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” (American Bar Association 2007). Visit www.sluskyseminars.com for information on the two-day seminar taught by Ron based on his book. Ron can be reached at 212-246-4546 and rdslusky@verizon.net.
It is desirable for the overall claim suite in a patent application to include multiple claim families—a “family” being an independent claim and the claims which depend from it, either directly or indirectly. Among the reasons are to a) define the broad invention in more than one way,2 b) present the invention in various settings,3 and c) define the invention using various statutory claim types. If each claim family were to include dependent claims reciting even a modest number of fallback features and terminology definitions in all of their possible combinations, the overall claim count could get quickly get out of hand. Yet we do want to provide effective fallback positions ...
