Invention Analysis and Claiming:
How Should That Claim Be Amended? Part 2

By Ronald Slusky

Last month's column discussed the use of the problem/solution paradigm to identify appropriate limitations when amending claims in view of cited prior art. Although not presented as such, that column focused on the scenario in which the cited prior art is invention-relevant, meaning prior art that not only meets the claim language but also teaches what we had thought to be the inventor's broad inventive concept.

This month we look at the scenario in which the cited prior art is invention-irrelevant. This is prior art that serendipitously meets the claim language but does not teach or embody the inventor's contribution to the art.

The difference is significant because the way we should amend depends on whether cited prior art is invention-relevant or invention-irrelevant—that is whether it does or does not disclose the inventive concept.

Suppose, for example, we have filed a patent application directed to the idea of mounting a building or other large structure on springs to dampen earthquake vibrations and thereby protect the structure from damage or collapse (FIG. 1), with the following as claim 1:

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

If the examiner ...