"such that" functional language

[smgsmc]

Hi.  Searched for this topic in previous posts; didn't find it.    Are there any issues with "such that" functional language in a claim?  A simple example--

A machine comprising:

a motor having a shaft;
an arm coupled to the shaft such that the arm translates in response to rotation of the shaft ...

(Assume spec fully supports "translates" and "coupled to")

Dependent claims would claim different couplings (rack and pinion, friction drive, ...).

Thanks.

[JimIvey]

I have no problem with that phrasing.  Looks to me like "such that ...." directly describes the nature of the coupling.  I use that phrasing often -- or something similar like "so as to", "in such a manner that", etc.  I think the traditional way to phrase that is "wherein ...."  I think they all work.

Regards.

[ChrisWhewell]

Sometimes "such that" can be synonymous with whereby.  I don't think one runs into trouble unless they attempt to define a structural relationship using only functional terms.  One test is to leave off "such that" and what follows it and ask if the structural novelty and cooperative connection necessary for patentability still remains. 

[JimIvey]

Doesn't "whereby" have some baggage?  I never use it, but I vaguely remember that the body of the whereby clause necessarily follows from the remainder of the claim, somewhat like an inherent result.  Does "such that" carry the same baggage? 

Can you give an example illustrating the structural/functional distinction you've mentioned?

Regards.

[ChrisWhewell]

Some interesting statements in these

http://www.altlaw.org/v1/cases/1164957

http://www.altlaw.org/v1/cases/438892

[JimIvey]

I took a quick peek at the cases.  Didn't see anything illuminating.  I searched for "such that" for any hints.

The first case was consistent with what I already understood: functional language is perfectly fine in a machine claim.  I didn't see anything relevant in the second case.  I'd also suggest that any opinion by any of the federal appellate circuits other than the Federal Circuit ought to be taken with a grain of salt -- the second citation was a 10th Circuit opinion from the pre-Federal Circuit era.

And, just a general comment:  I generally don't do more than a quick scan of cases that are cited here with little or no additional comment.  Mostly, I don't have time to "study" in detail each case cited here.  In my opinion, it would be more helpful to include a quote of the case that any poster here finds pertinent. 

And just one generalized perspective on "magic words" in patents.  With very few exceptions, I think it's best to just describe what you hope to cover in a claim in plain English and not worry so much about special meanings in patents.  For example, you can research the law with respect a particular phrase, but the answer nearly always hangs on the interpretation of that phrase in the specific context of the application in question and its history.  In other words, take the phrase out of that context and use it in your own context, and the caselaw on that phrase probably doesn't apply anymore.

For what it's worth, I don't believe that "such as" is one of those very few exceptions.

Regards.

[ChrisWhewell]

" such that the arm translates in response to rotation of the shaft ..."  has potential to claim all ways of achieving a result, possibly more than are within the breadth of the disclosure, which if true could be problematic.  Functional language can cause a claim to be broader than the disclosure, especially after a whereby or similar import words like "such that" when only functional language is present.  Landis devoted a whole section to whereby.  caveats abound

[JimIvey]

Every claim should be broader than the specification.  The specification teaches (often by example) and the claims claim.

I understand that the MPEP and the PTO believe that Section 112 limits the breadth of claims.  I disagree and never draft or prosecute applications as if there is such a limitation in Section 112.  Section 112 limits specificity of claims (the ways in which claims can be narrowed to include specific limitations) but not claim breadth.

As far as I'm concerned, there are only 2 limits on the breadth of claims -- Section 102 and Section 103.

To the extent claims have been held invalid as too broad under Section 112 in court, I view those as cases applying the reverse doctrine of equivalents, regardless of whether the doctrine is explicitly invoked.  And, yes, I'm aware of the collateral estoppel of claim invalidation vs. non-infringement under the RDoE.  Narrower dependent claims are my protection against someone deciding after-the-fact that some of my claims are broader than they'd like despite being novel and non-obvious.

Perhaps that's not completely kosher and strictly consistent with prevailing patent law, but that approach has served me and my clients well over the last 18 or so years.

Regards.

[smgsmc]

" such that the arm translates in response to rotation of the shaft ..."  has potential to claim all ways of achieving a result, possibly more than are within the breadth of the disclosure, which if true could be problematic.  Functional language can cause a claim to be broader than the disclosure, especially after a whereby or similar import words like "such that" when only functional language is present.  Landis devoted a whole section to whereby.  caveats abound

Would this work?

A machine comprising:

a motor having a shaft;
an arm; and
a rotation-to-translation coupler having a rotation port and a translation port,
wherein the shaft is connected to the rotation port and the arm is connected to the translation port.

The spec then defines a rotation-to-translation coupler as a coupler having a rotation port and a translation port such that the translation port translates in response to rotation of the rotation port.  The spec discloses specific embodiments of a rotation-to-translation coupler (such as a rack-and-pinion, a friction drive, etc).  Will I then have a valid claim covering any embodiment of a "rotation-to-translation" coupler? Which is what I want for broadest coverage.   I often see "means" language in these instances, but pitfalls of that language have been heavily discussed in other threads.

Thanks.

[ChrisWhewell]

As original disclosure, the claims can be broader than the disclosure.  I always thought that the proper procedure in such instance when its apparent is for the examiner to require amendment of the specification to be commensurate in scope with the claims.  I wonder if the MPEP still specifies this procedure...  If so, it could be productive to look at any cases cited.

Another limit to the two limits you mention, is the applicant's spec, and if the claims are broader than the disclosure enough to cover something that is not enabled, that's trouble.  It's happened !!   Those are 112 issues.  They limit the claim scope not based on what is contained in the prior art, but rather, what has been taught/enabled by the Applicant.

As to the OP, if your translation of your scenario for purposes of internet posting was congruent, Jim's nailed it for you.   If the full details of your scenario didn't all make it over into your message, maybe you'll find something in all this useful to consider investigating further.


 

[dablueman]

As original disclosure, the claims can be broader than the disclosure.  I always thought that the proper procedure in such instance when its apparent is for the examiner to require amendment of the specification to be commensurate in scope with the claims.  I wonder if the MPEP still specifies this procedure...  If so, it could be productive to look at any cases cited.

How exactly are you going to amend the specification to be commensurate with the claims that have a scope broader than the spec without adding new matter?

[ChrisWhewell]

" such that the arm translates in response to rotation of the shaft ..."  has potential to claim all ways of achieving a result, possibly more than are within the breadth of the disclosure, which if true could be problematic.  Functional language can cause a claim to be broader than the disclosure, especially after a whereby or similar import words like "such that" when only functional language is present.  Landis devoted a whole section to whereby.  caveats abound

Would this work?


Thanks.

I don't know.   But unless you have a super-unique structure, chances are there is case law citing a patent having claims of analogous structure that might be translatable to your scenario.   One key to establishing breadth in the claims, is to work on broadening equivalency for each of the elements of the claims, in the spec.

[ChrisWhewell]

As original disclosure, the claims can be broader than the disclosure.  I always thought that the proper procedure in such instance when its apparent is for the examiner to require amendment of the specification to be commensurate in scope with the claims.  I wonder if the MPEP still specifies this procedure...  If so, it could be productive to look at any cases cited.

How exactly are you going to amend the specification to be commensurate with the claims that have a scope broader than the spec without adding new matter?

I'd do so prior to filing.

[dablueman]

As original disclosure, the claims can be broader than the disclosure.  I always thought that the proper procedure in such instance when its apparent is for the examiner to require amendment of the specification to be commensurate in scope with the claims.  I wonder if the MPEP still specifies this procedure...  If so, it could be productive to look at any cases cited.

How exactly are you going to amend the specification to be commensurate with the claims that have a scope broader than the spec without adding new matter?

I'd do so prior to filing.

My point was that there is no procedure for the examiner to require the specification to be amended broader because that is in direct conflict 37 CFR 1.121(f) "No new matter".

[ChrisWhewell]

You're right, no examiner would ever require an inventor to add new matter.   But, claims being original disclosure, it can sometimes be possible to amend the spec to be commensurate with the claims based in part or more on the original claims' content.