ing] a plurality
of zones for establishing optimal patient interface pressures and
patient comfort levels.’” Amend the abstract during prosecution if
necessary.

8. During prosecution, do not argue that an element of the invention is
necessary to the practice of a claimed invention unless you are willing
to live with that limitation in enforcing your patent. An inventor can
be deemed to have surrendered claim breadth by arguing during
prosecution that a certain claimed element produces “unique results” or
in some other way is “superior” or “inventive.” Similarly, an inventor
who argues in his specification or during prosecution that an element is
“critical” can be deemed to disclaim combinations that do not include
the element.

9. Remember that delay during prosecution on the part of a patent
applicant can affect patent coverage in a new way now – by reducing the
length of time an issued patent is valid. To avoid a day-for-day
reduction in patent term, file a complete reply within the response
period specified in the Office action (typically three months). If the
reply is filed on the last day of the response period, use Express Mail
or fax because the “date of receipt” at the USPTO is used in calculating
term reduction, not the date on the certificate of mailing.

While the courts have clearly pointed out that claims define what an
invention is, the Federal Circuit has also pointed out that statements
made in the specification of an issued patent and statements made during
prosecution of a patent application can establish what the invention is
not. Now, more than ever, care must be exercised by patent applicants
to avoid taking actions that erode the breadth of patent claims.

III. UNIVERSITY OF HAWAII BUSINESS PLAN COMPETITION

The Hawaii Business Plan Competition provides an integrative learning
experience for participants who are interested in pursuing
entrepreneurial opportunities. Teams vie for $50,000 in cash prizes,
with the help of community business mentors, help sessions and special
speakers. All teams must have at least one University of Hawaii
student. The registration deadline is Monday, November 25, 2002.

Entrepreneurs who are looking for new product ideas can contact the
University Connections program at the University of Hawaii. The
University Connections program helps connect entrepreneurs inside and
outside the University of Hawaii with the resources they need to
succeed.

These programs are part of a series of Hawaii Technology Development
Initiatives, which include a highly competitive package of tax
incentives for technology companies doing business in the state.

IV. LINKS

An HTML version of this newsletter containing links to reference
documents is accessible via the "Newsletters" link on the WebPatent.com
website. If you have any questions about patents or U.S. Government
funding for technology research and development, please contact us. If
you wish to be removed from this mailing list, please Reply to this
message with "remove" in the subject line.

Aloha,

Robert M. (Bob) Hunter, Ph.D.
Licensed Professional Engineer
Registered Patent Agent
65-1116 Hoku’ula Rd.
P.O. Box 2709
Kamuela, HI 96743
tel (808) 885-4194
fax (808) 885-4114
[email protected]
http://www.webpatent.com