The name of the game is the peripheral claim

One issue that seems lost in the quagmire of patent eligibility decisions is a recognition that the U.S. has evolved from the out-dated practice  of central claiming (where inventions were determined from the specification) to the more exacting practice of peripheral claiming (where inventions are defined by the claims).  Indeed, the US Patent Office prohibits one type of central claiming referred to as omnibus claiming under MPEP section 2173.05(r) due to the fact that omnibus claims fail to point out what is included or excluded by the claim language and thus are not sufficiently definite under 35 U.S.C. sec. 112.

Section 2173.05(r) of the MPEP cites the Board decision of Ex Parte Fressola for an historical discussion of the evolution of U.S. claiming practices over the years:

The claims measure the scope of the protected patent right and “must comply accurately and precisely with the statutory requirements.” United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 232, 55 USPQ 381, 383-84 (1942) (citing General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 369, 37 USPQ 466, 468-69 (1938)); 1 A. Deller, Patent Claims, iii-viii (2d ed. 1971) (Deller). 35 U.S.C. § 112 ¶ 2 requires:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Claims in utility applications [FN1] that define the invention entirely by reference to the specification and/or drawings, so-called “omnibus” or “formal” claims, while perhaps once accepted in American patent practice, are properly rejected under § 112 ¶ 2 as failing to particularly point out and distinctly claim the invention. See MPEP § 706.03(h) (5th ed., rev. 14, Nov. 1992); Landis, Mechanics of Patent Claim Drafting, § 2 (1974).

*2 The written description and the claims are separate statutory requirements. Modern claim practice requires that the claims stand alone to define the invention. Incorporation into the claims by express reference to the specification and/or drawings is not permitted except in very limited circumstances. As stated in McCrady, Patent Office Practice, § 90 (3d ed. 1950):

Sec. 90. Reliance upon Disclosure

The general rule is that the claims should be self-contained; that is, they should not expressly rely upon the description or drawing to give them meaning…. The terms “substantially as described” and the like, once much used in claims (GLASCOCK 1943 § 5640) are now rarely seen. The Office disregards them in interpreting claims….

Claims consisting only in a reference to the disclosure, as “The features of novelty herein disclosed,” are not allowed except in design cases.


A claim specifying “the velocity cycle shown in Figure 1” was allowed without discussion of the backfiring expression, and claims have been allowed upon limitations consisting merely in references to a table in the specification and a diagram in the drawing. [Footnotes omitted.]

Incorporation by reference to a specific figure or table of properties, as mentioned in the last paragraph above, is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. See Landis, § 51; Ex parte Squires, 133 USPQ 598 (Bd.App.1961) (discussed in Applebaum, The One Line Picture Claim, 44 J.Pat.Off.Soc’y 379 (1962)); In re Faust, 86 USPQ 114 (Comm’r Pat.1943); In re Tanczyn, 202 F.2d 785, 97 USPQ 150 (CCPA 1953) (reference to curve in claim not questioned); Ex parte Lewin, 154 USPQ 487 (Bd.App.1966); Ex parte Gring, 158 USPQ 109 (Bd.App.1967) (reference to photomicrograph). Incorporation by reference is a necessity doctrine, not for applicant’s convenience.

Early claim forms were significantly different in style and content from modern claims. See Pennwalt Corporation v. Durand-Wayland, Inc., 833 F.2d 931, 957-59, 4 USPQ2d 1737, 1758-1760 (Fed.Cir.1987), cert. denied, 485 U.S. 961 (1988) (NEWMAN, J., commentary) (evolution of claim form); Deller, §§ 1-11. The original method of claiming in this country was based on the central definition where the claims named the broad features of the invention (often just an enumeration of the elements and the reference characters of the drawings) together with a phrase such as “substantially as set forth.” These claims were construed to “incorporate by reference the description in the specification and equivalents thereof.” Pennwalt, 833 F.2d at 959, 4 USPQ2d at 1759. During this early period, “[t]he drawings and description were the main thing, the claims merely an adjunct thereto.” Deller, § 4.

*3 Beginning with the Patent Act of 1870, the claims took on more importance. As described in Deller, § 7:

They became much more self-sufficient in that they gave the cooperative relationship of the elements enumerated, instead of a mere catalog of elements followed by some such phrase as “constructed and adapted to operate substantially as set forth.”

The method of claiming shifted from the central definition to the peripheral definition. As described in Deller, § 5:

Central definition involves the drafting of a narrow claim setting forth a typical embodiment coupled with broad interpretation by the courts to include all equivalent constructions. Peripheral definition involves marking out the periphery or boundary of the area covered by the claim and holding as infringements only such constructions as lie within that area.

The conversion from the central definition to the peripheral definition was due to the more rigorous requirements for the claim to stand alone to define the invention and the refusal of the courts to expand the scope of the claims beyond their literal terms. Modern claim interpretation is based on the peripheral system where the scope of the claim is not expanded. See Wilson Sporting Goods Co. v. David Geoffrey & Assoc., 904 F.2d 677, 684, 14 USPQ2d 1942, 1948 (Fed.Cir.), cert. denied, 111 S.Ct. 537 (1990) (doctrine of equivalents does not expand claims, it only expands right to exclude to “equivalents”). Modern claim interpretation requires that the claims particularly point out and distinctly claim the invention without reading in limitations from the specification. Pennwalt, 833 F.2d at 959, 4 USPQ2d at 1759-60.

Another interesting discussion of this evolution toward peripheral claiming is Judge Newman’s commentary  in Pennwalt Corp. v. Durand-Wayland:

1. The Patent Act of 1793 did not provide for patent examination or patent “claims”.

Judicial determinations of equivalency were made before as well as after the development of systems of patent examination and patent claims. The decisions must be understood in the context of the practices of the time.

The patent grant before 1793 was not automatic, but was subject to review by a committee consisting of the Secretary of State, the Secretary of War, and the Attorney General. Act of April 10, 1790, ch. 7, § 1, 1 Stat. 109, 109-10 (1790). History records that the increasing burdens of this review led to change in 1793, whereby the patent was routinely granted, subject only to formalities and the payment of a fee.

The Patent Act of 1793, ch. 11, § 3, 1 Stat. 318, 321-22 (1793), required the applicant to

deliver a written description of his invention, and of the manner of using, or process of compounding the same, in such full, clear, and exact terms, as to distinguish the same from all other things before known….In infringement actions the accused device was compared with the description in the patent document. Defenses such as lack of novelty, or prior use, were considered by the courts. A finding of infringement did not require precise correspondence between the description and the accused device. The trial courts determined, 958*958 often by jury, whether there was “substantial similarity” between the accused device and that described in the patent. For example, in Odiorne v. Winkley, 18 F. Cas. 581, 582 (C.C.D.Mass.1814) (No. 10,432), the court, Story, J., charged the jury:

The first question for consideration is, whether the machines used by the defendant are substantially, in their principles and mode of operation, like the plaintiff’s machines. If so, it was an infringement of the plaintiff’s patent to use them…. Mere colorable alterations of a machine are not sufficient to protect the defendant.See also Lowell v. Lewis, 15 F. Cas. 1018, 1021 (C.C.D.Mass.1817) (No. 8,568)(“whether the defendant has violated the patent-right of the plaintiff … depends upon the fact, whether the pumps of Mr. Perkins and of Mr. Baker are substantially the same invention”).

Our research showed no issue of equivalency, i.e. “substantial” similarity, in the cases that reached the Supreme Court during this early period, although several other significant aspects of patent law were treated by the Court. See, e.g., Evans v. Eaton,16 U.S. (3 Wheat.) 454, 4 L.Ed. 433 (1818), the first patent infringement decision of the Supreme Court.

2. The Patent Act of 1836 provided for patent examination and for a statement of the inventor’s “claim”.

The Patent Act of 1836, ch. 357, 5 Stat. 117 (1836), was enacted at a time of burgeoning industrial activity and creativity, growth in patent filings and, inexorably, increasing infringement litigation. Section 6, 5 Stat. 119, provided that an applicant for patent

shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery.It is not clear from the legislative history whether the purpose of the requirement for particularity was to facilitate examination or enforcement, but the style and content of the ensuing “claims” were significantly different from those of later practice. The applicant simply named the broad features that embodied the invention, accompanied by such words as “substantially as set forth”. The claims

served merely to call attention to what the inventor considered the salient features of his invention. The drawings and description were the main thing, the claims a mere adjunct thereto.R. Ellis, Patent Claims, § 3 (1949) [hereinafter “Ellis“]. Ellis cites a typical claim, published by the Patent Office in 1869:

[1.] The combination of the cutters EE, and the feeding rollers II and JJ, substantially as and for the purpose hereinbefore set forth.Id., § 6. This is the style of claim that was before the Court in most of the early decisions that are cited in asserted support of the majority position. The Court explained in The Corn Planter Patent, 90 U.S. (23 Wall.) 181, 218, 23 L.Ed. 1 (1874), that a clause such as “substantially as set forth”

throws us back to the specification for a qualification of the claim, and the several elements of which the combination is composed.To this extent early claim form was a precursor of the “means-plus-function” form of today, in that they both incorporate by reference the description in the specification and equivalents thereof.

Infringement continued to be determined by comparison of the accused device with the description in the specification. See, 959*959 e.g., Burr v. Duryee, 68 U.S. (1 Wall.) 531, 573, 17 L.Ed. 650 (1864):

[An infringement] is a copy of the thing described in the specification of the patentee, either without variation, or with such variations as are consistent with its being in substance the same thing.As will be discussed, the doctrine of equivalents flowered during this period, although patent claims played a quite limited role in patent enforcement, serving more to identify the essential features of an invention than to set limits to the scope thereof.

3. The Patent Act of 1870 started the move to increased specificity in claiming.

Section 26 of the Patent Act of 1870, ch. 230, 16 Stat. 198, 201 (1870), for the first time required that the applicant

particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery. [emphasis added]Judicial decisions during this period show that the transition toward greater specificity was gradual indeed, but by the early 1900s claims “became much more self-sufficient in that they gave the cooperative relationship of the elements enumerated, instead of a mere catalog of elements”. Ellis, § 6.

There evolved during this period a complex jurisprudence on equivalents, wherein the doctrine was applied to the circumstances of each case, as justice required. As in earlier periods, a patent’s claims were less significant in infringement litigation than was the description of the invention, and it was from the specification and drawings that the invention’s substance was determined. However, patent claims became of increased importance as they began to reflect adjustments made during the examination process and, at first occasionally and then more frequently, claims were referred to by the courts in determinations both of literal infringement and of infringement by application of the doctrine of equivalents.

4. Claim form continued to evolve after the Patent Act of 1952.

According to the modern style, patent claims no longer merely claim the salient features, the “heart” of the invention. Our predecessor court stated in In re Lundberg, 244 F.2d 543, 548, 44 C.C.P.A. 909, 916, 113 USPQ 530, 534 (1957):

[N]otwithstanding the [last] paragraph of section 112, it is the language itself of the claims which must particularly point out and distinctly claim the subject matter which the applicant regards as his invention, without limitations imported from the specification, whether such language is couched in terms of means plus function or consists of a detailed recitation of the inventive matter. [emphasis added]This practice is in sharp contrast with that of the 19th and early 20th centuries. There was a gradual, erratic, but inexorable transition to the requirement that the claims contain sufficient detail so that they can stand alone, without reliance on the specification to show distinctions from the prior art. Ellis, § 4, describes this as claiming the perimeter of an invention, rather than its core. Deller calls it “stak[ing] out the metes and bounds of the boundaries”, attributing enhanced rigor in claim drafting to the Supreme Court’s decision in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459 (1966). 1 A. Deller, Patent Claims, v-vi (2d ed. 1971). Typical of this form is the Pennwalt claim shown ante, with its multiple clauses delineating the entire sorter and its operation. Despite the changes in form and content of patent claims over this long period, the principles of the doctrine of equivalents remained constant.

See also “The Evolution of English Patent Claims as Property Definers” by David J. Brennan for a discussion of the evolution of claiming in England [Link].

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