import claim limitations from the specification, 2111 ?

[EagerDrafter]

How is this interpreted "II. IT IS IMPROPER TO IMPORT CLAIM LIMITATIONS FROM THE SPECIFICATION" ? (ref. https://www.uspto.gov/web/offices/pac/mpep/s2111.html)

(2111 was mentioned in another thread today, and I don't wish to hijack that thread)

When (if ever), during prosecution or litigation, is a claim ruled unsupported because the dictionary meaning is so broad that the spec is deemed not to support it? (Markush groups / Superguide aside)

I take 2111 in general to mean that a claim can be drafted and constructed broader than the spec, using plain language, provided the spec does not explicitly contradict that breadth. Also, I am aware that the inventor is their own lexicographer.

If a term is borderline, when is the spec used and when is a dictionary used?

Most importantly to me, as I'm drafting, how would I know WHEN to embellish a term in the spec to ensure that same term, when used in the claim, has broad dictionary / technical field meaning? This would also tell me which words perhaps to avoid in the spec, because they have generally well agreed meanings, such as "comprise".

Perhaps my examples are poor. I am open to all suggestions and other examples.

[EvilLost]

I think you are misunderstanding section II. Section II is not about definitions of words.

Section II refers to limitations that are discussed in the spec, but not explicitly recited in the claims. These limitations will NOT be "read into" the claims.

For example:
Spec says:  A widget comprises a doodad. The widget also comprises a deedad.
Claim says:   ...comprising a widget.

This claim may be rejected in view of prior art showing a widget of any kind (for example, a widget comprising a weewaw). The fact that the spec says the widget comprises a doodad or a deedad is not "imported" into the claims. If you want those limitations in the claim, then the claim must recite such limitations.


As far as your question regarding definitions....overgeneralizing, definitions tend to go as follows:

1) If a definition is (unambiguously) provided in the spec, then the spec definition is used. (The spec rules all)
2) If no definition is provided in the spec, then a "technical" definition as would be (unambiguously) recognized by a POSITA would be used.
3) If neither of the above occur, then a "plain meaning" (dictionary) will be used.

[EagerDrafter]

Thanks @EvilLost, both points are very helpful.

To paraphrase the first: "If you want those limitations in the claim, in order to overcome prior art, then the claim must recite such limitations."

Now to the other part of my question, using the cited example of a widget comprising a doodad:

If my widget overcomes the prior art even without the doodad, I would leave out the doodad from the claim.

"The fact that the spec says the widget comprises a doodad or a deedad is not imported into the claims."

Now the claim is broader than the spec. When does claim support become a concern?

[EvilLost]

Your claims are almost always broader than the spec. You want your spec to include every possible feature (many narrowing options) but you generally want to start with the broadest claims (but still novel) to maximize patent scope. You then narrow your claims throughout prosecution as necessary, but you rarely end up using every feature of the spec in your main independent claims.

Claim support becomes a problem when you narrow. Your claim can only be as narrow as is supported by the spec.

I can't really think of an example where broadening would be a problem, although some rare case may exist.

[EagerDrafter]

"Your claim can only be as narrow as is supported by the spec": indeed, agrees with my personal prosecution experience.

If the prior art is A+X, and the invention as possessed and enabled in the spec is A+B+C+D+E, then an independent claim A+B is allowable, with dependent claims down to A+B+C+D+E.

What I've had trouble with, and what I've seen in many patents in my field: the spec does not show how it would be possible to build the A+B invention other than with C+D+E.

For instance, spec-ed is a table surface (A) with one ceiling rod (B) and a hinged (C) wall brace (D) with a hinge lock (E). The prior art is a table surface (A) with at least one leg (X).

In the invention, claim (1) is a table surface (A) with the ceiling rod (B). This strikes me as odd: the spec provides no support for this configuration other than with the addition of B,C...

Edit: Or consider the claim A+E: a table surface (A) with a lock (E), and a spec that does not explain how the hinge lock and table surface are connected other than via a hinge.

Surface stability is a problem, unless the spec explains how to overcome it, e.g. with a rod that has a sufficiently large diameter. But for the sake of discussion, the spec does not.

So one could argue that suspending a table surface from a rod without a second mounting point such as the wall brace (C) makes it non-trivial to build (stability etc..).

Is this where you have to place yourself into the mind of the POSITA and determine whether the stability can be reasonably overcome, e.g. with a leg, a second ceiling rod, a wider rod...etc?

Or is there a different legal argument for allowing A+B when feasibility without C and D etc.. is questionable.

I see this in my field (signal processing) all the time: invented is a method that performs some fantastic results provided the inventive best mode processing also includes synchronization. Its independent claim (covering A+B) does not include the synchronization (C), and there is no support in the spec about how to make it work without the synchronization. Then, when a new patent application (finally) teaches how to make it work without synchronization, that claim is cited as prior art against the new claims.

Edit: The new invention should claim A+B+G with G being the part that makes it work without C. But because it was taught after the prior art claim A+B it cannot be granted the breadth A+B. A POSITA may deem A+B+G more original, simpler or or more fundamental than A+B+C+D+E, but the patent process grants the first filer the advantage of claiming A+B.

(Back to my original question: this is where I thought that claim limitations are imported, in that a claim of A+B is interpreted as broadly as the spec enabled, but I stand corrected.)

[smgsmc]

I can't really think of an example where broadening would be a problem, although some rare case may exist.

I've run into this situation with poorly written applications I've inherited.  Here's an example.  The written description describes autonomous cars, and the figures all show cars.  But the claims recite "an autonomous vehicle".  "Vehicle" does not appear in the written description, and has broader scope than "car".  Often the Examiner will issue a 112(a) rejection for lack of written description.  To continue prosecution, you can formally respond by copying the claims into the written description:  since originally filed claims are part of the original disclosure, there is no new matter.  How it plays out in litigation, though, is a different issue.