Patent claims are commonly understood to define the structure of
an invention, and claim limitations should delineate the
connections and relationships among claim elements.
Occasionally, claims are rejected during examination as
indefinite, with the Examiner pointing out that it is not clear how
the claim elements are interrelated and interconnected and/or that
there is insufficient structure in the claim. What sorts of
claim amendments or arguments should be considered?
It may be a first instinct to add physical structure to the claims,
such as fasteners or joiners for a mechanical invention or wires,
busses or connectors for electronic invention, etc. But, it
may be equally valid to add functional connectivity and
relationships among claim elements, without limiting to specific
physical features. Choice of which to pursue should be
carefully considered, so that claims are not unduly or
inadvertently narrowed in areas where they don't need to
be.
Here's an example for electronics. Suppose the claim has
a first module and a second module, each with functions, and the
claims are rejected as above. One type of amendment would be
to say that the first module and the second module are each
implemented using electronic hardware, software executing on a
computer, etc., and the first module is coupled to the second
module by a bus or a network. Another way of handling this
would be to say that the claim is now amended to recite a computing
device having a first module and a second module, with the first
module producing a first result and the second module performing a
function on the first result to produce a second result. This
connects the first module and the second module functionally,
without limiting to the particular type of physical connection
these modules have.
Next, an example for a mechanical article. Suppose the claim
is of a handle, a body and an actuator and is rejected as above.
One type of amendment would be to say that the handle and the
body are coupled to each other at a particular range of angles and
have a cable, a rod or an hydraulic line running from the handle
through the body to the actuator, or an electric motor positioned
in some manner. Perhaps the novelty is in the actuator
itself. But this amendment doesn't emphasize the novelty
of the actuator, and limits the claim to those particular added
elements in combination with the actuator. Another way of
connecting the base elements would be to add an amendment that says
operating the handle transfers a force or a motion through the body
to the actuator, resulting in the actuator performing a function.
This functionally connects the handle, the body and the
actuator, without limiting to the particular type of physical
coupling of a specific embodiment.
Sometimes it is important to emphasize the physical structure
connecting elements. A mechanical invention or electronic
invention might function better with a certain type or class of
connectors, a material might function better with a certain type of
bonding or with a specific sequence of layers or class of materials
for some of the connecting layers, and that would be a good way to
claim any of these. But, look also at the functions that any
of these perform, and see if it is possible to claim the
connections functionally. Perhaps a good claim set has
aspects of each of these.
Or, it may be possible to argue the claim already does the above
and doesn't need amendment. By carefully explaining how
certain limitations show connection from one element to another,
and other limitations show relationship of one element to another,
it may well be possible to argue that the claims have sufficient
connectivity and show sufficient relations among the elements as to
have sufficient structure for patentability. To amend, argue
or both, and how, will be situation specific. This is all
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.