Sorry if recommendations are off topic. I did check the don't ask section and hopefully the question isn't overly opinionated.

As an example,

The person who invented the paper coffee cup holder used the word "corrugated" in their claim, so others came up with "ribbed", "air-pocketed", and "rolled" inventions to work around the claim. Dang.

As another example,

A claim stating, "sending weather data to the user" was circumvented with "sending weather data to the mobile electronic computing device." Take humans out of claims.

My mind works differently, and examples of valid patents and the USPTO rules are valuable, but I tend to learn from bad examples much more effectively. I'm sure there are others who are the same way.

Except for Gazette updates on rulings, what are some books that primarily show such blunders and explain hindsight?

1 Answer 1


It takes years of following cases in the patent news, and it’s a moving target. I was studying for the patent bar in 2008 and learned that a signal was a thing and that besides claiming a circuit that made a novel signal and a circuit that received and decoded a signal, the signal itself was a tangible, claimable thing.

Later that week the Federal Circuit decided In re Nuijten and said a transitory signal is not a thing and is unpatentable. I don’t think anyone asked if lightning (a transitory signal) was a thing.

There have been judges that said "and" means "or" (or was it the other way around) and in one patent a claim to "one or more" was deemed to not cover the case of "one".

A claim for a diaper changing device that folded out from the wall said, when it was folded up, it covered the part secured to the wall. Someone made one that left an uncovered perimeter and it was ruled non-infringing so you see "completely, or partially, . . ." in claims.

In another case the claim said “each widget has a thinganabob”. An infringer just added one more non-functional widget that didn’t have a thingamabob and got away with it because "each" widget didn't have a thingamabob. Each means “every”.

Patent law is not a science, is deep and subtle and is a moving target.

I follow the blog PatentlyO which covers a lot of corner-case situations.

One book was outstanding during the "claim is the name of the game” era - Invention Analysis and Claiming: A Patent Lawyer's Guide by Ronald D. Slusky He talks about patenting the ball point pen and the popular type of paper clip and how they could be claimed using first principles.

Reference works include Faber on Mechanics of Patent Claim Drafting - note by necessity of the subject there are yearly updates for pages in the book.

However, another author said clever claiming will not get you there and went through actual CAFCA case examples to argue that you get what you disclose not what you cleverly claim - Rules of Patent Drafting: Guidelines from Federal Circuit Case Law by Root.

These are professional books and are expensive.

  • One thing to learn from other's mistakes might be that people who engage a registered practitioner to draft and prosecute their application do better than those that do not. I'm a retired patent agent so this is not a pitch for work.
    – George White
    Commented Sep 30, 2022 at 4:48
  • I added Amazon links to the cited books.
    – Eric S
    Commented Sep 30, 2022 at 18:33
  • Perfect. Especially PatentlyO. (@EricS Thank for adding in those links.) Yes, such anecdotes about “completely, or partially” are valuable and what I am looking for. Thank you again for a detailed and helpful answer, and for those books.
    – Drakes
    Commented Oct 1, 2022 at 21:20

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