Reining in Overbreadth—Part II
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Invention Analysis and Claiming:
Reining in Overbreadth—Part II1

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 all major on-line bookstores. Ron can be reached at 212-246-4546 and

A claim that is too broad, i.e., reads on prior art, needs to be narrowed into the patentable realm.

But when is a claim too broad?

We saw last month that we must not view our claim language through the lens of our own disclosure. The words of a claim must be compared to the prior art as an examiner will, to see if there is some way—any way—that the words of the claim can be made to read on prior art, whether relevant to the inventive contribution or not.

Consider, for example, claim 1 directed to the concept of mounting buildings, water towers and similar large structures on springs to provide earthquake protection:

1. Apparatus comprising
a structure, and
one or more springs supporting the structure.

Even if the inventive concept were new and non-obvious, this claim is too broad. It reads on bathroom scales, pogo sticks a...

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