Claims with Functional Language-- Part III¹

Ronald 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. Ron is the author of "Invention Analysis and Claiming: A Patent Lawyer's Guide," (American Bar Association, 2007) and presents CLE-accredited one- and two-day seminars based on his book both in public venues and inhouse. Details at www.sluskyseminars.com. Ron can be reached at 212-246-4546 and rdslusky@verizon.net.

A claim that uses functional language to define how the invention differs from the prior art is said to be "functional at the point of novelty." We saw in the previous two columns that such a claim is unduly—i.e. unpatentably—functional when the functional language is, in effect, nothing more than a boast that a known or obvious problem has been solved. As the U.S. Supreme Court put it in General Electric Co. v. Wabash Co., "[A] characteristic essential to novelty may not be distinguished from the old art s...