When faced with the question: Does this content belong in the Specification or the Claim, What is:

  1. The line of thinking?
  2. Questions one should consider
  3. Expectations of the USPTO examiner?

that one should consider when sorting content into either the specification or claim?

1 Answer 1


The specification explains the invention with detail and with multiple embodiments and variations on those embodiments. It does not necessarily single out the novel aspects from the rest of the description.

Claims define what you are claiming to be yours. The analogy used is of a prospector defining the boundaries of a mining claim. If somebody does something within the boundaries they are stepping on your rights, if they are outside the boundaries they are ok. The terms used in the claim need be understood in light of the specification. There is no new description content in a claim beyond the content of the specification. Everything in the claims must be supported in the specification.

Examiners expect that the claims will be written following formal claiming rules and will be useable to unambiguously determine if a specific item falls under its definition or not.

Drafting a patent is a very specialized task. You will need much more than an answer here to do an adequate job of it. I suggest a close study of Patent it Yourself by Pressman as a start. Also, read and break down granted patents in your field.

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