Invention Analysis and Claiming:
"Adapted to," "Wherein," and "Whereby" -- Part II1
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) 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 seminars, including in-house and one-on-one in his New York Office-based on the teachings in his book. Details at www.sluskyseminars.com Ron can be reached at 212-246-4546 and email@example.com.
This is the second of two columns discussing MPEP 2111.04, entitled "Adapted to," "Adapted for," "Wherein," and "Whereby" Clauses.
Here is the MPEP provision:
Claim scope is not limited by claim language that...does not require steps to be performed, or by claim language that does not limit a claim to a particular structure.... [E]xamples of claim language....that may raise a ques...