paint, comprised of 45%-65% total resins solids of [insert chemical formula of
your new resin].” A clear, crisp claim
that provides solid and commercially
relevant patent coverage. And to be
honest, a rather dull claim type. The
most excitement you get with this type
of claim is during prosecution, when you
often wind up arguing rather thoroughly
with a patent examiner (if the chemical
composition is not new and non-obvious) that the specific ranges of the components are non-obvious because that
specific mixture of components produces
exciting (and non-obvious) “unexpected
results.” Hint: have that data at your
fingertips to present to the examiner
during prosecution.
Next, the trusty and tough side-kick
to the lead hero composition of matter claims: the process/method claim!
Another of the fab-four recognized by the
PTO, and is used to describe an inventive
combination of actions (“contacting,”
“heating,” “mixing,” etc.) to produce a
useful result. This is often the next best
thing to a composition of matter claim
(or mechanical and apparatus claims, described below), because even though you
may not convince an examiner that a ma-terial/device/article is new and non-obvious, you may be able to obtain a claim to
how to make it or how using it in a new
and non-obvious (and profitable) way.
Those “unexpected results” data can really come in handy for this claim type
as well. Many patents have issued that
were clearly directed to compositions, but
it was the process claims that were ultimately allowed by the PTO. Accordingly,
filing at least one method claim in you
patent application to cover this base may
be a good idea.
But what about cases where you
know how to make a gang-buster hot
product (Ponce de León’s bottled wa-
ter!), but don’t have an exact handle
on the chemical composition (“Hey,
I just bottle it from that one pond in
Florida, I don’t know what’s in it!).
Product by process claims are a vari-
ant claim structure that may help you
out. This claim type combines aspects
of composition and process claims to
describe a product by the steps in its
production process. This is allowed for
cases where the product in not defin-
able by other claim structures, such as a
case where a chemical reaction produc-
es a desired material (say a new coat-
or subject to final rejection) than other
claim types, as the component parts of
the device are generally described in a
mechanically “the leg-bone connects to
the shin bone” clear way. The exam-
“Because patent prosecution is like
opening a box of chocolates, you never
know what type of claim structure will be
allowed by the examiner – so claim your
invention as many different varieties of
claim types as you can!”
ing resin) but the resin produced is a
mixture containing varying amounts of
products from side chemical reactions.
So the exact chemical composition of
the material is unknown, but magic
combination of conditions and materials described in the processing steps to
produce it is known. During prosecution products that are similar, though
produced by a different process, may
get you bogged down in obvious type
rejections without that ability to point
to clear compositional differences.
Recent court decisions regarding how
this type of claim would be infringed
indicate an infringing product would
also need to be produced by the same
process. So, though an interesting and
possibly commercially relevant claim
structure for certain situations, you can
get unique headaches both coming and
going during the patent prosecution/en-forcement cycle.
Machine/apparatus claims is another
statutory type, and describe anything
having parts that cooperate (e.g., mov-
ing parts), and computers, circuitry, and
mechanical devises are encompassed in
this category. Article of manufacture
claims are the fourth statutory type,
and are similar to apparatus/machine
claims, except the item produced does
not have moving parts (e.g., a pencil).
From experience, these types of claims
can be prosecuted quicker (i.e., allowed
iner lines up your claim language ver-
sus the closest art, often another patent
document that is also so written, and
gives the thumbs up or thumbs down.
Unfortunately, the straight-forwardness
that may grant quickly allowed claims
often results in narrow claim language
– you rapidly obtain a patent to a very
specific device or article, so there is
room (unfortunately) for competitors
to flourish.
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