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[ManOfManyBadIdeas]

So, what was the point of inserting such a language into the spec?

Who knows?  Here's a common one:  the inventor says his innovation applies mainly to diesel engines but would probably work well on a gasoline engine as well.  So, you write the specification so as to not limit yourself to diesel engines.

However, during prosecution, the examiner finds that the innovation is not new in gasoline engines, so you amend the claims to be limited to diesel engines only.  There ya go.  The spec does not limit itself to diesel engines, but the claims do.  So what?  The claims define the invention.

If you're going to ask why we don't amend the spec to mirror amendments to the claims, there are a number of reasons.  They include thorny issues of "new matter" and inviting people to import other details from the spec into the claims, and that's something we avoid like the plague.

The claims define the invention.  The spec doesn't.  That's all there is.  There's nothing more to understand.

Regards.

I thought that a feature has to be present in both claims and the spec for the patent to work.
If it's not in the spec, the claim is not supported (not enabled), it it's not in the claim, well,
it's not protected against infringement.

But I think that your message is that having unrelated, and even false statements in the spec is not that
big a deal. It doesn't have to make sense all the time. As prior art, parts of the spec only matter when they do
make sense. As a patent, parts of the spec only matter when they are mirrored in claims. Am I close?

[JimIvey]

Am I close?

I don't think so.

You have to consider what a patent is, in its essence.  If you can make a non-trivial contribution to the whole of publicly available technical knowledge, you can exclude others from exploiting your contribution for a limited period of time.

The specification is your attempt at a non-trivial contribution to the whole of publicly available technical knowledge.

The claims are what you negotiate as the bounds of the non-trivial parts of your contribution that you can keep others from exploiting.

Note that including stuff in the spec that's trivial (obvious) or even not new at all is not a problem.  The claims are to identify non-trivial parts and are the subject of intense negotiation with the Patent Office.

The specific language to which you've objected is an attempt to avoid the very thing you're doing, attempting to use the specification to define the invention.  For those not familiar with the roles of the respective parts of a patent (including district court judges and jurors), inclination to use details of the specification to define aspects of the invention can negate all of the careful negotiation with the Patent Office over the precise coverage of the claims.

Regards.

[ManOfManyBadIdeas]

Am I close?

I don't think so.

You have to consider what a patent is, in its essence.  If you can make a non-trivial contribution to the whole of publicly available technical knowledge, you can exclude others from exploiting your contribution for a limited period of time.

The specification is your attempt at a non-trivial contribution to the whole of publicly available technical knowledge.

The claims are what you negotiate as the bounds of the non-trivial parts of your contribution that you can keep others from exploiting.

If you mean "define the boundaries of protection against infringement" by "define the patent", I fully agree.
But infringement is not the only thing that threatens IP. Patent may be invalidated, or someone may be able
to carve out a patent in what you thought was your IP if you did not adequately describe the invention in
the spec.

Note that including stuff in the spec that's trivial (obvious) or even not new at all is not a problem.  The claims are to identify non-trivial parts and are the subject of intense negotiation with the Patent Office.

Understood and fully agreed.

The specific language to which you've objected is an attempt to avoid the very thing you're doing, attempting to use the specification to define the invention.  For those not familiar with the roles of the respective parts of a patent (including district court judges and jurors), inclination to use details of the specification to define aspects of the invention can negate all of the careful negotiation with the Patent Office over the precise coverage of the claims.

Regards.

I do not think I am trying to say that specification should define(claim) what the invention is. Incidentally
that's what I thought the spec I have made up is doing. To some degree "claiming language" is unavoidable in
the specification, you do have to state what the invention is, but also describe it. Perhaps your point is that
you do not want to make that statement too narrow in order to avoid the court improperly narrowing your
claims to what you state in the spec. I agree. My question is if you make the statement so broad that
it becomes egregiously false, you certainly avoid narrowing the claims, and you might stave off weaker
attempts to claim a patent over your IP, but are you also endangering the patent validity?