Claim Analysis (with an example)
This thread will contain a discussion on claim analysis and will hopefully aid those in their searches for monetary satisfaction (since some of us aren't eligible). I'll start from the beginning and will use the following study's independent claim 1 as an example:
Every claim has three distinct sections. A preamble, a transitional phrase, and a body. The three sections of the claims are identified based on the identification of the transitional phrase. In US practice, the most common transitional phrase is "comprising" or "comprises". The preamble is the section that is before the transitional phrase and the body is the section that is after the transitional phrase.
The bare minimum preamble lists nothing but a statutory class of invention. This would be something like "A method, the method comprising:".
A lot of preambles identify the statutory class along with an intended use of the invention. Intended uses are identified with the word "for" within the preamble. An intended use does NOT make a claim patentably distinct. In our example, the intended use of the method is "for enabling a first user to interact with other users in a virtual space". When finding prior art you can ignore attempting to find this phrase. Intended uses are inherent to the claimed invention, because any claimed invention that performs the claimed body is capable of performing the intended use. (A quick aside, "inherency" has a very specific meaning in IP land).
And lots of preambles contain a foundation for understanding the claimed invention. The foundation consists of limitations that need to be treated as if they were in the body section of the claim, but do not appear in the body of the claim because they need to logically precede the body in order for a reader to understand the body. In our example, these preamble limitations include "wherein the first user and the other users each have an avatar and a client process associated therewith", and "wherein each client process is in communication with a server process".
Transitional phrases can be inclusive or exclusive. Exclusive transitional phrases exclude any unrecited limitations from the body of the claim. "Consisting" is an exclusionary phrase in the IP field. Inclusive phrases (the most common) include any unrecited limitations from the body of the claim. Examples are "comprising" and "including". In our example, if the claim had the transitional phrase "consisting of", and you found prior art that performed the claimed step A, performed some intermediate unclaimed step G, and then performed the claimed step B, then it wouldn't necessary teach the method. But, since our example uses "comprising" if you find a method that performs step A, performs 72 other steps, then performs step B, it teaches the claimed method. See MPEP 2111.03 for more details on transitional phrases.
The body of the claim should contain indented limitations that define what the claimed invention is.
More to follow...
Prior Search Analysis, Part I
Continuing with examples using this patent's claim 1:
Prior to starting a search and prior to laying out a search strategy (and I also prefer to do this prior to reading the specification) you should very carefully analyze the claim. During this careful analyzing, you should be looking for the following things (not in any particular order):
a following of antecedent basis of the terminology used;
any words that may have special definitions, may be ambiguous, or may be reinterpreted to the rejection's advantage;
the fluff (the stuff that isn't the novelty).
Every time a new noun is introduced into a claim it should be preceded by an indefinite article, or no article.
In the example, the preamble introduces "a first user", "other users", "a virtual space", "an avatar", etc.
Every time a specific noun is presented that is referring to a noun previously introduced in the claim, it should be preceded by a definite article or other special language. If a new noun is introduced with a definite article or with one of these other special words, and it hasn't been previously introduced with an indefinite article, then the noun is referred to as having a lack of antecedent basis. In the example, you'll notice the preamble refers to "the first user", "the other users", "the method". These nouns are referring to the first user, the other users, and the method previously introduced. An example of one of the special words can also be found in the preamble, with the phrase "each client process". The word "each" implies that the noun following it has been previously introduced.
Nouns that are inherent to the presented claim do not need to be introduced with an indefinite article. For instance, every method must inherently have at least one step. So if you introduce "a method", you may then introduce "the first step" without breaking any rules.
Applicants are allowed to be their own lexicographers. Any word used in a claim may be given a special meaning by the applicant in their specification. The claim language must be interpreted in light of the specification as one of ordinary skill in the art would interpret it.
Absent any special definition by the applicant, the word is given a definition by the examiner. This definition is supposed to be one that a person having ordinary skill in the art would give the word. However, proving that a definition applied by an examiner is not how a person having ordinary skill in the art would interpret it is extremely difficult.
As you can imagine, an examiner can reinterpret the claim language to be very broad IF the applicant does not define the terminology in their specification appropriately. You should flag ambiguous and special words that may have special definitions before you read the specification, that way you can find their definitions when reading through it. An example of these special words in the example claim 1 is "avatar" and "position".
Keep in mind, while looking for the definitions of these terms, that you actually understand what a definition is. A definition is something that positively and absolutely defines the metes and bounds of a word. So you're looking for a phrase like... "An avatar is a graphical icon". If you find a phrase that says "An avatar may be a graphical icon", then that phrase is NOT a definition. With the latter phrase, a car could also be an avatar.
If the specification does have a definition for an avatar (which it does) then you have to treat the definition as part of the claim language.
Identifying the novelty of a claim can be difficult sometimes. It becomes easier with the more knowledge you have of the prior art. You are looking for a single limitation of the claim that makes it patentably distinct over the prior art. What feature does the applicant think is not found within any combination of prior art? Sometimes you have to narrow this down to 2-3 potential novelties and then read the spec and try to determine which it is. If that doesn't help, then start searching for both and see which one is easier to find. That one isn't the alleged novelty.
All limitations that are not the novelty.
So, using the information above, let's apply this to our example claim 1:
As previously indicated, the words "avatar", "position", "client process", "server process" all stand out to me. Doing a quick text search, you'll see that "Each avatar is a three dimensional figure chosen by a user to represent the user in the virtual world". You'll also notice that no definition for "position" is ever presented. You can glean from the spec that the position of an avatar is where the avatar is. So, using the powers of interpretation, anything that informs us "where" is a position. The applicant never explicitly states "the position is information that identifies a location", or the like, though. So we could potentially interpret this however we wish, as long as it's reasonable.
You should have noticed that step b states "the received positions". However, in step a, you only "receiv[ed] a position". It may seem fairly trivial or perhaps just a typo, but we now have a huge dilemma on our hands. Are we receiving a single position, the single position containing information about a subset of all the other users? Or are we receiving a position for each and every user of the subset of all the other users? You'll also notice at this point that step a is horribly written and confusing. If you look back in the preamble you'll notice the first user is interacting with "other users". Notice the plurality for the other users, so it must be at least two. Also notice that each "other user" has an associated avatar. So each "other user" must have at least one avatar. However, we're receiving a position of "less than all of the other users' avatars". So in the case where there are two other users, we would only receive a position of one other user's avatar. Which brings us back to step b. How can you determine from multiple received positions if you only received one? You can't. Great. During prosecution you'd just object and politely tell the applicant that he meant to write "the received position". Don't ask me how to handle it during litigation. Probably argue a 112 2nd rejection was in order.
Novelty and Fluff:
This patent has a US effective filing date of 12 November 1996. Keep that in mind when trying to identify novelty versus fluff.
"wherein the first user and the other users each have an avatar and a client process associated therewith". Novel? Probably not. Client user avatars are well known and have been in use since the mid 1980's. See Wikipedia: https://secure.wikimedia.org/wikiped...ar_(computing) Depends on the definition of "avatar" though, as indicated above.
"wherein each client process is in communication with a server process". Novel? Definitely not. Basic client/server communication.
"receiving a position of less than all of the other users avatars from the server process"? This is actually two limitations "receiving a position of an other user's avatar from the server process", and "receiving information about less than all of the other users from the server process". The second definitely isn't novel. Receiving information about a subset of of a group has been around since the dawn of time (Think generals receiving status updates from only certain, and not all, of his commanders during battle). The first probably isn't, as well.
"determining, from the received positions, a set of other users' avatars that are to be displayed to the first user". Novel? Sounds like it could be a winner.
"wherein steps a and b are performed by the client process associated with the first user". Novel? Nah.
So, now that we've analyzed the claim, we can begin to construct a search strategy.