The Importance of Getting the Claim Scope Right in a US Patent Application (I)

Insights The Importance of Getting the Claim Scope Right in a US Patent Application (I) Letao Qin · October 4, 2021

Unlike the Chinese patent rules or the rules under the European Patent Treaty, both of which require literal or word-by-word support in the specification of a patent application for a claim limitation[1], US patent practice allows, favors, and encourages an applicant to claim more than the examples described in the specification.

A common misconception among patent applicants is that the broader the claim scope, the better the patent quality. While conceptually a broad patent claim offers broader protection, a broad claim is not only more difficult to get granted but also easier to get invalidated. However, that does not mean the claims in a US patent application should be directed to specific embodiments. In the pursuit of a perfect patent, getting the claim scope right is arguably more important than getting a patent. But there is no absolute standard on what the right claim scope is. Whether the claim scope is right depends on several factors, for example, what the actual invention is, the level of prior art, the client’s budget, and last but not the least, the technical field.

It is easier to find prior art references against a broader claim in a technical field that has seen more patent applications. Therefore, it is more difficult to get a broader claim allowed and it costs more to get a patent granted on broader claims.

While a claim in a US patent application is allowed to go above and beyond the specific details disclosed in the specification, the claim scope must still be anchored to the embodiments in the disclosure. A patent with overly broad claims runs the risks of being invalidated. For an overly broad claim, two invalidation grounds are frequently used. One is the abstract idea exception and the other is failure to meet the written description requirement. We will use two recent court decisions to illustrate how an overly broad claim runs higher risk of being invalidated. In this newsletter installment, we will focus on the abstract idea exception and analyze Yu v. Apple Inc., a Federal Circuit court decision that came out on June 11, 2021. In the next installment, we will analyze the patent claims in the case history of the Supreme Court case Minerva Surgical, Inc. v. Hologic, Inc., and draw out lessons on proper claim scope. Minerva came out on June 29 this year. The holding of Minerva is about assignor estoppel. But the file history of the patents involved in Minerva illustrates the claim broadening practice favored by US patent practitioners.

When drafting a claim “broader” than the specific examples described in the specification, it is easier to run afoul of the abstract idea exception, a.k.a., the Alice exception named after the Supreme Court decision, Alice v. CLS Bank, that sets forth a framework for deciding whether a claimed invention is directed to an abstract idea, and is thus patent ineligible. As accurately acknowledged in the Alice decision, at some level, all inventions embody or rest upon abstract ideas. The thought process of broadening the scope of the invention is a generalization process in which a general concept is conjured to encompass the actual thing or process that was invented and then somewhat more. If the generalization process is carried too far, the resultant claim may fall into the abstract idea exception.

In Yu v. Apple, the concerned claim is directed to a mobile phone camera. When the decision first came out, many people faulted the Federal Circuit court for invalidating a claim clearly directed to a concrete and tangible physical object as being directed to an abstract idea. While there is nothing abstract about a mobile phone camera or cameras in general, the concerned claim in Yu v. Apple is indeed an abstraction of an actual invention, if one analyzes the situation carefully.

The concerned claim in Yu v. Apple reads like this:

  1. An improved digital camera comprising:
      • a first and a second image sensor closely positioned with respect to a common plane, said second image sensor sensitive to a full region of visible color spectrum;
      • two lenses, each being mounted in front of one of said two image sensors;
      • said first image sensor producing a first image and said second image sensor producing a second image;
      • an analog-to-digital converting circuitry coupled to said first and said second image sensor and digitizing said first and said second intensity images to produce correspondingly a first digital image and a second digital image;
      • an image memory, coupled to said analog-to-digital converting circuitry, for storing said first digital image and said second digital image; and
      • a digital image processor, coupled to said image memory and receiving said first digital image and said second digital image, producing a resultant digital image from said first digital image enhanced with said second digital image.

At first blush, this claim seems to be directed to a digital camera that includes two lenses, two image sensors, circuitry, memory and a processor—not an abstract idea. It is, however, illustrative if we take a step back and image how the patenting process unfolded. Imagine the inventor had an Ah-ha moment and thought “what-if” a digital camera such as a mobile phone used two lenses instead of one.[2] One scenario is that he immediately proceeded to write a patent application describing his two-lenses idea and filed the patent application without actually making a two-lenses digital camera. His patent application included the claim shown above. The claim recites two of each conventional camera component, but otherwise does not specify any detailed requirement of what kind of lenses, relative positions of these two lenses, etc., ostensibly because the inventor did not make the actual invention. In this scenario, most of us do not have any qualms about labeling this claim an abstract idea. This is akin to someone claiming a flying car without actually being able to make a car fly.

Another possible scenario is that the inventor set out to experiment with adding two or more lenses to a digital camera, trying different types, numbers, and positions of the lenses. At the end of his experiment, he discovered a few workable solutions and described them in his patent application. But he was advised to claim broader than the examples he had figured out. In the process of broadening his invention, he drafted claim 1 as shown above. Now most of us[3] are not so sure whether he would be entitled to this broad preemption he would get if the claim were granted. In other words, is the level of abstraction abstract enough to fall into the abstract idea exception?

The Federal Circuit court says he is not entitled, because “[G]iven the claim language and the specification, we conclude that claim 1 is directed to a result or effect that itself is the abstract idea and merely invokes generic processes and machinery rather than a specific means or method that improves the relevant technology.”

The drive behind the abstract idea exception is the concern of preemption that a patent would effectively grant a monopoly over an abstract idea. This exception has long existed, but the legal framework shifted dramatically since the Supreme Court’s Alice decision. The shift may reverse direction if ongoing legislative activities succeed. Where the line should be drawn—what is patentable and not patentable—is a social and economic decision and will not be settled for a long time to come.

To touch back on the topic of this article, it is important to get the claim scope right. While a broad claim scope is desirable, claims of different scopes, including claims directed to specific means or methods, are crucial to the success of the application process and the strength of the granted patent. Patent drafters must thread this needle carefully, bearing in mind current trends in court decisions, the legislative landscape, and the specifics of each invention.


[1] This is an oversimplified statement of the Chinese and EP patent rules. Consult Chinese and EP counsels for specific cases.

[2] The two scenarios described here are fictional and do not reflect true events.

[3] Especially those who still use iPhone 6 and appreciate the improved quality of pictures taken by newer iPhone models.