Claims narrowing

Claims narrowed by further defining an element or the relationship between elements. Transitional element "wherein" is used to add limitation. Narrowing can be both adding an element and further defining its relationship. 

Once this process has been completed for each of the essential elements, patent claims maybe drafted which cover the invention. These claims will cover, in the broadest sense, only those elements of the invention which are essential. Narrower, more focused claims, however, should also be included within the patent appHcation. These claims may focus on aspects of the invention that the appHcant beHeves are preferred, or may otherwise represent essential aspects of any commercial product that will stem from the invention. Finally, claims should also be drafted to cover alternative forms of the invention. Such alternative forms of the invention may not necessarily be considered to be preferred commercially, but they may present an area where a competitor could attempt to engineer "around" the invention. 

If, upon review of the patent, the patentee discovers that the claims contain a formal error, are too narrow, or are too broad in view of the prior art, the patentee may ask the U.S. PTO to correct this error. There are four administrative vehicles for correcting errors in issued patents. The appHcation of each of these mechanisms is dependent on the nature and severity of the error, as weU as the source of its creation. 

Suggested Best Practices for Chemists 1. Claims in a patent application tend to begin broadly and then narrow down to important individual compounds. Scrutinize application claims to make sure the most important compounds (e.g., clinical candidates and backups) are individually claimed. One important compound = one claim. 

Chapter 31 provided that anyone could request the Patent Office at any time to reexamine an issued patent by citing new references. Written arguments could be submitted, the patentee could narrow his claims, and the Patent Office would reexamine the patent in the light of this new information. If, during litigation, the validity of a patent were attacked because of new references that weren t before the Patent Office, Chapter 31 required that this too go to the Patent Office for reexamination and for an advisory opinion by the examiner. This is based on the statistic that somewhat over 70% of the patents that the courts have held invalid over the past few years were held invalid on the basis of references that were not before the Patent Office, and presumably if the Patent Office had had the references, they would not have issued the patent. Reexamination under Chapter 31 would be limited to published references, and thus there would be no need for discovery or depositions or cross-examination. It would be an inexpensive procedure that would cover almost all of the reasons for invalidity that could arise in a fullblown opposition proceeding. 

Specificity. The generally claimed specific action of enzymes is not as sharply defined as is often expected. Proteases are broad in the range of amino acid bonds they hydrolyze and exhibit only a degree of specificity. Careful investigation of the range of bonds attacked, and testing for comparable action on the actual protein target, will enable an enzyme to be chosen that has suitable performance. Some proteases are extremely narrow in their action, for example the various cheese rennets. 

Kovacova (1990) describes a method for the batch drying of fruit and vegetable pulp in a fluidized bed in which carrier particles (variously crystalline and caster sugar, dried skim milk, potato and wheat starch, apple powder, semolina or oat flakes), pre-moistened to a solids content of between 55% and 76%, are fed to a preheated fluidized bed and sprayed with the pulp to be dried. A product with a narrow particle size distribution and a uniform pulp content is claimed. Specific foods for which fluidized bed granulation has been used include potato puree (Zelenskaya and Filipenko, 1989) and granulated dried apple (Haida et al, 1994). 

In the case of the matrix effect, contrary to the autopoietic experiments described earlier, there is no need of water-insoluble precursors - it is the very addition of the same surfactant to an already existing family of vesicles that brings about the multiplication of the same size distribution. All that is needed is an initial narrow distribution of vesicles, and a continuous addition of fresh surfactant. Methods to obtain narrow size distributions in the case of spontaneous vesiculation have been described (Domazou and Luisi, 2002 Stano et al., in press). In fact a prebiotic scenario may be conceived where the fresh surfactant is continuously synthesized in situ, and thanks to the matrix effect the same sizes are propagated over and over again. Of course there is no way to demonstrate that this is what really happened in prebiotic times - it is fair, however, to claim that, given the simpUcity of the process, there is a reasonable probability that a process of this sort may have occurred (Luisi et al, 2004). 

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