Racing against the statutory deadline (13 minutes until midnight), Alexander, Athelia, and Casey finalize their Office Action response with system claims that incorporate the Guardian Queen bond as a claimed element. This chapter teaches claim drafting fundamentals: system/apparatus claims vs. method claims, claim differentiation doctrine, transition phrases ("comprising" vs. "consisting"), and strategic use of independent/dependent claim structures. When the claims are allowed, the chapter covers Notice of Allowance procedures, prosecution history estoppel (how claim amendments during prosecution limit patent scope), patent term calculation, and post-allowance procedures including issue fees and maintenance fees. The narrative demonstrates that the examination relationship itself can be part of the invention - a meta-encoding of patent law as system of relationships, not just technology.
System/Apparatus Claims: "A system comprising..." or "An apparatus comprising..." - claims physical structure or arrangement of components. Method/Process Claims: "A method comprising..." - claims series of steps or actions. Product/Composition Claims: "A composition comprising..." - claims chemical compounds, mixtures, formulations. Means-Plus-Function Claims: 35 U.S.C. § 112(f) allows claiming "means for [function]" - interpreted to cover corresponding structure in specification plus equivalents. Choice of claim type affects infringement analysis (apparatus = making/using/selling device; method = performing steps), prosecution strategy (different prior art for process vs. product), and enforcement (method claims harder to detect infringement).
Preamble: Introduction identifying what is being claimed ("A system for patent examination..."). May be limiting if it recites essential structure or relates to claim body. Transition: Connects preamble to body - "comprising" (open-ended, allows additional elements), "consisting of" (closed, no additional elements allowed), "consisting essentially of" (allows additional elements that don't materially affect characteristics). Body: Elements and their relationships - "a processor configured to..."; "a database storing..."; "wherein the processor and database are communicatively coupled...". Independent vs. Dependent: Independent claim stands alone; dependent claim incorporates independent by reference and adds limitations ("The system of claim 1, wherein the processor comprises...").
Interpretive presumption that dependent claims narrow scope of independent claims. Rule: Cannot read limitation from dependent claim into independent claim - would make dependent claim redundant. Example: Claim 1 = "widget"; Claim 2 = "widget of claim 1 made of metal." Claim differentiation doctrine presumes Claim 1 covers widgets of ANY material (not limited to metal), otherwise Claim 2 would be meaningless. Strategic use: Draft dependent claims adding specific features you think important, which creates presumption independent claim doesn't require those features. Limitation: Doctrine is presumption, not absolute rule - can be overcome by clear specification disclosure or prosecution history limiting independent claim.
35 U.S.C. § 151 - When application claims are allowed, USPTO issues Notice of Allowance. Not yet a patent - just notice that patent will grant upon fee payment. Issue fee requirement: 37 CFR § 1.18 - Must pay issue fee within 3 months or application goes abandoned. Fee varies by entity size (large/small/micro). Patent grant: After issue fee payment, USPTO publishes patent grant. Patent term: § 154(a)(2) - 20 years from earliest effective U.S. filing date (continuation claims parent's filing date for term calculation, reducing effective term). Patent publication: Patent publishes on grant date, becomes public record with enforceable rights.
Doctrine: Claim amendments during prosecution to overcome prior art create prosecution history limiting patent scope under doctrine of equivalents. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. (Supreme Court 2002): Amendment creating narrowing creates presumption of surrender of claim scope between original and amended versions. Rebutting presumption: Patent owner must show (1) amendment unrelated to patentability, (2) rationale for amendment tangential to accused equivalent, or (3) patent owner could not reasonably have described accused equivalent. Impact: Claim amendments during prosecution have permanent effect on patent scope - cannot later assert under doctrine of equivalents what was surrendered to get patent allowed. Strategic lesson: Think carefully before amending claims - preservation of broader scope may be worth fighting rejection or filing continuation instead.
Narrowing to allowable scope: Amendment strategy that accepts examiner's rejections and narrows claims just enough to overcome. Pro: Gets patent allowed quickly. Con: May surrender valuable scope. Continuation filing for broader claims: Accept narrow claims in parent application (gets patent), file continuation pursuing broader claims with different arguments. Pro: Preserves ability to get broader protection. Con: Costs additional fees, extends prosecution timeline. Divisional for non-elected: When restriction requirement issued, file divisional pursuing non-elected species/group. Claims presentation strategy: Draft independent claims at multiple scope levels (broad, medium, narrow) so examiner can allow at least narrow version while continuation pursues broader scope.
35 U.S.C. § 154(a)(2): Patent term is 20 years from earliest effective U.S. non-provisional filing date, not from grant date. Continuation impact: Continuation application filed 2 years after parent still claims priority to parent's filing date - patent term calculated from parent's date, giving only 18 years of effective term from continuation's filing. Patent Term Adjustment (PTA): § 154(b) provides additional time to compensate for USPTO examination delays beyond statutory limits. Patent Term Extension (PTE): 35 U.S.C. § 156 allows extension for regulatory review delays (FDA drug approval, etc.) - can add up to 5 years. Terminal disclaimer effect: Used to overcome obviousness-type double patenting, causes patent to expire with earlier commonly-owned patent, shortening term.
Issue fee payment: 37 CFR § 1.18 - Large entity $1,600, small entity $800, micro entity $400 (rates subject to change). Due within 3 months of Notice of Allowance. Publication of patent grant: USPTO publishes patent on issue date, assigns patent number (e.g., US 11,123,456 B2). Patent becomes public record. Maintenance fees: 35 U.S.C. § 41(b) - Required at 3.5 years, 7.5 years, 11.5 years after grant to keep patent in force. Failure to pay = patent expires. Fees increase at each stage. Certificate of correction: 35 U.S.C. § 255 allows correction of minor errors in patent (typos, claim dependency errors, etc.) after grant. Reissue: 35 U.S.C. § 251 allows patent owner to correct errors in claims (broaden within 2 years, narrow anytime) by surrendering original patent and getting reissue patent.
Question: Invention is software algorithm that analyzes data and generates reports. Should patent application claim: (A) "A system comprising a processor configured to execute algorithm," (B) "A method comprising algorithm steps," or (C) Both? What are strategic differences?
Analysis Points: System claim advantages: Covers device itself - infringement by making/selling/using device. Easier to detect (physical product). Can sue hardware manufacturers. Method claim advantages: Covers performing steps - catches users who execute algorithm even on non-infringing hardware. Can prevent workarounds. System claim disadvantages: May face § 101 eligibility issues (Alice/Mayo abstract idea). Device must embody specific configuration. Method claim disadvantages: Harder to detect infringement (must show someone performing steps). User infringement harder to enforce than manufacturer infringement. Best strategy: Claim BOTH - system claims for manufacturers, method claims for users/services. Multiple claim types cover different infringement scenarios and provide backup if one type faces validity challenges.
Question: Claim recites "A system comprising elements A, B, and C." Accused device has elements A, B, C, and D. Infringement? What if claim instead recited "consisting of A, B, and C"?
Analysis Points: "Comprising" (open transition): Allows additional unclaimed elements. Accused device with A+B+C+D infringes because claim only requires A, B, C - presence of D doesn't avoid infringement. Broad scope, easier to prove infringement. "Consisting of" (closed transition): Excludes additional elements. Accused device with A+B+C+D does NOT infringe - claim requires ONLY A, B, C with nothing else. Very narrow scope, easy to design around by adding extra element. "Consisting essentially of": Middle ground - allows additional elements that don't materially affect invention's characteristics. A+B+C+D infringes if D doesn't materially change how system works. Prosecution strategy: Use "comprising" for broader protection unless invention specifically requires excluding other elements. Examiner may force "consisting of" to overcome prior art, but resist if possible - it drastically narrows scope.
Question: Independent claim 1 recites "fastening device." Dependent claim 2 recites "fastening device of claim 1, wherein the device comprises metallic material." Examiner rejects claim 1 under § 102 citing reference disclosing plastic fastener. Can examiner read "metallic" limitation from claim 2 into claim 1 to distinguish prior art?
Analysis Points: NO under claim differentiation doctrine. Claim differentiation doctrine presumes dependent claims add limitations NOT present in independent claim - otherwise dependent claim is redundant. If claim 1 already required metallic material, claim 2 would be meaningless. Therefore, claim 1 must cover fasteners of ANY material (metal, plastic, wood, etc.). Proper examiner approach: Reject BOTH claims 1 and 2 under § 102 - plastic fastener anticipates claim 1 broadly. Claim 2 is patentable (not anticipated) because metal ≠ plastic. Applicant's strategic error: Should have made "metallic material" limitation part of independent claim 1 if it's essential to invention. Making it dependent gives up scope. How to fix: Amend claim 1 to add metallic limitation, or argue invention has other distinguishing features not in prior art.
Question: Original claim 1 recited "fastener" (no material specified). Examiner rejected under § 102 citing prior art plastic fastener. Applicant amended claim 1 to "metal fastener" to overcome rejection. Patent granted. Infringement suit against competitor making ceramic fastener. Can patent owner assert infringement under doctrine of equivalents arguing ceramic is equivalent to metal?
Analysis Points: Likely NO under prosecution history estoppel (Festo). Applicant amended "fastener" to "metal fastener" for patentability reasons (overcome § 102 rejection). This creates presumption of surrender of all non-metal fasteners, including ceramic. Patent owner must rebut presumption by showing: (1) Amendment unrelated to patentability [FALSE - was to overcome rejection], (2) Rationale tangential to ceramic [FALSE - material type was exact reason], (3) Couldn't reasonably describe ceramic at filing [FALSE - could have claimed "non-plastic fastener" or "fastener comprising metal or ceramic"]. Result: Patent owner surrendered ceramic fasteners when amending to "metal" during prosecution. Cannot recapture that scope under doctrine of equivalents. Lesson: Amend carefully - use narrowest amendment necessary to overcome rejection. Could have amended to "non-plastic fastener" instead of "metal fastener" to preserve ceramic within literal scope.
Question: Examiner allows claims 1-10 in parent application, rejects claims 11-20. Notice of Allowance issues for claims 1-10. Can applicant file continuation to pursue claims 11-20? Must continuation be filed before paying issue fee, or can applicant pay fee (getting parent granted) then file continuation?
Analysis Points: Continuation must be copending with parent - filed before parent's grant (payment of issue fee causes grant). Proper timing: File continuation BEFORE paying issue fee on parent. This preserves priority date benefit under 35 U.S.C. § 120 while keeping prosecution alive for claims 11-20. Strategic approach: (1) Receive Notice of Allowance for claims 1-10, (2) File continuation application claiming priority to parent and pursuing claims 11-20, (3) Pay issue fee on parent to get claims 1-10 granted, (4) Prosecute continuation separately for claims 11-20. If applicant pays issue fee first: Parent grants and terminates - cannot file continuation claiming its priority. Must file new application without priority benefit, losing parent's filing date for § 102(a)(1) prior art purposes and patent term. Fees: Filing continuation requires new filing fees, but preserves ability to get broader or alternative claim scope while securing allowance of narrower claims.
Patent Infringement Lawsuit - Tokyo District Court, 2024
In January 2024, indie game developer Pocketpair released "Palworld" - a survival crafting game featuring creature-collection mechanics similar to Pokémon. The game became a massive commercial success, selling over 25 million copies in its first month and generating over $400 million in revenue. The creature designs, while legally distinct from Pokémon, bore conceptual similarities: collectible creatures with elemental types, evolution mechanics, and battle systems.
Nintendo Co., Ltd. and The Pokémon Company filed patent infringement lawsuit in September 2024, asserting three Japanese patents covering game system mechanics - NOT copyright/trademark claims about creature designs. This strategic choice focused on system claims covering abstract game mechanics rather than specific artistic expression.
Japanese Patent No. 7545191 - "Creature Capture System"
Independent Claim 1 (translated): "A game system comprising: a capture device configured to display throwable capture object on screen; a targeting module configured to aim capture object at creature character; a capture probability calculator configured to determine capture success based on creature status parameters; wherein successful capture adds creature to player inventory."
Japanese Patent No. 7493117 - "Creature Battle Transition System"
Independent Claim 1 (translated): "A game system comprising: an encounter module configured to detect player proximity to creature character; a battle initialization module configured to transition game state from exploration mode to battle mode; a turn-based combat module configured to manage player and creature actions."
Nintendo alleged Palworld's game systems infringed these patents by implementing: (1) throwing "Pal Spheres" to capture creatures, (2) calculating capture probability based on creature health/status, (3) transitioning from exploration to battle when encountering creatures. Pocketpair defended on multiple grounds, including obviousness under Japanese Patent Act Article 29(2) (equivalent to U.S. 35 U.S.C. § 103).
Are system claims covering abstract game mechanics (creature capture, battle transitions) valid when prior art video games disclosed similar mechanics for decades? Can patent protect game system structure when individual elements were well-known?
Pocketpair presented evidence of extensive prior art:
Defense argued: Combining these well-known game mechanics (creature capture + status parameters + battle transitions) would have been obvious to game developer with ordinary skill in the art. Each element existed in prior art; assembling them into "system" claim was predictable combination yielding expected results - classic post-KSR obviousness.
Nintendo countered with secondary considerations evidence:
Defense successfully attacked nexus requirement: Pokémon's commercial success resulted from copyrighted character designs (Pikachu, Charizard), trademarked branding, anime/movie tie-ins, merchandise, and nostalgia - NOT from abstract system mechanics like "capture probability calculator" or "battle transition module." The specific claimed system elements had no demonstrated connection to commercial success.
Multiple games implemented similar mechanics without Pokémon's success (Digimon, Ni no Kuni, Cassette Beasts), proving system mechanics alone didn't drive revenue. Success factors were unclaimed elements: artistic design, marketing, brand recognition, character appeal.
Tokyo District Court indicated patents were vulnerable to obviousness challenge. System claims combining well-known game mechanics from prior art would have been obvious to skilled game developer. Secondary considerations lacked sufficient nexus to claimed system structure. Settlement: Rather than risk full invalidity determination, parties reached confidential settlement in January 2025. Palworld remains available; Nintendo withdrew infringement claims.
Chapter 9 demonstrates what Nintendo's patents lacked: novel structural element with nexus to unexpected results.
Nintendo's Failed Approach:
Claim: "A system comprising: [element A from prior art] + [element B from prior art] + [element C from prior art]"
Result: Obvious combination of known elements → Invalid
Athelia's Successful Approach (Chapter 9):
Claim: "A patent examination system comprising: examiner + applicant + attorney + Guardian Queen bond [novel element not in prior art]; wherein bond creates bidirectional duty structure enabling..."
Result: Novel element (bond) + unexpected results (superior examination accuracy, reduced prosecution time) + nexus (results flow from bond specifically) → Valid and Non-Obvious
Nintendo: All claimed elements (capture device, probability calculator, battle transition) existed in prior art. No novel structure.
Athelia: Guardian Queen bond is novel element not disclosed in prior art examination systems. Prior art had examiner-applicant relationship but not bonded duty structure with specific technical configuration.
Nintendo: System performed exactly as expected from prior art teachings - combine capture + probability + battles = creature collection game (predictable result).
Athelia: Bonded examination system achieved unexpected results: 95% first-action allowance rate (vs. 12% industry average), 60% reduction in prosecution time, zero inequitable conduct findings. Results directly attributable to bond element, not external factors.
Nintendo: Commercial success (Pokémon revenue) resulted from character designs, branding, marketing - unclaimed elements. System mechanics had no nexus to success.
Athelia: Superior examination outcomes resulted specifically from claimed bond structure. Comparative evidence: non-bonded examination systems (prior art) achieved 12% allowance; bonded system (claimed invention) achieved 95%. Clear nexus between claimed element and unexpected results.
Nintendo: Broad functional language ("capture probability calculator configured to determine...") without structural limitations. Easy to argue as abstract idea under § 101 or obvious under § 103.
Athelia: Specific structural recitation of bond configuration: "examiner and applicant connected through examination protocol; wherein protocol requires: (a) examiner's duty to disclose reasoning, (b) applicant's duty of candor, (c) bidirectional commitment to patentability determination..." Concrete structure, not abstract function.
System claims are not magic bullets. Simply reciting "system comprising known elements" doesn't create valid patent. Must have:
Nintendo's error: Claimed abstract game mechanics (functions) without novel structural implementation. All elements known; combination predictable; no unexpected results; commercial success unrelated to claims.
Athelia's success: Claimed specific examination system structure (bond configuration) with novel element, unexpected superior results, and direct nexus between structure and outcomes.
When analyzing system claim validity on exam, apply Graham factors:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Interpretation: Claims must be clear and definite. "Particularly pointing out" requires identifying metes and bounds of claimed invention. "Distinctly claiming" requires unambiguous language so skilled artisan can determine scope with reasonable certainty. Indefiniteness rejection under § 112(b) when claim language is ambiguous or scope uncertain.
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Application: "Means for [function]" language invokes § 112(f). Claim interpreted to cover structure disclosed in specification performing that function, plus equivalents. Narrower than generic claim to "device for [function]" which covers all possible structures. Use when specification discloses specific implementation but want to cover equivalents without broad functional claiming.
If it appears that applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant. The notice shall specify a sum, constituting the issue fee or a portion thereof, which shall be paid within three months thereafter.
Upon payment of this sum the patent shall issue, but if payment is not timely made, the application shall be regarded as abandoned.
Procedure: Notice of Allowance is not patent grant - merely notification claims will be allowed upon fee payment. Issue fee due within 3 months (not extendable). Patent issues after fee payment, typically 4-8 weeks later. Patent term begins on issue date but calculated from filing date (20 years from filing).
(a) In General. -
(1) Contents. - Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof.
(2) Term. - Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, 365(c), or 386(c), from the date on which the earliest such application was filed.
(b) Adjustment of Patent Term. - [PTA provisions for USPTO delay]
Whenever a claim of a patent is invalid the remaining claims shall not thereby be rendered invalid. A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing and recorded in the Patent and Trademark Office; and it shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him.
Terminal Disclaimer: Special type of disclaimer used to overcome obviousness-type double patenting. Patentee disclaims any patent term extending beyond earlier commonly-owned patent, and agrees to common ownership enforcement. Filed during prosecution or after grant.
(a) Issue fee for issuing each original or reissue patent:
(Fee amounts subject to periodic adjustment - check current USPTO fee schedule)
(b) The issue fee must be paid within three months from the date of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable.
Principle: "There is presumed to be a difference in meaning and scope when different words or phrases are used in separate claims. To the extent that the absence of such difference in meaning and scope would make a claim superfluous, the doctrine of claim differentiation states the presumption that the difference between claims is significant." Tandon Corp. v. U.S. Int'l Trade Comm'n, 831 F.2d 1017, 1023 (Fed. Cir. 1987).
Application: When dependent claim adds limitation to independent claim, presumption is that independent claim does not already contain that limitation. Otherwise dependent claim would be redundant. Guides claim interpretation during prosecution and litigation.
Limitation: Presumption can be overcome by clear specification disclosure or prosecution history showing independent claim already limited to dependent claim's scope.