Mech Draft

Advanced Claim Drafting in
the Mechanical Arts

6/26/03
Presented by: Mike Schwegman,
Rich Billion, Suneel Arora,
Catherine Klima and Tim Clise
1
Copyright 2003 Schwegman, Lundberg, Woessner & Kluth, P.A.
Hot Topics
Micheal L. Schwegman
B.S.E.E., J.D.
Electronics, computer hardware and
software; networks and communications;
medical, optics, instrumentation and control
systems
2
Richard E. Billion
B.S.M.E., J.D., M.B.A .
Electro-mechanical and mechanical arts, with an
emphasis on computer hardware and
peripherals, medical devices and development
of patent proof packages for asserting client's
patent portfolios in licensing situations.
3
Transitional Terms
Terms used generally to introduce functional
language:
Wherein, Therein, Whereby, Thereby, So that,

Such that, Configured for, and Adapted to
4
MPEP Guidance on Transitional Terms

Language that suggests or makes optional
but does not require steps to be performed or

does not limit a claim to a particular structure
does not limit the scope of the claim or claim
limitation. MPEP 2106 (C)
Examples: adapted to or adapted for

wherein or whereby
As a general matter, the grammar and
intended meaning of the terms used in a

claim will dictate whether the language limits
the claim scope. MPEP 2106 (C)
5
General Guidance on Transitional Terms

To ascertain the meaning of the claims, we
consider three sources: The claims, the

specification, and the prosecution history.
Unique Concepts, Inc. v. Brown, 939 F.2d
1558,1561 (Fed. Cir. 1991).
6
Wherein
Places further limits on the element or step
that the wherein clause refers to. Griffin v. M.

Bertina 285, F. 3d 1029,1033-34 (Fed. Cir.
2002).
Wherein introduces limiting material
7
Wherein
the Board did not err in giving limiting
effect to the wherein clauses because they

relate back to and clarify what is required in
the count. Each wherein clause refers to the
point mutation, giving meaning and purpose
to the manipulative steps. Griffin v. M.
Bertina 285, F. 3d 1029,1033 (Fed. Cir.
2002).
8
Therein
Generally do not see this used in a claim to
add functional language

Used for same purpose as wherein but
recitation generally directly follows element
Term therein relates back to the element
like Griffin v. M. Bertina
9
Whereby
Sometimes further restricts an element
Example: Interpretation of contested claim in
Markman based content of a whereby clause
10
Claim 1 in Markman
The inventory control and reporting system, comprising:
a data input device for manual operation by an attendant, the input device having
switch means operable to encode information relating to sequential transactions,
each of the transactions having articles associated therewith, said information
including transaction identity and descriptions of each of said articles associated
with the transactions;
a data processor including memory operable to record said information and means
to maintain an inventory total, said data processor having means to associate
sequential transactions with unique sequential indicia and to generate at least one
report of said total and said transactions, the unique sequential indicia and the
descriptions of articles in the sequential transactions being reconcilable against one
another;
a dot matrix printer operable under control of the data processor to generate a
written record of the indicia associated with sequential transactions, the [**10]
written record including optically- detectable bar codes having a series of
contrasting spaced bands, the bar codes being printed only in coincidence with
each said transaction and at least part of the written record bearing a portion to be
attached to said articles; and,
at least one optical scanner connected to the data processor and operable to detect
said bar codes on all articles passing a predetermined station,
whereby said system can detect and localize spurious additions to inventory as well
as spurious deletions there from.
11
Markman Opinion
We agree with the trial court that the term "inventory" refers, at
least in part, to articles of clothing, contrary to Markman's

contention that "inventory" may be limited to just cash or
inventory receipts. As the district court noted, the claim phrase
"detect and localize spurious additions to inventory as well as
spurious deletions therefrom" does not make sense using
Markman's definition of "inventory." Dollars or invoice totals are
not "localized" since dollars do not travel through the cleaning
process and the location of invoices is irrelevant. Location is
relevant to clothing, since it moves through and sometimes
without the establishment, where it can be lost, stolen, or
damaged. Also, "spurious" additions and deletions logically
relate to clothing because "dollars" would not be spuriously
added to a dry-cleaner's inventory. Thus, the language of the
claim itself suggests the conclusion that the dry-cleaner's
"inventory" includes clothing. Markman v. Westview Instruments,
Inc. 52 F.3d 967,982
12
Whereby
Sometimes whereby clause has no effect
A whereby clause that merely states the
result of limitations in the claim adds nothing

to the patentability or substance to the claim.
Texas Instruments, Inc. v. United States Intl
Trade Commn, 988 F.2d 1165.
13
Whereby Clause without Effect

The process for encapsulating a semiconductor device comprising:
electrically connecting each of the electrical terminals of the

device to a conductor and mechanically attaching a portion of said
device to at least one of the conductors for support;
disposing the conductors generally in a common plane;
.
holding the ends of the conductors extending from the mold cavity
while injecting a fluid insulating material into the mold cavity on the
other side of the plane to subsequently solidify and embed said device,
the fluid insulating material being injected into a portion of the cavity
remote from the device and the means electrically connecting the
terminals of the device to the conductors, whereby the fluid will not
directly engage the device and electrical connection means at
high velocity, and the conductors will be secured against
appreciable displacement by the fluid.
(U.S. Patent No. 4,043,027)
14
Whereby Rule
Non-limiting only when the recitation merely
states the necessary result of limitations in

the claim
If whereby language adds anything it will be
interpreted as a limitation
The name of the game is the claim (150
F.3d 1362, 1369)
15
Thereby, Such that, So that Rule

Non-limiting only when the recitation merely
states the necessary result of limitations in

the claim
If language adds anything it will be
interpreted as a limitation
16
Configured for, Adapted to

This language attempts to claim
Non-operational modes
Shapes without specificity
17

National Presto Indus. v. West Bend Co. 76
F.3d 1185 (Fed. Cir.1996)

National Presto Indus. v. West Bend Co. 28
USPQ 2d 1049 (W.D. Wis. 1993)
18

Argued configured for at trial level but did not
reach resolution
Both sides agreed that language dealt with
shape
West Bend Co. made means for type
arguments (bringing additional structure to the
claim)
Fed. Cir. said that West Bend Co. position with
respect to configured to was correct.
National Presto Indus. v. West Bend Co. 76 F.3d
1185 (Fed. Cir.1996)
19
Configured for and

Adapted to Guidelines
Limiting as to shape
No cases found regarding operation
Appears to invoke structural limitations from
specification
20
Configured for and

Adapted to Guidelines, cont.
Wherein and Therein limit claim element
Maybe Class of terms: Whereby, Thereby,
Such that, So that

Configured for and Adapted to appears to
trigger limitations and invoke structural
limitations from specification
21
Suneel Arora
B.E.E., J.D.
Patent Prosecution, Infringement Opinions,
Licensing, and Due Diligence Investigations
in electrical, mechanical, and biomedical arts.
22
How are Claims Interpreted under 35

U.S.C. 112, 6 ?
Where expressed in means-plus-function
language, a claim limitation will be interpreted

to cover the recited functions corresponding
structure, material, or acts described in the
specification and the equivalents thereof, to
the extent that the specification provides such
disclosure. See 35 U.S.C. 112, 6 (2000);
see also In re Donaldson Co., Inc, 16 F.3d
1189, 1193 (Fed. Cir. 1994) (en banc).
23
Will your Apparatus Claim be Interpreted

under 35 U.S.C. 112, 6?
Means typically triggers 112, other
language typically does not. See

Greenberg v. Ethicon Endo-Surgery,
Inc., 91 F.3d 1580 (Fed. Cir. 1996).
24
If Means Language is Present in

your Apparatus Claim:
Use of the term means typically triggers
analysis under 112, 6, unless:
(1) no corresponding function is recited in the

claim limitation, or
(2) the claim limitation recites sufficient structure
or material for performing that entire recited
function. See Sage Prods. v. Devon Indus.,
Inc., 126 F.3d 1420, 1427 (Fed. Cir. 1997); see
also Rodime PLC v. Seagate Tech., Inc., 174
F.3d 1294, 1302 (Fed. Cir. 1999).
25
Example of (1), no corresponding

function recited in claim limitation:
means formed on the . . . sidewall portions
including a plurality of spaced apart . . . members

protruding from the . . . sidewall portions and
forming load locks. See York Prods. Inc. v.
Central Tractor Farm & Family Center, 99 F.3d
1568 (Fed. Cir. 1996).
This is outside of 112, 6 because there is no
recited function corresponding to the means.

26
Example of (2), enough structure is

recited for performing the function:
Perforation means extending from the leg band means to
the waist band means through the outer impermeable

layer means for tearing the outer impermeable layer
means for removing the training brief in case of an
accident by the user See Cole v. Kimberly-Clark Corp.,
102 F.3d 524, 526-27 (Fed. Cir. 1996).
Outside of 112, 6 perforation is enough structure to
perform entire recited function.

Describing the physical location and extent of the structure
also helped push this outside of 112, 6.
Compare with Unidynamics, discussed below.
27
Even if means isnt present, beware of

112, 6:
While the absence of the language means for
usually avoids interpretation under 112, 6, the

Federal Circuit has clearly held that lack of traditional
means for language does not prevent a limitation
from being construed as a means-plus-function
limitation. Cole v. Kimberly-Clark Corp., 102 F.3d
524, 531 (Fed. Cir. 1996); see also Raytheon Co. v.
Roper Corp., 724 F.2d 951, 957 (Fed. Cir. 1983)
(construing functional language introduced by so
that to be equivalent to means for claim language).
28
How might you unintentionally fall

into 112, 6?
Even without means for language, interpretation
under 112, 6 is appropriate if the claim

limitation lacks sufficiently definite structure for
performing the recited functionunless the claim
limitation has a generally well-understood meaning
in the relevant art as the name for one or more
structures. See Mas-Hamilton Group v. LaGard,
Inc., 156 F.3d 1206, 1213-14 (Fed. Cir. 1998);
Greenberg v. Ethicon Endo-Surgery, 91 F.3d 1580,
1583 (Fed. Cir. 1996).
29
What will the judge look at?

Both intrinsic and extrinsic evidence are relevant to the question of
whether a claim limitation has a generally well-understood structural

meaning in the art. See Personalized Media Communications, L.L.C. v.
U.S. Intl Trade Commn, 161 F.3d 696, 703 (Fed. Cir. 1998).
Recent Federal Circuit cases finding a disputed claim limitation to have
a sufficiently well-understood structural meaning, thereby avoiding

112, 6, have typically relied on the presence of a dictionary definition
to establish that the terms meaning as one or more structures is wellunderstood. See Personalized Media, 161 F.3d 696, 705 n.12.
To avoid 112, 6, the drafter should try to use terms that are found in
a dictionary, and that refer to structure(s). Being your own

lexicographer may unexpectedly land you within 112, 6.
See, e.g., Naylors Dictionary of Mechanical Engineering.
30
Example 1 Mas-Hamilton Group v.

LaGard, Inc., 156 F.3d 1206 (Fed. Cir. 1998)
Claim language: a substantially non-resilient
lever moving element for moving the lever from

its disengaged position for engaging the
protrusion of the lever with the cam surface.
Form: [adjectival language] + [noun] + [ purely
functional language]
Held: Within 112, 6.
No means, so presumptively outside 112, 6.

Lever moving element isnt generally understood
in the art as referring to structure(s).
31
Example 1 contd.
Consider: a substantially non-resilient member for. . .
element includes definitions that encompass parts or
substances.
member includes at least one definition that reads a
part of a building or other structure.
Choose your noun carefully.
Remove duplicative purely functional adjectival
language.
What about other adjectival language preceding the
noun? Doesnt non-resilient convey a structural quality
of the noun?
32
Example 1 contd.
Consider: member/mechanism/device for moving the lever . . .
a bare generic structural term risks being interpreted as means
invoking 112, 6. See Personalized Media Comm. v. ITC, 161
F.3d 696, 704 (Fed. Cir. 1998).
These generic structural terms are still better than using means.
Compare Interspiro, Inc. v. Figgie Intl., 815 F. Supp. 1488 (D. Del.
1993) (detent means for [function], which was found within 112, 6)
with Greenberg v. Ethicon Endosurgery, Inc., 91 F.3d 1580 (Fed. Cir.
1996) (detent mechanism defining the conjoint rotation of said shafts in
predetermined intervals, which was found outside 112, 6.)
Could modifiers help steer toward a structural interpretation? Can a

modifier avoid use of the generic structural term altogether? (e.g.,
use the noun detent rather than detent mechanism.)
33
Example 2 Personalized Media Comm.

v. ITC, 161 F.3d 696 (Fed. Cir. 1998)
Claim language: digital detector operatively
connected to a mass medium receiver for detecting . .

. and transferring
Form: [adjective] + [noun] + [connecting language] +
[purely functional language]
Held: Outside of 112, 6.
Detector alone has well-known meaning as
structure(s)
Therefore, digital doesnt affect the analysis.
Comment: digital is fairly neutral regarding structure
vs. function
34
Adjectival language was recently addressed in Apex,

Inc. v. Raritan Computer, Inc., 325 F.3d 1364 (Fed.
Cir. 2003)
Claim limitations used the nouns circuit, interface, and
unit accompanied by functional language.
e.g., a first interface circuit for receiving keyboard and cursor

control device signals from the workstation.
The district court held that these nouns didnt connote
sufficient structure to perform the recited functions, placing

the limitations within 112, 6.
The Federal Circuit found error in this reliance on single
words of the limitations (e.g., circuit), as opposed to the
limitation as a whole.
While we do not find it necessary to hold that the term
circuit by itself always connotes sufficient structure, the
term circuit with an appropriate identifier, such as
interface, programming, and logic certainly identifies
some structural meaning to one of ordinary skill in the art.
35
Apex, Inc. v. Raritan Computer, Inc., contd.

Every use of the term in the asserted claims includes
additional adjectival qualifications further identifying sufficient

structure to perform the claimed functions to one of ordinary
skill in the art. . . [This] further narrows the scope of those
structures covered by the claim and makes the term more
definite.
But werent some of these modifiers rather functional (e.g.,

programming and interface)? This is probably okay where
the noun (circuit) connotes structure(s), but could be
dangerous where the noun is not understood as one or more
structures (e.g., element, unit, etc.)
Also, because the adjectives narrow the claim scope, they
should be judiciously selected by the drafter to avoid giving up
too much coverage.
36
Example 3 Unidynamics Corp. v. Automatic

Prods., 157 F.3d 1311 (Fed. Cir. 1998)
The claim limitation read: spring means tending to
keep the door closed.
Held: Within 112, 6, because use of means
presumptively places it within 6, and the structure

spring isnt enough to rebut the presumption.
But doesnt this differ from Cole (perforation means)
only in that this claim failed to recite the physical

location and extent of the structure? Because adding
such limitations will further narrow the claim, the
better solution is to simply drop the term means.
37
Example 4 Overhead Door Corp. v.

Chamberlain Group, Inc., 194 F.3d 1261
(Fed. Cir. 1999)
The claim limitation read: memory selection second
switch means being adapted to select a first position .

. . and a . . . second position.
Held: Within 112, 6.
Consider: memory selection second switch forming
a selectable connection to a first position and a

second position.
38
Example 5 Sage Prods. v. Devon

Indus., 126 F.3d 1420 (Fed. Cir. 1997).
The claim limitation read: closure means pivotably
associated with said plate means and being movable

with respect to said slot means for controlling access
thereto.
Held: Within 112, 6, because it uses means
and doesnt recite any structure for closing the slot to
control access to the slot.
Consider: a cover coupled to said plate by a pivot
joint, the cover movable with respect to the slot to
cover the slot.
39
Claim Differentiation: Your Structural

Dependent Claim Wont Save You
A means-plus-function limitation is not made
open-ended by the presence of another claim

specifically claiming the disclosed structure
which underlies the means clause or an
equivalent of that structure. Laitram Corp. v.
Rexnord, Inc., 939 F.2d 1533 (Fed. Cir.
1991).
40
Will your method claim be interpreted

under 35 U.S.C. 112, 6?
Step for typically triggers 112, other language
typically does not. See Greenberg v. Ethicon EndoSurgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996).
Step of is different from Step for. The latter tends
to trigger 112, the former does not. See Seal-Flex,

Inc. v. Athletic Track & Court Construction, 172 F.3d
836 (Fed. Cir. 1999) (Radar, J., concurring).
41
If Step for language is present in

your claim
Step for (but not step of) triggers analysis under
112, 6, only when steps plus function without acts

are present. O.I. Corp. v. Tekmar Co., Inc., 115 F.3d
1576 (Fed. Cir. 1997).
The Courts language appears slightly less
presumptive than the means for case:
Means for triggers 112, 6 unless other

condition(s) are met.
Step for triggers 112, 6 only if another condition is
met (i.e., function without acts).
42
Even if Step for is not present in

your claim, beware of 112, 6
If Step for is absent, the claim limitation cannot
be construed as a step-plus-function limitation

without a showing that the limitation contains no
act. Masco v. United States, 303 F.3d 1316
(Fed. Cir. 2002).
Despite this strong language, this may be an
even more powerful vortex than for apparatus
claims, as will be discussed below.
The recent Masco case followed the reasoning of
Judge Radars concurrence in Seal-Flex, Inc. v.
Athletic Track & Court Construction, 172 F.3d
836 (Fed. Cir. 1999).
43
How will a judge distinguish between

acts and function?
The underlying function of a method claim element
corresponds to what that element ultimately accomplishes in

relationship to what the other elements of the claim and the
claim as a whole accomplish. Acts, on the other hand,
correspond to how the function is accomplished. Masco,
303 F.3d 1316.
Function = what the element ultimately accomplishes
Act = how the function is accomplished
Compare/analogize to the function/way/result test for
equivalent structures under the doctrine of equivalents:
DOE
Function
Way
Result
Masco/Seal-Flex
?
Act
Function
44
Masco v. United States, 303 F.3d 1316 (Fed.

Cir. 2002), (interpreting method claims
pertaining to a lock mechanism)
The claim limitation read: transmitting a
force applied to the dial to the lever after the

lever and the dial have been operably
connected to drive the lever to a position
where the protrusion can contact the surface
of the cam wheel in such a manner that the
lever will be pulled by the cam wheel during
rotation of the cam wheel.
Held: This falls outside 112, 6.
Function: To drive the lever into the cam

Act: transmitting a force
45
Masco v. United States, contd.

Some Hypothetical claim limitations to
consider in light of Masco:
driving the lever to a position where the

protrusion can contact the surface of the cam
wheel in such a manner to permit the lever to be
pulled by the cam wheel during rotation of the
cam wheel.
permitting the lever to be pulled by the cam
wheel during rotation of the cam wheel.
driving the lever to a desired position.
positioning the lever
46
Seal-Flex v. Athletic Track & Court

Construction, 172 F.3d 836 (Radar, J.,
concurring)
The claim limitation read: a method for constructing
an activity mat over a foundation comprising the

steps of: . . . spreading an adhesive tack coating for
adhering the mat to the foundation.
Held: This falls outside of 112, 6.
Doesnt use steps for language, but rather steps of.

The function of adhering is the result achieved by
performing the claimed act of spreading.
The preposition for introduces this underlying
function and links the adhering function to the act of
spreading.
47
Seal-Flex v. Athletic Track & Court

Construction, contd.
Dangerous Dicta?
a step for adhering the mat to the foundation would have
triggered 112, 6.
adhering the mat to the foundation would also have triggered
112, 6.
Method claim limitations are often drafted like the latter
example. Is adhering an act, or a function/result?

The Seal-Flex concurrence admits that it is difficult to
distinguish between an act and a function:
Both acts and functions are often stated in verbs ending in

ing.
For instance, if the method claim element at issue in this case
had merely recited the step of spreading an adhesive tack
coating, it would not have been clear solely from this
hypothetical claim language whether spreading was a function
or an act.
48
Example 1 Serrano v. Telular Corp.,

111 F.3d 1578 (Fed. Cir. 1997)
The claim limitation read: said step of coupling further
comprising automatically determining at least the lastdialed number of the telephone number dialed on the
telephone communications-type device.
Held: This falls outside of 112, 6, because it recites
only an act, without reciting an accompanying function.
Is there any principled basis for distinguishing between
this determining the . . . number, from the adhering
the mat to the foundation dicta in the Seal-Flex
concurrence, such that determining constitutes an act,
and adhering constitutes a function/result?
49
Example 2 O. I. Corp. v. Tekmar Co.,

Inc., 115 F.3d 1576 (Fed. Cir. 1999)
The claim limitation read: the steps of . . . passing the analyte slug
through a passage."
The accused infringer argued that removing water vapor from an
analyte slug, recited in the preamble, was a function that converted
this element into a step-plus-function claim requiring interpretation
under 112, 6.
Held: This falls outside of 112, 6, because it recites only an act,
without reciting an accompanying function.
A statement in a preamble of a result that necessarily follows from
performing a series of steps does not convert each of those steps into
step-plus-function clauses.
The steps of passing are not individually associated in the claim with
functions performed by the steps of passing.
Is there any principled basis for distinguishing between this passing
the analyte slug through a passage, from the adhering the mat to the
foundation dicta in the Seal-Flex concurrence, such that passing
constitutes an act, and adhering constitutes a function/result?
50
Are claim drafters caught between a

rock and a hard place?
Under O.I. and Serrano, a drafter would want
to avoid including a function or result in

individual steps. Under Masco, however,
additionally including a result (what the
element accomplishes) might actually serve
to further emphasize that a recited act is how
the function is accomplished or the result is
obtained.
51
Example 3 In re Roberts, 470 F.2d

1399 (CCPA 1973)
The claim limitation read reducing the
coefficient of friction to below or about 0.40.
The Court opinion didnt directly address
whether this limitation is a step-plus-function

limitation.
This could arguably be interpreted as a result
without an accompanying act.
52
Example 4 Ex Parte Zimmerly, 153

U.S.P.Q. 367 (BPA 1966)
The claim limitation read raising the pH
The Court opinion didnt directly address
whether this limitation is a step-plus-function

limitation.
This could arguably be interpreted as a result
without an accompanying act.

53
Example 5 Generation II Orthotics, Inc.

v. Medical Tech., Inc., 263 F.3d 1356 (Fed.
Cir. 2001)
The claim limitations read:
locating a brace about the knee, said brace having a pair of

arms to contact the leg of the patient and a pivotable joint
between said arms to allow pivoting of the knee while
supporting the knee, a joint in the brace to allow controlled
medial and lateral inclination of each arm relative to a
pivotable joint
adjusting the inclination to provide the required bracing at
the required inclination
Held: Outside of 112, 6, because they do not use step for
[or step of] and contain no language that would overcome the
presumption that they are outside 112, 6.
Use of result-oriented language to allow. . . and to provide. . .
did not steer these method claim limitations toward 112, 6.
This is consistent with Masco.
54
Some Other Hypothetical Examples to

Consider:
Evacuating the chamber act or a result?
Compare: applying a reduced pressure for evacuating
the chamber
Providing a smooth surface act or a result?
Compare: smoothing a surface
Compare: providing a smooth surface to slide upon
Cladding a base by irradiating the base act need
not precede result
Compare: cladding a base including irradiating the

base this style is more open-ended, but will it be
interpreted as two separate elements?
55
Some Other Hypothetical Examples to

Consider, contd.
Obtaining a final product shape act or a result?
Compare: shaping the final product
Allowing an increase of the injection pressure over
the time period act or a result?
Compare: increasing the injection pressure over the

time period act or a result?
Compare: waiting for a time period for allowing an
increase of the injection pressure.
Limiting a steering angle act or result?

Compare: constraining a steering angle
Compare: constraining a steering angle for limiting
the steering angle within a predetermined maximum
value
56
Catherine I. Klima
B.S.M.E., J.D.
Patent Prosecution, Infringement Opinions,
Licensing, and Due Diligence Investigations in
the technology areas of mechanical and
electromechanical arts.
57
Advanced Claim Drafting in the

Mechanical Arts
Relative Terminology
Testing for Indefiniteness
Effective Use of Broadening Modifiers
Specific Examples
Preambles
When Interpreted as Limitations of claims
When Interpreted as Intended Use or Purpose
of the Invention
Claim construction using preambles
Specific Examples
58
Preamble as Limitations of Claim

Test: whether the language in preamble
necessary to give life, meaning, and vitality

to the claims.
Kropa v. Robie and Mahlman, 88 USPQ 478
(CCPA 1951)
What does this mean?
59
Kropa v. Robie and Mahlman

Upon review of 37 previous cases:
Preamble is non limiting:
Preamble states purpose of intended use
Claim, apart from preamble, completely
defines subject matter
Preamble is limiting:
Preamble expressly or by implication gives
effect of limitation
60
Preamble as Limitation
Preamble expressly gives effect of limitation
Dependence on disputed preamble phrase for
antecedent basis indicates reliance on preamble
to define claimed invention. Bell Communications
Research v. Vitalink Communications Corp.,
34 USPQ2d 1816 (Fed. Cir. 1995).
Preamble by implication gives effect of limitation
Nature of problem characterized the elements
comprising the article so as to distinguish the
claim . . . over the prior art.
Kropa, 88
USPQ at 481.
Clear reliance on preamble during prosecution to
distinguish the claimed invention from the prior

art transforms preamble into claim limitation.
61
Example of Preamble as Limitation

Gerber Garment Technology Inc. v. Lectra
Systems Inc., 16 USPQ2d 1436 (Fed. Cir. 1990)

Claim 15, US 3,790,154 In a machine having a
tool in the form of a cutting blade adapted to
normally pass through and beyond an object in a
cutting operation, an apparatus for holding the
object in a rigid condition while it is worked on by
the cutting blade, said apparatus comprising
support means defining a penetrable supporting

plane on which said object is placed in a cutting
operation for enabling the cutting blade passing
through . . .
62
Gerber (cont.)
Court found the cutting blade necessary to
give meaning to claim 15 and to properly

define the invention. Gerber at 1441.
Cutting blade appears in preamble, and is
referenced repeatedly in the body of the
claim. It is integral to the claim.
63
Example of Preamble as Limitation

Kropa v. Robie and Mahlman
Preamble: An abrasive article
The preamble gives life and meaning to claim

for it is only by that phrase that it can be
known that the subject matter defined by the
claims is comprised as an abrasive article.
Kropa at 481.
64
Example of Non-Limiting Preamble

C.R. Bard Inc. v. M3 Systems Inc., 48 USPQ2d 1225,
(Fed. Cir. 1998)

Claim 21: A biopsy needle for use with a tissue
sampling device having a housing with a forward
end, a first slide mounted for longitudinal motion
within said housing, and a second slide mounted
for longitudinal motion within said housing, said
biopsy needle comprising:
A hollow first needle having proximal and distal
ends; a second needle extending through said
hollow first needle . . .
65
C.R. Bard (cont.)

Ct found preamble simply states the intended
use of the invention.

Preamble of claim 21 describes a reference
point in the gun that aid in defining the
needles as set forth in the body of the claim.
C.R. Bard at 1231.
Patentability relates to the needles, not the
gun.
66
Definition: broadening modifier
Examples: substantially, about, essentially,
similar
Claim construction: used to avoid strict
interpretation of claims
Permissible, if not indefinite
67
Test for Indefiniteness
MPEP 2173.05(b)
Seattle Box Co. v. Industrial Crating &
Packing, Inc., 731 F.2d 818 (Fed. Cir. 1984)
Non-precise language not auto-indefinite

(under 35 U.S.C. 112, 2)
Look at the specification
Is there a standard for measuring that degree?

68
Test for Indefiniteness (cont.)
If no standard for measuring degree:
Whether one of ordinary skill reasonably

apprised of invention
Intrinsic and extrinsic evidence
Verve v. Crane Cams, Inc., 65 USPQ2d 1051
(Fed. Cir. 2002)
69
Verve v. Crane Cams

Examining Indefiniteness
Claim 1:
A push rod for an internal combustion engine

comprising: a single piece of metal in the form of
an elongated hollow tube having a middle portion,
first and second end portions and rounded seats
at the tips thereof, said middle portion having a
larger outer diameter than the end portions, and
said tube having substantially constant wall
thickness throughout the length of the tube and
the tips thereon.
70
Verve v. Crane Cams (cont.)

District Court: claim indefinite
Term substantially constant wall thickness
not defined in intrinsic evidence.
Fed. Cir.: Lower court erred in law, in
requiring that the intrinsic evidence of the

specification and prosecution history is sole
source of meaning of words. Remanded for
further proceedings, including recourse to
extrinsic evidence concerning usage and
understanding of term substantially.
71
Verve v. Crane Cams (cont.)

According to the Federal Circuit
The question is not whether the word
substantially has a fixed meaning as applied to
constant wall thickness, but how the phrase
would be understood by persons experienced in
this field of mechanics, upon reading the patent
documents. It may of course occur that persons
experienced in a technologic field will have
divergent opinions as to the meaning of a term,
particularly as narrow distinctions are drawn by
the parties or warranted by the technology.
Verve at 1054.
72
Claim Construction
Amhil Enterprises Ltd. Wawa Inc., 38 USPQ2d 1471
(Fed. Cir. 1996)

Claim 1:
A lid for containers, made of thin, flexible plastic, for

mounting on and receiving the bead of a container,
comprising: a central panel; a cavity extending around the
periphery of the lid and opening downwardly and inwardly to
receive the bead of a container to which said lid is fitted;
means connecting said cavity to said central panel; a skirt
portion extending downwardly from said cavity; said skirt
portion have a plurality of outwardly extending projections
each having a substantially vertical face with substantially
vertical side edges, and substantially vertical side walls
extending inwardly from said face; . . .
73
Amhil, cont.
Court found Applicant diluted broadening term of
substantially by using vertical with substantially

vertical in the specification.
Court noted during prosecution the patentee used
substantially vertical and vertical interchangeably.
Court concluded that patentee thought the
substantially vertical faces were essentially vertical.
Court interpreted claim 1 as having well-defined
faces that deviate only slightly, if at all, from the
vertical. Amhil, at 1476.
74
Amhil, cont.
What could Applicant have done differently?
Clear definition in specification

Use terminology consistently
Specification and in claims
Example: One option: substantially vertical. Another

option, vertical.
Other broadening language
Claim differentiation
Independent claim: substantially vertical
Dependent claim: vertical
75
Claim Construction
LNP Engineering Plastics Inc. v. Miller Waste Mills Inc.,
61 USPQ2d 1193 (Fed. Cir. 2001)
Pellets of reinforced thermoplastic material containing at

least 30% by volume of parallel, aligned reinforcing
filaments between 2 and 100 mm in length, the filaments
extending through the length of the pellets, the pellets
having been cut from a continuous reinforced product
prepared by melt pultrusion in which the filaments have
been substantially completely wetted by a molten
thermoplastic material, and which pellets can be injection
molded into an article in which the filaments are present in
the form of randomly dispersed individual filaments at least
50% by weight of the filaments of the pellets retaining a
length of greater than 2 mm in the molded article.
76
LNP Engineering Plastics, cont.

Court noted in construing term substantially completely wetted
of claim 1:
The term substantially completely wetted not recited nor
defined anywhere in written description.
Citing dictionary definition, meaning of the word
substantially is largely but not wholly that which is
specified. LNP Eng. at 1198. (Court also cites Ecolab Inc.
v. Envirochem, Inc. 264 F.3d 1358, 1369 (Fed. Cir. 2001),
(substantially uniform means largely, but not wholly in the
same form).
Court concludes substantially completely wetted means
largely, but not necessarily wholly, surrounded by resin.
LNP Eng. at 1199.
77
Summary
Effective Use of Preambles
Clarification: intended use

While less is more
is it absolutely necessary?
is it broad enough?
is it supported by the specification?
Consider indefiniteness vulnerabilities
Consider use of Definition
Consider use of standard for measuring the degree
Claim construction
Consistent use of terminology
Claim differentiation
78
Richard E. Billion
B.S.M.E., J.D., M.B.A .
Electro-mechanical and mechanical arts, with an
emphasis on computer hardware and
peripherals, medical devices and development
of patent proof packages for asserting client's
patent portfolios in licensing situations.
79
Searching for Meaning in a

Mechanical Claim
Defining terms in your claims
If you draft patent applications, you are

constantly defining terms
Drafting the specification is an act of defining
terms
80
Adding Specific Definitions

Applicant is allowed to be their own
lexicographer and may define terms used in

the claimsspecial definitions
Purpose
Limit claim interpretation to intrinsic evidence
81
Where to Place a Definition

Glossary or Appendix
After first occurrence of term in the specification
an inventor is permitted to define the terms of
his claims. Nevertheless, the place to do so is in

the specification of the inventors application, and
the time to do so is prior to that application
acquiring its own independent life as a technical
disclosure through its issuance as a United
States patent. Intellicall, Inc. v. Phonometrics,
Inc, 952 F. 2d 1384, 1388 (Fed. Cir. 1992)
82
Drafting Definitions
Must meet enablement requirement
So long as the meaning of an expression is made
reasonably clear and its use is consistent within a

patent disclosure, an inventor is permitted to define
the terms of his claims. Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
Any special meaning assigned to a term must be
sufficiently clear in the specification that any
departure from common usage would be so
understood by a person of experience in the field of
the invention. Multiform Desiccants Inc. v. Medzam
Ltd. 133 F.3d 1473, 1477 (Fed. Cir. 1998).
83
Drafting Definitions, cont.

Draft after learning the common meaning of
the term
Why?
Where an explicit definition is provided by the

applicant for a term, that definition will control
interpretation of the term as used in the claim.
MPEP 2106 (C) citing Toro Co. v. White
Consolidated Industries, Inc., 199 F.3d 1295,
1301 (Fed. Cir. 1999)
84

The district court found that, although the term co-micronization was not known
in the art prior to the filing date of the application that led to the 726 patent, both
micronization and the prefix co- had well-known meanings as of that date,
and one of ordinary skill in the art at that time therefore would have readily
understood the meaning of co-micronization. Had that term not been explicitly
defined in the 726 patent specification, we might well agree with the appellants
that that term could simply mean micronized with or together and would not
necessarily exclude the presence of ingredients not specifically recited in the
claim. However, the phrase co-micronization of fenofibrate and a solid
surfactant is in fact explicitly defined at column 1, lines 35-38, of the 726
patent, as micronization of an intimate mixture of fenofibrate and a solid
surfactant. Hence, this is a case in which the patentee has chosen to be his
own lexicographer, and the district court did not err by reading the patentees
definition from the specification into the claim. Moreover, the inclusion of the
word intimate in the definition, together with the fact that fenofibrate and SLS
are the only ingredients present in every co-micronized mixture described in the
726 patents specification, makes it abundantly clear that co-micronization of . .
. fenofibrate and a solid surfactant should be construed as referring to comicronization of a mixture consisting essentially of fenofibrate and solid
surfactant.
Abbott Laboratories v. Novopharm Ltd. 02-1387 (Fed. Cir. 2003)
85

Draft after learning the common meaning of
the term
Cautiondrafter might be biased
Look at how competitors are using the term in
other patentspublications
Drafter may be satisfied that the common
meaning more than encompasses the
proposed definition
86

Definition breadth should be like an upside
down pyramid:
Broadest at the top
More narrow further down
End with an example of something in the
group (this might be the actual device used as
an element in an embodiment)
87
Placing Definitions in the

Specification
Upside
Eases claim interpretation

Could make Markman hearing easy
Litigators may love the prosecutor
Downside
Meaning is now frozen in time

Could make Markman hearing extremely difficult
Litigators may hate the prosecutor
Generally, if litigation occurs, multiple patents in suit are
preferable and one wants to tell a story stringing all the patents
together. If definition in patent is not consistent with the others,
then what?
May hobble prosecution could produce an inherent
inconsistency
88
Leaving Definitions out of the Specification

/ Relying on Common Meaning
Upside
Definition is not frozen
Litigators will have more flexibility
Downside
Common meaning may take a turn for the worse
Can lose control of the definitionextrinsic evidence
may come in to interpret
More time at Markman hearing
.
89
Considerations
Size of portfolio
Bigyou want consistent set of definitions
across the board

May be difficult to manage
Changes in definition may be a problem
90
Considerations Technology
Pioneering
Actual technology
91
International Considerations
Timothy B. Clise
B.S.E.E., J.D.
Electrical, software, electro-mechanical, and
mechanical technologies
92
1.Substance
93
Quality US style claims are

typically quality Non-U.S. claims
a. File broadest claims
b. Remove as much functional language as
possible
94
Means for does not have same

meaning
95
Problem\Solution Approach
96
2.Form:
97
Reduce total number of claims

Use Multiple Dependencies
98
Reduce number of Independent

Claims
99
Jepson format
100
3. PCT International Phase

a. If a US application is pending, select EP as ISA
b. Defer all form objections to national phase
101
Thank You!
If you have additional questions or
comments, please contact Catherine

Klima at 612-359-3276 or
cklima@slwk.com
102

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Advanced Claim Drafting in

the Mechanical Arts

Wherein, Therein, Whereby, Thereby, So that,

MPEP Guidance on Transitional Terms

but does not require steps to be performed or

Examples: adapted to or adapted for

As a general matter, the grammar and

intended meaning of the terms used in a

General Guidance on Transitional Terms

consider three sources: The claims, the

that the wherein clause refers to. Griffin v. M.

effect to the wherein clauses because they

add functional language

Markman based content of a whereby clause

Copyright 2003 Schwegman, Lundberg, Woessner & Kluth, P.A.

least in part, to articles of clothing, contrary to Markman's

result of limitations in the claim adds nothing

Whereby Clause without Effect

electrically connecting each of the electrical terminals of the

states the necessary result of limitations in

Thereby, Such that, So that Rule

states the necessary result of limitations in

Configured for, Adapted to

Configured for, Adapted to

F.3d 1185 (Fed. Cir.1996)

Configured for, Adapted to

Configured for and

Configured for and

Such that, So that

How are Claims Interpreted under 35

language, a claim limitation will be interpreted

Will your Apparatus Claim be Interpreted

language typically does not. See

If Means Language is Present in

analysis under 112, 6, unless:

(1) no corresponding function is recited in the

Example of (1), no corresponding

including a plurality of spaced apart . . . members

recited function corresponding to the means.

Example of (2), enough structure is

the waist band means through the outer impermeable

perform entire recited function.

Even if means isnt present, beware of

usually avoids interpretation under 112, 6, the

How might you unintentionally fall

under 112, 6 is appropriate if the claim

What will the judge look at?

whether a claim limitation has a generally well-understood structural

Recent Federal Circuit cases finding a disputed claim limitation to have

a sufficiently well-understood structural meaning, thereby avoiding

a dictionary, and that refer to structure(s). Being your own

See, e.g., Naylors Dictionary of Mechanical Engineering.

Example 1 Mas-Hamilton Group v.

lever moving element for moving the lever from

No means, so presumptively outside 112, 6.

Could modifiers help steer toward a structural interpretation? Can a

Example 2 Personalized Media Comm.

connected to a mass medium receiver for detecting . .

Adjectival language was recently addressed in Apex,

unit accompanied by functional language.

e.g., a first interface circuit for receiving keyboard and cursor

The district court held that these nouns didnt connote

sufficient structure to perform the recited functions, placing

Apex, Inc. v. Raritan Computer, Inc., contd.