THE “PARAMETER LIMITATION” CLAIMS

In examining a patent application, the USPTO searches the prior art for disclosure or suggestions of the elements of the claimed invention – and uses that prior art to reject the claims of the application.

A proven strategy that the PatentXL Law Firm founding attorney has used often – when feasible – is the inclusion of certain measurable and quantifiable parameters in the claims, in some cases using the client’s own testing methods and equipment.

The result of the presence of those parameters in the claims enhances the likelihood of allowance of those claims by the USPTO, at least because the prior art is very unlikely to disclose any quantifiable parameters alongside a similar product or process as the one being claimed, particularly when those parameters are based on recently developed testing methods.

In a very recent example, this attorney included a parameter of the type described above to a “sushi box” invention, which led the examiner at the USPTO to compliment the attorney – not only for the high quality of the entire patent application – but because the parameter in question left that examiner “no choice” but to allow the patent claims.