By Ronald Slusky
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. 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 email@example.com.
An invention should be claimed as broadly as the prior art will allow.
Some practitioners are taught that the best way to arrive at such a claim is a process that the author refers to as “pruning and distilling.” A claim of some indetermine breadth is drafted. The claim is then broadened by pruning away limitations; broadening individual recitations; and/or coalescing two or more limitations into a single one (e.g., “pointing” and “clicking” become “selecting). The process continues until any further broadening would cause the claim to read on the prior art. That which remains is supposedly the broadest possible claim to the invention.
Previous columns2 showed how this is a sub-optimal strategy because the underlying invent...