Invention Analysis and Claiming:
How Should That Claim Be Amended? Part 1¹

By Ronald Slusky

The final form of a claim should not depend on when the prior art that shaped it comes to light. But the reality is sometimes different.

When drafting a claim initially, we may deem it "done" only to realize that it still reads on some piece of prior art we thought we were avoiding.

Returning to the word processor, we might find that avoiding that last piece of prior art may be no simple matter. As new limitations are added to deal with the new piece of art, others may be able to be taken out and/or the context may be redefined—all to make the claim as broad as possible without reading on any prior art, including that last new piece. Everything in the claim is up for grabs until the day the application is sent over to the inventor for signature.

However, once the patent application is filed, a different mindset seems to take over. The claim and its limitations take on a sacrosanct quality they didn't have before the application was filed. So when examiner-cited prior art makes it necessary for the claim to be amended, our tendency is to band- aid the claim by finding some limitation in the embodiment not contained in the cited prior art and simply engrafting that limitation onto the original claim. This can lead to the same claim we would have arrived at had we known about the cited prior art ab initio. Often, however, it does...