But Sometimes It Is Useful To Add More Words

Of course, there are occasions in which unnecessary elements can properly be added to a patent claim. The primary use is when an invention involves so few elements that the simplest claim would be rejected out of hand by the patent office, just by virtue of its simplicity. In that case it can be a very good idea to include a few other elements to make allowance more palatable to the examiner.

The patent office's distaste for very short claims is true of all types of claims, but especially method claims. Indeed, the patent office seems to have an unspoken rule against allowing method claims with only a single step. The remedy is to simply add another step, even if the added step is merely introduce an element. For example, if the claim involves a single processing step relating to a chemical, one can always avoid a "single step" patenting rejection by adding the limitation "providing the chemical".

Additional verbiage can also be added to apparatus claims in an innocuous manner. For example, in a patent directed to a new gearing mechanism for a bicycle, one could add limitations to the claims that define the bicycle as having a seat, handlebars, wheels, and so forth. Those limitations lengthen the claim, but very likely have no significant impact on the scope.

One of my favorite strategies for making a claim more palatable to the patent office is to recite optional elements. Look at the following claim from U.S. 6356546 . The claim is very broad, but includes plenty of extra text to hide the (possibly overbroad) scope. For example, the italicized portion is a necessary corollary from element (d), and therefore adds nothing besides bulk to the claim.

1. A Universal-Transfer-Mode network (UTM network), comprising a plurality of Universal-Transfer-Mode modules (UTM modules) interconnected by a passive core, said passive core consisting of a plurality of optical cross connectors through which routes are established among said UTM modules, wherein each of said UTM modules includes a plurality of ports that accept data in Universal-Transfer-Mode format (UTM ports) and optionally includes other ports selected from a group comprising:

(a) STM ports;

(b) ATM ports;

(c) Frame relay ports; and

(d) IP ports; and wherein each of said UTM ports is operable to process UTM packets according to a Universal-Transfer-Mode protocol (UTM protocol), and each of said UTM ports includes

(a) a hysteresis control circuit operable to determine data transfer allocations; and

(b) a scheduler of data packets of variable sizes said scheduler operable to control the rate of data transfer at the egress of each UTM port.

Careful review of this claim establishes that all of the important limitations occur in the italicized text of the preamble. All of the subsequent text is merely surplusage, and fails to limit the scope of the claim in any significant manner! The patent office is often fooled by such maneuvers.