A claim in a patent application or issued patent should express
not only the building blocks of an invention but also the
relationships among the building blocks. Understanding and
expressing these relationships clearly in a claim is vital for all
types of claims. Without the relationships, claims would
merely express an unorganized set of elements, such as building
blocks. As an analogy, compare a pile of bricks,
cinderblocks, steel girders or lumber to a finished building.
A claim set without relationships among the elements would be
comparable to a list of construction materials. A claim set
with relationships among the elements would be comparable to an
architectural set of building plans. Continuing with the
analogy, the specification would provide a description of the
building, giving context to the claim elements. Likewise, the
entirety of the claims gives context to each of the claim
elements.
Relationships are important in structural claims, but can be
elusive in method claims. Often, we wish steps or actions in
a method to be broadly claimed so that the steps can be performed
in various orders and are not limited to being performed in the
order recited in the claims. Other times, the order is
specific and the method claim is written to recite steps, in
sequence, such as with letters or numerals indicating such a
sequence, or with specific mention in each step as to one or more
steps that precede that step or follow that step. Other
relationships in method claims can describe how some of the
physical elements relate to the actions or to other physical
elements recited in the claim.
Where the context and the relationships in the claims are clearly,
unambiguously developed, there is firm ground to be argued during
patent prosecution. When an Examiner from the USPTO issues an
obviousness rejection under 35 USC §103, there is no single
cited reference which shows all of the elements in the claimed
relationship. So, the Examiner and the rejection rely on
showing each of the elements in one or more of the multiple
references cited. But, if we can show that an element in one
of the references does not show that element in the same
relationship or the same context as the present claims under
examination, we can argue that not all aspects of the claims are
shown in the cited references. This is particularly powerful
if the reference, which shows the element in question, teaches to
use that element in a different manner or different relationship to
other elements than what is presently claimed. Both
structural claims and method claims, which may have different
approaches to describing the invention, are applicable in this type
of analysis. Sometimes, an argument developed with reference
to a method claim will guide amendments to a structural claim, and
vice versa.
To finish up with the analogy, suppose we are comparing a
particular bridge to a particular skyscraper. Both structures
use steel girders, rivets, connections of one girder to another,
and triangulation in their construction. But, if one says
that the existence of skyscrapers predicts all bridges, one is
wrong. A showing of a collection of steel girders and rivets
in a skyscraper does not show steel girders and rivets in the same
relationship and context as shown in a bridge. Relationship
and context among elements in patent claims are part of the art of
patenting.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.