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I'm considering the case in which I have an invention and the subject matter is a (computer) web server. So: the first exemplary embodiment would be based on a “web server”, but since I don't want to introduce any limitation I'd like to claim it just as “server”. I draft a broadest possible claim and a state:

  1. A server apparatus and system comprising …..

If I want to claim a “server” then I have to specify the term “server 100” in the “DETAILED DESCRIPTION” section and in the drawings. But actually the first exemplary embodiment would be a “web server”.

So, in the detailed description of the embodiment, should I:

  • include a “web server 101” in the block diagram of the “server 100” like in FIG.1? I've seen this way done in some patent application but I think that the it's not so logically true that something that is a “web server” is included in a “server”. It would be like saying that a “red car” it's included in a “car”.

FIG. 1

  • Having a first embodiment with a "server" like in FIG. 1 and the having a second embodiment with a "web server" like FIG. 2? Doing this way the first embodiment wouldn't be fully specified then because it's actually possible to do a detailed description just for the second embodiment, for which is possible to enter in other limitating details like HTTP protocol and so on. So isn't there the possibility that the first enbodiment would be considered as not fully detailed and therefor not valid as a basis for claim terms?

FIG.1 and FIG. 2

Is there any other suggested way to do what described above?

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  • If server is hardware then it makes sense that the web server is in a server. You may be overthinking this from a point of view of not enough specialized knowledge to keep your head from spinning.
    – George White ♦
    Aug 29, 2014 at 0:35
  • Thanks, you're right but maybe the server case is a particular case. I was wandering what is the right procedure to "zoom" a claim term in the detailed description of an embodiment, let's take another example: server "response" --> web server "http response".
    – user8305
    Aug 29, 2014 at 7:09
  • In the second part of your answer are you hinting me to not to think it in a too specialized way or that I'm not considering it from an enough specialized point of view? (Sorry, I'm not sure about English interpretation of your sentence).
    – user8305
    Aug 29, 2014 at 7:11
  • Sorry for the hint. I think software patenting is a very complex and rapidly changing field and to get a reasonable patent application filed you will either need help from a patent practitioner or to learn a lot about patents.
    – George White ♦
    Aug 29, 2014 at 20:21
  • Claim 1 says a method for XYZ comprising:
    – George White ♦
    Aug 29, 2014 at 20:21

1 Answer 1

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In this framework example XYZ is a result. Results are not patentable but methods of achieving results can be patentable. Some claims are independent claims which means they stand alone and do not represent a narrowing of some other claim. Dependent claims refer back to a preceding claim that is then narrowed by adding more steps or more details to the existing steps (assuming a method claim). Dependent claims can depend from a a chain of dependent claims back up to a top-level indecent claims. Each dependent claim takes on all the limitations (you call features of the claims in the path from it back to the independent claim. If 3 depends on 2 which depends on one, then 3 has requires all the limitations in 1, 2, and 3 to be infringed. In another case 2, 3, 4, & 5 might each depend directly from 1. in that case there is no interaction between 2 and 3 or 3 and 4. Arbitrary trees can be constructed. However, nothing in the dependent claims can remove a limitation in something above it and must do some narrowing. If claim 1 says a vehicle system having an airplane and a X horsepower engine, claim 2 can not say "The vehicle of claim 1 where the vehicle is a boat rather than an airplane." To change remove the airplane requirement would take a new top level independent claim. This is one area of patent law that is logical.

Claim 1 A method for XYZ comprising:

(a) receiving a request;

(b) transmitting a response.

Claim 2 The method for XYZ where the request is an HTTP request.

Claim 3 The method of claim 1 where the request is an FTP request.

Claim 4. The method of claim 3 further comprising:

retrieving the requested data from a data base;

and where the transmitting includes the retrieved data.

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  • I see software patenting is a complex field but nevertheless it should have its logic. So my question was not directly regarding how to claim but how to define claim terms.
    – user8305
    Aug 30, 2014 at 12:47
  • First I suppose that a term used in claim has to be defined in one embodiment in the detailed description section. If this it's true, than two opposite needs arise: (1) to use the widest terms in the (first) broadest claim and (2) to define in an embodiment every term that is used in claims. But the broadest claim should be somehow “embodiments-free” to not to be limiting, given that every embodiment is a further specification of it: the broadest claim should be a set containing all the possible embodiments and not an embodiment itself.
    – user8305
    Aug 30, 2014 at 12:48
  • So in your answer you have a broadest claim on XYZ and some subsets of it (further specifications). But how is XYZ founded?
    – user8305
    Aug 30, 2014 at 12:50
  • I was considering in my question two ways: (A) – having in the detailed specification a first embodiment of a generic “server” that also provides (includes) a “web server” and then actually basing the description on the features of the “web server”; (B) having a first embodiment for a generic “server” that would have very vague description and then having also a second embodiment for a “web server” with a more detailed description. Both (A) and (B) the ways are finalized to give a foundation to the broadest term “server” used in the first and broadest claim. Which is the better one (if any)?
    – user8305
    Aug 30, 2014 at 12:50
  • And again: if I have a broadest claim (1) that define a “server comprising: (a) receiving a request and (b) sending a response” then I would introduce a new claim (2) in order to add a new feature (c) to the claimed server and not to extend the yet claimed feature (a) or (b) to different embodiments. Indeed that the claim (1) should be yet broad enough to include all embodiments. Just to put in other words: let assume that adding a new feature is sort of vertically extending a claim and instead adding new embodiments is sort of extending horizontally.
    – user8305
    Aug 30, 2014 at 13:08

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