Improvement or Alternate Embodiment

[listenup77]

I'm confused on this. What is the legal different between an improvement to an invention and just an alternative embodiment (which falls within the scope of the invention)? I'm sure the line is thin, but I want to know the exact difference. Thanks.

 

[divgradcurl]

I'm confused on this. What is the legal different between an improvement to an invention and just an alternative embodiment (which falls within the scope of the invention)? I'm sure the line is thin, but I want to know the exact difference. Thanks.

If the "improvement" falls within the scope of the claims, and is adequately disclosed in the specification, then it is an "alternative embodiment." (This may be adjusted to to Festo and file wrapper estoppel, but this is the general rule) If the improvement falls outside of the scope fo the claims, or is not enabled, then it is probably not an "alternative embodiment." The claims are key -- if something falls within the scope fo the claims, it may be covered by the patent. If something falls outside of the claims, it cannot be covered by the patent.

 

[listenup77]

So lets say you write a claim saying, 'a plate like member attached to it's flat surface'. In this invention, any changes to the plate like member will fall within the scope of what is claimed?

 

[divgradcurl]

So lets say you write a claim saying, 'a plate like member attached to it's flat surface'. In this invention, any changes to the plate like member will fall within the scope of what is claimed?

You can't really say, you have to look at the claim in context -- in other words, you have to look at the prior art, you have to look at the specification, you have to look at the prosecution history, etc. There isn't any way to look at a piece of a claim in isolation and decide the scope of the claim language. There are just too many variables -- is the claim an independent claim, or a dependent claim? Is the claim an apparatus claim, a system claim, a method claim, an "in re Beauregard" claim, or is it written in means+function language (35 USC 112 Para 6), or is it a "methodratus" claim (pretty much eliminated due to a recent court decision)? What amendments were made during the prosecution history that would limit the scope of the Doctrine of Equivalents? If you are limited by prosecution history (file wrapper) estoppel, what did you actually disclose in the specification?

As I've noted before, all of these issues must be addressed to have a good indication of what the potential scope of a claim might be.