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Invention Analysis & Claiming:

"Adapted to," "Wherein," and "Whereby" -- Part I1

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. The second edition of Ron's book, "Invention Analysis and Claiming: A Patent Lawyer's Guide" (American Bar Association, 2d Ed., 2012) is available at Final-printing copies of the first edition may still be available at and other on-line book sellers. Ron also offers one- and two-day seminarsžincluding in-house and one-on-one in his New York Officežbased on the teachings in his book. (Details at Ron can be reached at 212-246-4546 and

One of the banes of the patent practitioner's existence is MPEP 2111.04, entitled "Adapted to," "Adapted for," "Wherein," and "Whereby" Clauses.

I say "banes" because the MPEP states that such clauses "may raise a question as to the limiting effect of the language in a claim [emphasis added]" but the MPEP gives precious little guidance to examiners as to how to actually resolv...

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