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Context: USPTO for an electronic device. Are Claims required to answer the question:

What can the device do?
How is it useful?
How is it novel?

As I understand it the description and drawings answer:

How do I build it?
What does it look like?
How do I use it?
What is the scope of the device?

Are there any others questions I may have missed?

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  • Claims have to comply with the various legal requirements (such as being clear); they don't have to answer any questions. So I'm not terribly sure what you're trying to get at. Would you be able to clarify, to make it a bit easier to put an answer together?
    – Maca
    Commented Feb 1, 2018 at 7:10
  • The list of questions will form part of a checklist: I want to ensure that the application answers questions that examiners will expect to be answered: before I submit it to the patent agent for review.
    – gatorback
    Commented Feb 1, 2018 at 16:17

1 Answer 1

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What can the device do?

How is it useful?

How is it novel?

How do I build it?

What does it look like?

How do I use it?

What is the scope of the device?

All of those should be explicitly or implicitly answered by the description/drawings.

The claims only answer one question which would be something like

What invention am I trying to protect?

The subject matter of the claims must be novel and inventive by itself only looking into the description to understand what the words mean exactly. The question(s) why that is the case are answered by/in the description.


For the edit, please have a look at the relevant law or a commentary, there are definitions and examples as to what a description needs to provide. And a commentary with years of experience from judges/etc. is certainly more than an answer here could cover. (I don't have any English recommendations)

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  • A claim states "what it is", where the" it" is the part you are trying to protect.
    – George White
    Commented Feb 2, 2018 at 21:31

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