|
LaplacesDemon
|
 |
« on: 03-10-10 at 09:45 am » |
|
I'm reviewing everything before submission and I realized that I have a statement in my Abstract that is backed up in the specs but is not something I'm claiming. I'm given to understand that examiners are more apt to read the Abstract than the claims when quickly doing a patent search. It was a cool idea and it is supported in the text but I didn't want it as a restriction on my claims nor is it worth giving up an independent claim to secure. But it looks really cool in the Abstract, lol.
|
|
|
|
|
Logged
|
|
|
|
|
Wiscagent
|
|
« Reply #1 on: 03-10-10 at 10:28 am » |
|
The purpose of the abstract is to enable the United States Patent and Trademark Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure. - 37 CFR 1.72
The abstract should give a brief summary of the entire specification; not just focus on the content of the claims.
|
|
|
|
|
Logged
|
Richard Tanzer
Patent Agent
|
|
|
|
JimIvey
|
|
« Reply #2 on: 03-10-10 at 10:44 am » |
|
FWIW, I write the Abstract by copying/pasting the Summary of the Invention and then cropping it until I get below 150 words or so. It's probably the least important part of the application.
Regards.
|
|
|
|
|
Logged
|
-- James D. Ivey Law Offices of James D. Ivey http://www.iveylaw.comFriends don't let friends file provisional patent applications. |
|
|
|
DogDayPM 9er9er9er
|
|
« Reply #3 on: 03-10-10 at 11:14 am » |
|
`Demon,
The Abstract is not supposed to be a limitation on your claims. In addition, normally the abstract should not recite the claims, but a general summary as Jim and Wiscagent mentioned. I actually have quite a number of US applications still in prosecution that I inherited, where the abstract was written by turning a couple of the main claims into paragraphs and changing out words like "said", "comprises". Several of these have gotten objections by the examiners specifically because they were essentially a claims recitation, forcing me to re-write.
|
|
|
|
« Last Edit: 03-10-10 at 12:12 pm by DogDayPM »
|
Logged
|
Any and all disclaimers you may see on this forum used by members more experienced and/or smarter than I, are hereby incorporated by reference as if fully set forth herein.
|
|
|
|
Robert K S
|
|
« Reply #4 on: 03-10-10 at 02:09 pm » |
|
Generally, my abstracts are more specific about the invention than my claims. I try to eschew legalistic language and jargon in the abstract in favor of plain language that can be quickly read. If the invention relates to a cell phone improvement, for example, my claims might refer to "a portable personal wireless communication device" whereas in the abstract I would just write "a smartphone". I've always taken the position that an abstract should get the point of the invention across quickly to a layman, and save the posturing and positioning for the spec and the claims.
|
|
|
|
|
Logged
|
Only after final does the fun begin.
Everybody else's advice disclaimers are herein incorporated by reference.
|
|
|
|
blakesq
|
|
« Reply #5 on: 03-10-10 at 02:32 pm » |
|
When I took Kayton on patent prosecution and claim drafting, he showed us case law where the federal courts used the Abstract and Summary to limit the claims. The court basically said that 37 CFR has authority over government agencies (such as the PTO), but not over the courts. `Demon,
The Abstract is not supposed to be a limitation on your claims. In addition, normally the abstract should not recite the claims, but a general summary as Jim and Wiscagent mentioned. I actually have quite a number of US applications still in prosecution that I inherited, where the abstract was written by turning a couple of the main claims into paragraphs and changing out words like "said", "comprises". Several of these have gotten objections by the examiners specifically because they were essentially a claims recitation, forcing me to re-write.
|
|
|
|
|
Logged
|
|
|
|
|
Robert K S
|
|
« Reply #6 on: 03-10-10 at 03:17 pm » |
|
If the abstract is the only place where a claim term is defined, let the abstract control. If the spec and the abstract have any shades of variance between them, the spec should control, as the point of an abstract is to get information across quickly, not completely. Does any of the Kayton-noted case law disagree with this understanding?
|
|
|
|
|
Logged
|
Only after final does the fun begin.
Everybody else's advice disclaimers are herein incorporated by reference.
|
|
|
|
blakesq
|
|
« Reply #7 on: 03-10-10 at 04:51 pm » |
|
I have never heard of case law suggesting that the spec (assuming the court would find the spec as being separate from the abstract) should control if the spec and abstract are inconsistent. Kayton never pointed that out. If the abstract is the only place where a claim term is defined, let the abstract control. If the spec and the abstract have any shades of variance between them, the spec should control, as the point of an abstract is to get information across quickly, not completely. Does any of the Kayton-noted case law disagree with this understanding?
|
|
|
|
|
Logged
|
|
|
|
|
Robert K S
|
|
« Reply #8 on: 03-10-10 at 05:39 pm » |
|
I didn't say inconsistent. "Smart phone" and "portable wireless personal communication device" may have slightly different shades of meaning but they are by no means inconsistent. However, I don't think that any court would rule that if my claims claimed the latter but my abstract only mentioned the former, the latter should be defined strictly as the former, especially if the specification made an elaborate and extensive definition as to what devices could be considered a "portable wireless personal communication device".
If the abstract teaches something inconsistent with the specification, to the point where the disclosure has an enablement problem or the claims become indefinite, that's a whole 'nother can of worms.
I've had examiners argue that claim terms are indefinite under 112 second paragraph when, actually the claims are merely broad. Some examiners have a hard time understanding the difference. If a claim is broad, don't give me a 112, I'll just appeal. Find the art and give me a 102 or 103.
|
|
|
|
|
Logged
|
Only after final does the fun begin.
Everybody else's advice disclaimers are herein incorporated by reference.
|
|
|
|
TataBox
|
|
« Reply #9 on: 03-10-10 at 06:47 pm » |
|
FWIW, my abstract is generally my first independent claim dressed up a bit. Nothing more. Nothing less.
|
|
|
|
|
Logged
|
|
|
|
|
Wiscagent
|
|
« Reply #10 on: 03-11-10 at 06:36 am » |
|
I didn't say inconsistent.If the abstract teaches something inconsistent with the specification, to the point where the disclosure has an enablement problem or the claims become indefinite, that's a whole 'nother can of worms. Presumably the examiner would object to the Abstract in that situation and call for a replacement. |
|
|
|
|
Logged
|
Richard Tanzer
Patent Agent
|
|
|
|
Wiscagent
|
|
« Reply #11 on: 03-11-10 at 06:37 am » |
|
FWIW, ... And MHRZ (or other random letters) too. |
|
|
|
|
Logged
|
Richard Tanzer
Patent Agent
|
|
|
|
Isaac
|
|
« Reply #12 on: 03-11-10 at 07:21 am » |
|
If the abstract teaches something inconsistent with the specification, to the point where the disclosure has an enablement problem or the claims become indefinite, that's a whole 'nother can of worms. I believe the can of worms would be resolved by the court finding that the abstract is bad. I don't believe the abstract has any legal effect. |
|
|
|
|
Logged
|
Isaac
|
|
|
|
JimIvey
|
|
« Reply #13 on: 03-11-10 at 08:45 am » |
|
FWIW, ... And MHRZ (or other random letters) too. For what it's worth, "FWIW" = " For what it's worth". Regards. |
|
|
|
|
Logged
|
-- James D. Ivey Law Offices of James D. Ivey http://www.iveylaw.comFriends don't let friends file provisional patent applications. |
|
|
|
DogDayPM 9er9er9er
|
|
« Reply #14 on: 03-11-10 at 09:33 am » |
|
FWIW, ... And MHRZ (or other random letters) too. For what it's worth, "FWIW" = " For what it's worth". Regards. OTOH, IMHO, MHRZ is often used for MHZ, but YMMV so ask yerself, "WWJID"? (" What Would Jim Ivey Do") |
|
|
|
|
Logged
|
Any and all disclaimers you may see on this forum used by members more experienced and/or smarter than I, are hereby incorporated by reference as if fully set forth herein.
|
|
|
|
