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 ababooks.com. Final-printing copies of the first edition may still be available at amazon.com 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 www.sluskyseminars.com.) Ron can be reached at 212-246-4546 and email@example.com.
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...