How are the elements of a claim determined?

Question

If a hat = cap + visor, then how is it determined that the elements are cap and visor?

Is this determined by the claim language used in the claim? Meaning, the elements are defined by the inventor?

So by the above definition of the hat, the cap is the functional, primary feature while the visor is an add-on feature that depends on the cap. Without the visor, the cap still functions to cover your head. But without the cap, the visor cannot work or exist.

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Alternatively, Why is a hat not:

hat = visor attached to a 360-degree ring + cap

If the elements are broken down in this way, then the cap is an optional feature. And the visor with loop can function on its own.

So the question really is, what determine the elements of an invention? Is it the inventor based on its use of claim language?

If the above is true, then let's suppose that the inventor has chosen to define the hat as cap + visor, then all references that interpret this claim must also use these elements or definitoin?

Answer 1

By the applicant

To start - claims are not algebraic expressions but words and words that matter a lot. In particular cases judges have said that "and" means "or", that "at least one" does not encompass the case of "one", that "covers" means "completely covers", etc.

Also, there is a world of difference between "comprising" and "consisting of". And you likely have no idea what "means" means.

The applicant drafts their claims and is responsible for the structure and wording. An examiner can reject a claim on some grounds and the applicant can respond by canceling the claim, amending it, arguing, or providing attested-to facts plus argument. An examiner can make a suggestion that a certain amendment would bring a claim into a state of allowablity but it is up to the applicant to agree to make or not make that amendment.

In the U.S. claims are taking as a whole and (although judges do it) it is impermissible to reduce a claim to its "gist" or talk about the main part and the add-on part, the new part and the old part.

An exception to this is the so-called two part claim, favored by European practice and officially encouraged in the U.S. but rarely seen here. Its structure is "An X with an A, a B. characterized by having a Y with a C and a D." Everything before the word "characterized" is admitted prior art and everything after that word is what makes this new X different than previous Xs.

So "A hat with a cap characterized by having an integral brim that extends only in the forward direction from the cap . . . " admits that hats with caps are old and that the brim is the new part.

But "A head covering having a cap and an integral brim . . . " gets its patentablity (if at all) by the sum of the parts, no implication that one part is newer or more key. And certainly not optional.

To indicate something optional a dependent claim is used. "1. A head covering comprising a cap and an integrally attached brim that extends substantially only in the forward direction. 2. The head covering of claim 1 where the brim is a contrasting color to the cap."

You could say the contrasting color is optional although that is a little misleading technically.

You could write a claim "A head covering comprising a 360 degree ring attached to a cap and the ring also attached to a forward extending brim". However a hat with a brim directly attached to the cap with no discernible ring would not infringe.