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. Ron is now in private practice in New York City and is the author of “Invention Analysis and Claiming: A Patent Lawyer’s Guide,”(American Bar Association, 2007) Ron’s two–day seminar based on his book will be given this year in Boston, New York, Washington DC, Chicago, Santa Clara and Las Vegas.. For details see www.sluskyseminars.com Ron can be reached at 212-246-4546 and firstname.lastname@example.org.
Depending on my mood, I am amused, frustrated or angered when an examiner rejects a claim under 35 USC 112, ¶2 as being in her view "incomplete" while at the same time reproducing ¶2's provision that a claim should set forth that which the applicant regards as the invention.
So it was in an Office action I received recently. All claims were rejected under 35 USC 112, ¶2, as being "incomplete for omitting essential elements." According to the examiner, my broad claims to the device A+B+C needed to further recite the disclosed, but unclaimed, features D and E because "it is unclear how the claimed device could function as intended without" those features.
This is an improper ground of rejection.
Where Would It All End?
Claims are not intended or required to teach anything. A claim passes muster under 35 USC 112, ¶2 so long as a) it has a meaning that is discernible to one of ordinary skill in the art and b) so long as the applicant has not otherwise indicated, e.g., during prosecution or in the specification itself, that the claim does not correspond with that which applicant regards as the invention. 2 Teaching is the realm of the specification, per section 112, ¶1, not the realm of the claims. It is thus irrelevant that a claim does not recite all ...