Amend abstract in a continuation

[novobarro]

I received an allowance directed to an embodiment related to, for example, bluetooth communication.  the client wants to file a continuation with essentially the same claims but removing bluetooth.  The abstract in the parent reference bluetooth.  Should I also amend the abstract because I'm going for a narrower embodiment specifically not directed to bluetooth? does it matter?

[jeff.oneill]

Yes, the abstract should be amended to reflect the claims in the continuation.  It may be as easy as just removing the word bluetooth.

For some continuations, the claims are completely different, and then you would rewrite the abstract from scratch.

[Toot Aps Esroh]

Yes, the abstract should be amended to reflect the claims in the continuation.  It may be as easy as just removing the word bluetooth.

For some continuations, the claims are completely different, and then you would rewrite the abstract from scratch.

The purpose of the abstract is to reflect your technical disclosure.  I recognize that many practitioners use this as a place to dump a regular prose version of the main claim(s), but that's not really the original intention of the thing.

If you write your original abstract to generally reflect the technical disclosure, there should be no need to re-write upon divisional or continuation filing.

However, if you (e.g.) inherited an abstract narrowly tailored to a first claim set filed and now are filing a con, I can see there might be a desire to redraft the abstract in the con to more broadly generally reflect the entire disclosure.

[Robert K S]

The purpose of the abstract is to reflect your technical disclosure.

Some clients insist on the abstract reflecting only the broadest claim, no more, no less, presumably because at some point in the past they got burned on this in litigation and developed it as a "foolish consistency" type rule.  They don't seem to demand that the abstract later be amended along with the claim(s) during prosecution, so that rule doesn't make much sense to me, just like it doesn't make sense to me that an abstract "must" refer only to elements shown in a single drawing.  In any case, I usually don't find the abstract to be a good place to summarize the entire disclosure, owing to the word length limitation, and so I generally try to limit its focus to the subject matter attempting to be captured with the claims, rewriting or amending it as appropriate with any continuation or divisional that might be sought.

[Toot Aps Esroh]

Some clients insist on the abstract reflecting only the broadest claim, no more, no less, presumably because at some point in the past they got burned on this in litigation and developed it as a "foolish consistency" type rule.  They don't seem to demand that the abstract later be amended along with the claim(s) during prosecution, so that rule doesn't make much sense to me...

Fair enough.  One of the joys of being in-house is not having to deal with such.  Of course, there's a lot of other corporate crap that doesn't make much sense to take its place.   

, ... just like it doesn't make sense to me that an abstract "must" refer only to elements shown in a single drawing.   

I remember reading that thread when you originated it, but could not understand where you were finding the requirement that the abstract "must" refer to elements only from a single drawing.

In any case, I usually don't find the abstract to be a good place to summarize the entire disclosure, owing to the word length limitation...

For me the word limit is a good reason to stay at the 30K foot level of description.  It should be sufficient that the public doing a subject matter search by abstract finds my patents, but (outside of client demands which you and jeff and novobarro apparently face) no reason to try to limit it to my claim.

[dbmax]

Tangentially related:
Since 1976, PFTD shows 3827 issued patents using the term "inter alia" or "interalia" in the abstract.
Since 2001, PGPUB shows 4372 published applications using the term "inter alia" or "interalia" in the abstract.
I wonder if this small number of practitioners is smarter than the rest of us, or just more cautious.
db