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[W]

Curious if someone can describe how one narrows claims and why (when it is appropriate, junctions when it is not possible, etc.).


Thanks,
-W

[Isaac]

Narrowing claims means changing them so that include less subject matter.   You can narrow your claims in a number of situations.  Before submitting them to the patent office, during prosecution up until the point of final rejection, and during a patent reissue.  My answer is US-centric and even then it glosses over some things.

The basic reason for narrowing claims is to ensure that the  claims do not include things known in the prior art because claims that include the prior art within their scope are invalid.

For example, imagine if soccer were known in the prior art but that lacrosse was a brand new sport of your own invention.

If I drafted a claim to "A method of playing with a ball  wherein players attempt to advance the ball down a field and to propel the ball into a goal area".   The claim is invalid because it reads on lacrosse and soccer.  I would narrow the claim by adding more description so that the claim described lacrosse and not soccer.  Maybe I might include the use of a lacrosse stick to propel the ball or require a goal of certain dimensions.

Generally one narrows a claim by adding more required elements or by disalliowing optional elements.

[W]

Right.

So given a hypothetical example:

Claim 1 (invention: PocketPC, prior-art = computer):

A system and apparatus consisting of an display device, a keyboard, memory, and a central processing unit.

Narrowed Claim 1 (invention: PocketPC):

A system and apparatus consisting of an display device, a keyboard, memory, and a central processing unit encased in a small, portable form-factor.

Now, would the above qualify as an example of narrowing claims?

-W

[JimIvey]

Yes, but don't use "consisting of" unless you mean it.  "Consisting of" excludes all other elements while "comprising" or "including" does not exclude other elements.

Once, an examiner interpreted "parallel" to mean two lines which don't intersect -- including skew lines (non-co-planar lines which don't intersect).  I believe skew is not parallel, so I amended the claims to recite co-planar parallel lines (or something to that effect).  Although, since I didn't consider that a narrowing amendment, so it's not really on point.  However, many times you'll amend a claim to exclude some unreasonable interpretation of your claim language insisted upon by the examiner.  Of course, this was all before Festo.  

From time to time, you'll be surprised at an unanticipated interpretation attributed to your claims by the examiner, and most of the time, they're right.  The amendment just cleans that up.  Of course, Festo extracts a significant penalty for that.  Not much we fallible human patent practitioners can do about that.

Regards.

[W]

Hmm. I think I'm going to reread a few documents.

Now, what is special about Festo? I'm reading through a case summary, and it appears that Festo narrowed his claims (too much), leaving an opening for a competitor.

I intend to isolate out possible prior art, while keeping the application relatively intact. As it stands, the narrowing of claims is limited to appending a phrase and a single word .

Although the "consisting of" and "comprising" distinction is something I will look into.

Cheers,
-W

[W]

http://www.todaysengineer.org/June02/festo.asp

"In patent infringement lawsuits, the DOE has been balanced by the rule of prosecution history estoppel (PHE). PHE applies to patent applications that were amended during prosecution. Under that rule, if a claim was modified to be more specific, any invention that falls within the scope of initial claims, but not the amended ones, is not covered by the patent. Therefore, by amending patents, applicants may yield their claim to a particular aspect(s) of their inventions. Consequently, in patent infringement cases, application of PHE tends to favor those accused of infringing on a patent."

Specifically: "Under that rule, if a claim was modified to be more specific, any invention that falls within the scope of initial claims, but not the amended ones, is not covered by the patent."

Since, in our discussions, there is that once piece of possible prior art, the initial claim would be under fire. By adding a little language, I can clarify (although it will narrow) the claim, removing prior art from the equation.

-W

[JimIvey]

A quick Festo summary (with important details ignored and/or smoothed over):

Doctrine of Equivalents (DoE):  the accused device doesn't infringe but should.  

Let's start with an example.  One of the areas where the DoE comes up is in claims with numerical ranges.  Suppose a claim recites, among other things, that "the solution has a pH of no more than 2.0."  Suppose the prior art showed the solution in the same situation (in the context recited in the remainder of the claim) has a pH of 7.0 or higher.

So, a competitor comes out with a competing product/process which uses a solution whose pH is 3.0.  Do they infringe?  Literally, no.  But should it?  Maybe.  Under the DoE, it might.

Prosecution History Estoppel (PHE): you can't use the DoE to recover subject matter given up by amendment during prosecution.

Suppose the claim in the above example used to recite a pH of no more than 3.0 and the claim was amended to recite no more than 2.0.   Applying the DoE to find infringement here would undo the amendment -- which seems to fly in the face of reason.

Flexible or complete bar?  The law used to be that PHE represented a flexible bar.  One case involving golf balls looked to see whether the accused device was closer to the claim as amended or to the closest prior art (or whether you could identify a hypothetical claim that is allowable and covers the accused).  In my example, we have a claim of pH no more than 2.0 and prior art showing pH of 7.0 or more -- a rather large gap leaving a large degree of uncertainty.  Should use of pH of 2.1 infringe?  Probably.  Should use of pH of 6.8 infringe?  Probably not.

Festo established once and for all that PHE gives rise to a complete bar.  In our example, the amendment from 3.0 to 2.0 means no DoE for the element of the claim at all.  Not 2.1, not 2.01, not 2.0001.

The law used to require that the amendment was made in response to 102/103 rejections (in view of prior art), and not clarifying amendments in view of 112.  Suppose the change was made from 3.0 to 2.0 because the description portion of the application didn't say 3.0, but said 2.0 instead (even if it was a clerical error).  That used to not foreclose applicability of the DoE.  Festo changed that -- any amendment for any reason related to patentability.  What amendments are not made for reasons related to patentability?  Well, sometimes I think I can make a claim broader and amend it accordingly.

Now, you don't even have to narrow the claim to invoke Festo.  Narrowing a related claim is enough.

So, if you amend a claim for any reason, you can pretty much kiss the DoE goodbye.  

So what?  Why not just write the claim right the first time?  I could go on and on about that.  Let's just say that requiring absolutely perfect foresight and clairvoyance as to what art will be cited against you and all possible ways to capture the invention in claim language is a bit harsh.  Many attorneys consider patent practitioners to be the best wordsmiths in the world and to have the toughest job in the legal profession, and many of us still fall short when it comes to foreseeing everything that could happen to each and every application we file.

Oh well, if it were easy to prepare patent applications, everyone would be doing it.

Regards.

[W]

Hmm. So narrowing a claim can lance the DoE.

So a competitor's infringement falls under the original claims but not the amended claims, but the inventor claims that they are infringing through DoE, the case is nullified.

Put lightly, if I amend a claim so that it requires an antenna (to avoid prior-art, etc.), I cannot then prosecute someone for using my invention sans antenna (under DoE).

Now, would this completely lance the DoE (for other cases not affected by the amended claim). For instance, they decide to use 2 antennas. Would it hold up in those circumstances?

-W

[eric stasik]

W,

Excellent answers you've received so far. Let me see if I can add anything. In one of my past lives I was a microwave engineer, so your antenna example caught my attention:

"Put lightly, if I amend a claim so that it requires an antenna (to avoid prior-art, etc.), I cannot then prosecute someone for using my invention sans antenna (under DoE). "

Yes, but not exactly. If you amend your claim such that it requires an antenna, then you probably could not argue that someone using a cable connection was infringing your patent under the doctrine of equivalents. Post Festo, it is literal infringement or no infringement.

"Now, would this completely lance the DoE (for other cases not affected by the amended claim). For instance, they decide to use 2 antennas. Would it hold up in those circumstances?"

Well, you can't use 2 antennae without using 1 antenna so you would still be faced with a literal infringement.

Regards,

eric stasik

[W]

Well, you can't use 2 antennae without using 1 antenna so you would still be faced with a literal infringement.  

True enough. Just making sure that even Festo infringement works with >= logic, not ==.

-W

[JimIvey]

Hi W,

The difference is that "one antenna" is literally infringed by the use of one antenna plus one more antenna (your two antennae, and assuming the use of "comprising" rather than "consisting of").  The doctrine of equivalents, and therefore Festo, don't come into play here.

However, while this is the traditional and proper interpretation, I believe at least one court in at least one opinion has ruled to the contrary, interpreting "one" thing to mean "exactly one" or "one and only one" thing rather than "one or more" things.

Where will this come down in the future?  Who knows?  We just try to do our best at these things.  So, ultimately, it's possible that a court will rule that "one antenna" is not literally infringed by two antennae and will apply the DoE and Festo.  Stuff happens.....

Regards.

[W]

and assuming the use of "comprising" rather than "consisting of"

It's little distinctions like that which will keep me up at night.

Main Entry: com·prise
Pronunciation: k&m-'prIz
Function: transitive verb
Inflected Form(s): com·prised; com·pris·ing
Etymology: Middle English, from Middle French compris, past participle of comprendre, from Latin comprehendere
1 : to include especially within a particular scope <civilization as Lenin used the term would then certainly have comprised the changes that are now associated in our minds with "developed" rather than "developing" states -- Times Literary Supplement>
2 : to be made up of <a vast installation, comprising fifty buildings -- Jane Jacobs>
3 : COMPOSE, CONSTITUTE <a misconception as to what comprises a literary generation -- William Styron> <about 8 percent of our military forces are comprised of women -- Jimmy Carter>

Main Entry: 1con·sist
Pronunciation: k&n-'sist
Function: intransitive verb
Etymology: Middle French & Latin; Middle French consister, from Latin consistere, literally, to stop, stand still, from com- + sistere to take a stand; akin to Latin stare to stand -- more at STAND
1 : LIE, RESIDE -- usually used with in <liberty consists in the absence of obstructions -- A. E. Housman>
2 archaic a : EXIST, BE b : to be capable of existing
3 : to be composed or made up -- usually used with of <breakfast consisted of cereal, milk, and fruit>
4 : to be consistent <it consists with the facts>

Unless the "of" somehow warps the meaning.

-W

[JimIvey]

and assuming the use of "comprising" rather than "consisting of"

It's up there (in my prior post).

Unless the "of" somehow warps the meaning.

I'm not sure what you mean by that, but the use of "of" with "consisting" is mentioned in definition #3 of your quote.

The specific meanings of "consisting of" and "comprising" are defined in the law.  Don't get overly invested in reason or the English language; remember, this is the law that we're talking about -- at times, it defies both.

If you can find a copy of Landis on Mechanics of Claim Drafting, check out Sections 7, 8, and 50.  (Thanks, Mr. Stasik!!).  A local law library might have a copy.  

Regards.

[Isaac]

I think the general discussion here overstates Festo a little.
First, Festo applies to the specific claim element/limitation
that was amended.  The complete DOE might very well apply
with respect to other parts of the claim.

Also, the discussion seems to discuss the pre Supreme Court
version of Festo.  After the Supreme Court got done, the
bar became a presumption of an absolute bar.  There are several
tests that determine whether or not the absolute bar will
be applied.  I won't go over them now, but it's an open
question as to whether those tests will prove to prevent patentees
from getting hammered with the absolute bar as a practical matter.

[JimIvey]

You're right, Mr. Clark.  The bar of PHE is complete but only for the amended element(s) and there are possible exceptions to the presumption of willful surrender by the patent applicant -- foreseeability being the basis of at least one such exception.

Despite that, I don't think you're going to see many opinions upholding rulings of infringement under the DoE in the Fed Circuit.  They're just too hostile to the DoE.  And, while they might get their hands slapped by the Supreme Court from time to time over exactly what the rules are, I don't think it will help patent holders in the long run.

But that's a very subjective opinion and time may very well prove me wrong.

Thanks for keeping us all honest!

Regards.