Re: drafting claims--using "first, second ..." instead of ends, or means

Subject: Re: Re: drafting claims--using "first, second ..." instead of ends, or means

Comments:
: :The invention on which I will prosecute an application has tops, bottoms and many things on the left and right side. : While using directional terms like "left" and "bottom" are good for describing a specific instance of your invention, one goal of your claims should be to describe your invention in terms as broad as possible. To use the tired phrase, the goal is to think outside the box of the physical embodiment of your invention and think about all the ways the essence of the invention can be put into practice. : It may be possible to use/make your invention with a mirror-image version (and how mad would you be if your patent didn't cover the mirror version?). What if the sides were curved, so that the bottom blends with one side in a continuous sweep (would you want your patent to cover such a variant?). Need the top and bottom components be on opposite sides, or do they only need to be on the chamber walls? : By using terms that are not restricted to a specific definition, you get (1) less restriction on the specific instance of your invention and (2) greater breadth to enforce against other potential infringers. (You'll still have to be sure that all the parts can function and interrelate; the first part may need to be "opposite" to the second part or "adjacent"). : :Where can I find a larger list of descriptive terms of art? : I was going to recommend Patent It Yourself, which has a good list. Many people hate this book, but I keep recommending it as the best single-volume guide for the layperson. A lot of multivolume treatises and patent bar review courses do far worse. Landis is good for certain points, but you can get the gist of it in a few hours (meaning, borrow it, don't buy it). : :Should I ask the examiner to draft my first independent claim for me? : I've never done this and I'm not sure if I'd rely on the Examiner to have my best interests in mind to draft me the broadest claims possible. Have you thought about hiring an attorney to draft just the claims? More than any other step in the process, drafting the claims requires insight and legal skill, and a limited arrangement may be money well spent. : : but I'm not finding sources for answers to the many questions that I have as I work on these claims. : You may try to locate a copy of Kayton's training materials. Chapter 3 sets out basic claim drafting (but I still think Nolo does a better job in some respects). The MPEP has some discussion of claim drafting, but not very useful for how to draft. : Best of luck.

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