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Invention Analysis and Claiming:
Thinking Out of the §103 Box1

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 column is adapted from Ron’s widely praised book, “Invention Analysis and Claiming: A Patent Lawyer’s Guide, (American Bar Association, 2007). Ron presents CLE-accredited one- and two-day seminars based on his book both in public venues and in-house. Details at Ron can be reached at 212-246-4546 and

First Be a Skeptic, Then Be an Advocate

Our experience may tell us in a given case that the invention as broadly presented by the inventor would likely be deemed. Thus last month’s column urged that the practitioner should “first be a skeptic.” The inventor needs to be challenged in such a case to articulate why an invention so broadly defined would not have been so obvious after all.

The point of such skepticism is to open a dialog that hopefully will bring to the fore possible arguments against the obviousness rejection that we believe is likely to come if the present broad view of the invention is maintained. Having first been a skeptic, the practitioner is better armed to be the invention’s advocate.

Last Month’s Exercise—The Upside-Down Ketchup Container

Having exhorted us to first be a skeptic and then be an advocate, last month’s column went on to present an exercise for the reader based on the assumed-novel ketchup container shown in FIG. 2. This container has its label upside down relative to the prior art configuration shown in FIG. 1.

The claim we initially thought we wanted was this:

1. A container for a flowable material, the container having a capped dispensing end on which the container can stably stand and having a product name so disposed on the container that the product name is...

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