By Ronald SluskyRonald Slusky mentored dozens of attorneys in “old school” invention analysis
and claiming principles over a 31-year career at Bell Laboratories. He is now in private practice in New
York City. This article is adapted from his book “Invention Analysis and Claiming: A
Patent Lawyer’s Guide” published by the American Bar Association and
available at ababooks.org. Ron can be reached at 212-246-4546 and
rdslusky@verizon.net.
We have seen in previous columns that a desirable way of arriving at the broadest
claim to an invention is to Begin from the Problem [Not the Embodiment]. We first identify
the problem the invention is intended to solve, think about how—broadly and
functionally—the problem was solved and then write a problem-solution statement
that reflects what we’ve figured out. The claim itself can then be written based on the problem-
solution statement.
Last month’s column, in particular, offered two
prescriptions—Start Early and Think Big—that can help us to
analyze the inventor’s embodiment(s) in broad problem/solution terms. This and future columns
offer further invention analysis paradigms that can aid in the quest for the broad invention—a
quest that the author calls “Reaching for Breadth.” Next month’s column, however...
