Claim scope

The Notice of Errors should resolve those problems which are evident on the face of the patent but which also may be, by their nature, obvious and correctable problems to someone reading only the patent. The Notice of Errors does not result in a further pubHcation by the U.S. PTO, but rather it is instead placed into the examination history of the issued patent and thus is available to anyone who may wish to read this examination history. The Notice of Errors is appropriate for correcting simple matters which do not affect the claim scope or the vaHdity of the patent. 

The specific circumstances under which corrections may be made are provided for in 37 CFR 1.48 and in brief depend on whether the correction is after the oath/declaration of inventorship have been filed (1.48 a), the correction is due to a change in claim scope during prosecution of a nonprovisional patent application (1.48 b and c), or the correction is adding or deleting inventors from a provisional application (1.48 d and e). 

Conversely, a claim that is narrow in scope will allow others more room to maneuver outside of the narrower claim scope. However, narrower descriptions of the invention are often more readily enabled since they don t require broad support in the patent specification, and furthermore, the invention is less likely to be anticipated by the prior art since the narrower claim, by occupying less territory, is less likely to overlap with the prior art. So what is an inventor to do Should the inventors go for broke and claim their invention as broadly as possible but at the same time increase their risk of patent invalidity Or should they instead take a conservative approach and claim narrowly Well, as it turns out, the skillful applicant might be able to have her cake and eat it too A U.S. patent can issue with an unlimited number of claims and thus a chemical invention can be claimed from broad to narrow, all within the... 

See MPEP 2163.05 for discussion of changing claim scope during patent prosecution. 

Why would the applicant wish to make the amendment First, if he doesn t, then the originally claimed Markush of claim 1 would be anticipated (rendered not novel) as it is currently written recall that a single earlier disclosed species falling within a later claimed Markush will anticipate the later claimed Markush structure. By redrawing the Markush definition carefully, it is possible to exclude the anticipating species while minimizing the amount of claim scope lost. Unfortunately the applicant in this case is almost certain to get a new matter rejection because at the time of filing,... 

Before applying the Wand s factors to claim 1, we stipulate at the outset that the peptides of claim 1 can be made without undue experimentation. It is accepted that the state of the art with regard to peptide synthesis coupled with the applicants teaching are sufficient to satisfy this aspect of 35 U.S.C. 112 1. In contrast, however, a credible utility is not established throughout the claimed scope. The Wand s factors have been applied as follows ... 

The claims are critically important. They require careful drafting, preferably by highly qualified and experienced patent counsel, to cover the invention as broadly and comprehensively as appropriate. Normally the claims should be drafted as broadly as the prior art and the specification allow. Allowable claim scope will, of course, depend in large part on the state of the art. Inventions in a crowded art (i.e., technology with a relatively large amount of closely related prior art) can generally only be claimed relatively narrowly. Inventions for which there is relatively little prior art can be claimed more broadly. Generally, one attempts to draft one or more independent claims that describe the invention as broadly as the prior art will allow and then narrower, dependent claims specific to pre-... 

Although the Festo decision would lend certainty to the determination of patent scope, there is concern that it represents an overly rigid approach that will, in effect, severely restrict patent rights. The Supreme Court recently vacated the Federal Circuit s Festo decision and returned the case to the Federal Circuit for further consideration. The claim scope actually surrendered with the amendment will, however, apparently remain an important consideration in applying the doctrine of equivalents and prosecution history estop-... 

---