Claims of a patent describe boundaries of an invention that an applicant intends to protect though the patent. A claim includes three parts, namely a preamble, transitional phrase, and body. The claim begins with the preamble, which defines a statutory class of the claim. The transitional phrase links the preamble of the claim with the body of the claim. The transitional phrase defines whether the scope of the claim excludes any unrecited additional components or steps, if any. The transitional phrase of the claim is followed by the body of the claim. The body of the claim includes clauses which encompass essential features of the invention.
The statutory classes of a claim are a process, machine, manufacture, and composition of matter. The preamble of the claim limits the claim to one of the above-mentioned statutory classes.
The transitional phrase of the claim may include “comprising”, “consisting essentially of” and “consisting of”, or synonyms thereof. The transitional phrase “comprising”, and its synonyms “including,” “containing,” or “characterized by,” are inclusive or open-ended. These open-ended transitional phrases do not exclude additional unrecited elements or steps. The transitional phrase “consisting of” is a closed-term. The closed transitional phrase excludes any element or step not specified in the claim. The transitional phrase “consisting essentially of” takes a position between the closed transitional phrase and the open-ended transitional phrase. The transitional phrase “consisting essentially of” limits the scope of the claim to the elements or steps specified in the claim and additional elements or steps that would not materially change the basic and novel characteristic of the invention. In other words, a claim with the transitional phrase “consisting essentially of” is open only for inclusion of elements or steps which do not materially affect the basic and novel characteristics of the invention.
The body of the claim defines the invention of the applicant. The body of the claim includes clauses, each of which describes an essential feature of the invention.
The clauses of the claim body should be written in a clear and definite language. The clarity and definiteness of the claim language indicate quality of the patent. The purpose of having definite claim language is to clearly communicate the scope of the claim. In addition, the clarity and definiteness of the claim language helps to determine whether the claimed invention meets all the criteria for patentability and whether the specification provides a written description of the invention, enablement (manner and process of making and using) of the invention, and the best mode contemplated by the inventor of carrying out the invention. Further, the clarity and definiteness of the claim language is necessary for one to determine infringement of the claim.
In addition, it is appropriate to have the claim language which uses sufficient structure. A “means-or-step-plus-function” limitation in the claim is a clause in which a generic placeholder (terms such as ‘means’ and ‘step’) is modified by functional language, and the generic placeholder is not modified by sufficient structure. It is not desirable for the claim to have a “means-or-step-plus-function” limitation because the broadest reasonable interpretation causes scope of the “means-or-step-plus-function” limitation in the claim to be restricted to the structure, material, or act described in the specification. In some cases, the “means-or-step-plus-function” limitation in the claim takes a narrower interpretation than a limitation that is not stated in means-or-step-plus-function” format.
During prosecution, the claim will be given broadest possible interpretation. If the specification provides a definition of a term in the claim then the term of the claim takes the meaning defined in the specification. If the specification does not provide a definition of the term in the claim then the term of the claim is given their plain meaning consistent with the specification. The plain meaning of the term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of the term is determined based on sources, such as the term of the claims themselves, specification, drawings, and prior art. However, the applicant is his own lexicographer, i.e. the applicant can claim the invention using terms of applicant’s choice. Any special meaning of a term of applicant’s choice should be clearly described in the specification. Claims could be written using functional language, alternative expressions, negative limitations, or any style of expression or format of claim which makes clear the boundaries of the invention. Indeed, the applicant should define the invention using a claim with legally enforceable features for gaining maximum benefit.
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