Practical Tips for Preparing U.S. Patent Applications Presented on November 14, 2006 Darryl Mexic, Partner Sunhee Lee, Partner Seok-Won Stuart Lee, Associate.

Practical Tips for Preparing Practical Tips for Preparing U.S. Patent ApplicationsU.S. Patent Applications

Presentedon November 14, 2006

Darryl Mexic, PartnerSunhee Lee, Partner

Seok-Won Stuart Lee, AssociateSughrue Mion, PLLC

Legal RequirementsLegal Requirements

35 U.S.C. 112, first paragraph– The specification shall contain a written

description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Legal Requirements (cont.)Legal Requirements (cont.)

35 U.S.C. 112, second paragraph

– The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Sections of Patent ApplicationSections of Patent Application

Field of the Invention Description of the Related Art /

Description of the Background Art Summary of the Invention Detailed Description of the Exemplary

Embodiments Claims Abstract

Sample Field of the InventionSample Field of the Invention

The present invention relates to a method and an apparatus for processing a video signal, and more particularly, to a method and an apparatus for processing a video signal in which a video signal for an interlaced scanning mode is converted into a video signal for a progressive scanning mode.

Recommended Field of the InventionRecommended Field of the Invention

[The] Apparatuses and methods consistent with the present invention relate[s] to [a method and an apparatus for] processing a video signal, and more particularly, to [a method and an apparatus for] processing a video signal in which a video signal for an interlaced scanning mode is converted into a video signal for a progressive scanning mode.

Key Points: Field of the InventionKey Points: Field of the Invention

Best to have a Field of the Invention which:

– broadly defines the area(s) in which the invention can be used

Rationale:– To cover as many technologies as

possible

Sample Sample Description of the Related ArtDescription of the Related Art

/ Description of the Background Art/ Description of the Background Art

Description of the Prior Art

In the prior art, a processor was used . . . .

Recommended Recommended Description of the Related ArtDescription of the Related Art

/ Description of the Background Art/ Description of the Background Art

Description of the [Prior] Related Art

or

Description of the [Prior] Background Art

[In the prior art]Conventionally, a processor was used . . . .

Key Points: Key Points: Description of the Related ArtDescription of the Related Art

Description of the Background ArtDescription of the Background Art Avoid using the term “prior art”

– As section heading: “Description of the Prior Art” and in the section itself

Rationale

– “Prior art” potentially includes legal implications that inventor may not have intended

– Can be used by the Examiner as Applicant’s Admitted Prior Art in rejecting claims

Sample Summary of the InventionSample Summary of the Invention

Additional aspects and/or advantages of the present invention will be set forth in part in the description which follows and, in part, will be obvious from the description, or may be learned by practice of the present invention.

Recommended Summary of the InventionRecommended Summary of the Invention

Additional aspects [and/or advantages] of the present invention will be set forth in part in the description which follows and, in part, will be obvious from the description, or may be learned by practice of the present invention.

Key Points: Summary of the InventionKey Points: Summary of the Invention

Avoiding terms such as:– “It is the object of the present invention to . . . .” – “. . . advantages of the present invention . . . .”

Recommended terms:– “According to an aspect of the present invention,

there is provided...." – “It is an aspect of the present invention to ….”

Rationale– Eliminate possibility of narrowing the scope of the

invention

Sample Brief Description of the Sample Brief Description of the DrawingsDrawings

The above and/or other aspects and advantages of the present invention will become apparent and more readily appreciated from the following description of the embodiments, taken in conjunction with the accompany drawings of which:

FIG. 1 is a control block diagram of a video signal processing apparatus according to an embodiment of the present invention;

Recommended Brief Description of the Recommended Brief Description of the DrawingsDrawings

The above and[/or] other aspects [and advantages] of the present invention will become apparent and more readily appreciated from the following description of the exemplary embodiments, taken in conjunction with the accompany drawings of which:

FIG. 1 is a control block diagram of a video signal processing apparatus according to an exemplary embodiment of the present invention;

Key Points: Brief Description of the Key Points: Brief Description of the DrawingsDrawings

Use “exemplary” in conjunction with “embodiment”

Avoid the use of potentially narrowing terms such as “advantages”

Rationale:

– To preserve the scope of the invention

Key Points: DrawingsKey Points: Drawings

Drawing Labels - use separate labels for multiple separate views, e.g., use FIG. 1A and FIG. 1B rather than:

– FIG. 1 at the top of the page– (a) and (b) next to each drawing

"Related Art" rather than "Prior Art“ to label drawings showing what is already done in the field

Drawings must show all features/elements of the claims

Color drawings require petition - black/white copies of color images are acceptable only if the copies are of good image quality (electronically reproducible) 

Sample Detailed DescriptionSample Detailed Description

DETAILED DESCRIPTION OF PREFERRED EMBODIMENTS OF THE INVENTION

Recommended Detailed DescriptionRecommended Detailed Description

DETAILED DESCRIPTION OF [PREFERRED] EXEMPLARY EMBODIMENTS OF THE INVENTION

Sample Detailed DescriptionSample Detailed Description

. . . when the external source is a broadcasting station, the signal receiver 110 should include the tuner 10.

Referring to FIG. 4, at operation S11, the video signal processing apparatus according to an embodiment of the present invention receives a video signal from the external source.

Recommended Detailed DescriptionRecommended Detailed Description

when the external source is a broadcasting station, the signal receiver 110 [should] may include the tuner 10.

Referring to FIG. 4, at operation S11, the video signal processing apparatus according to an exemplary embodiment of the present invention receives a video signal from the external source.

Sample Detailed DescriptionSample Detailed Description

The storage unit 90, which can store digital broadcast signals, may be a HDD, an external PVR, a DVCR, etc. The storage unit 90 preferably communicates with the recording signal generator 35 . . . .

Recommended Detailed DescriptionRecommended Detailed Description

The storage unit 90, which can store digital broadcast signals, may be a hard disk drive (HDD), an external personal video recorder (PVR), a digital video cassette recorder (DVCR), [etc.] or other storage device known in the art. The storage unit 90 [preferably] communicates with the recording signal generator 35 . . . .

Sample Detailed DescriptionSample Detailed Description

If a broadcast signal based on the MPEG 2-TS (Moving Picture Experts Group 2-Transport Stream) is applied to a demodulator 31 . . . .

Recommended Detailed DescriptionRecommended Detailed Description

If a broadcast signal based on the [MPEG 2-TS (Moving Picture Experts Group 2-Transport Stream)] Moving Picture Experts Group 2-Transport Stream (MPEG 2-TS) is applied to a demodulator 31 . . . .

Sample Detailed DescriptionSample Detailed Description

. . . a first embodiment . . .

. . . a third embodiment . . .

Although a few embodiments of the present invention have been shown and described, it will be appreciated by those skilled in the art that changes may be made in these embodiments without departing from the principles and spirit of the invention, the scope of which is defined in the appended claims and their equivalents.

Recommended Detailed DescriptionRecommended Detailed Description

. . . a first exemplary embodiment . . . .

. . . a second exemplary embodiment . . . .

Although a few exemplary embodiments of the present invention have been shown and described, it will be appreciated by those skilled in the art that changes may be made in these embodiments without departing from the principles and spirit of the invention, the scope of which is defined in the appended claims and their equivalents.

Key Points: Detailed DescriptionKey Points: Detailed Description

Avoid terms such as:

– “should”

– “preferred,” “preferably” or variations thereof Suggested terms:

– “may”

– “preferably, but not necessarily,”

– use “exemplary” in conjunction with “embodiemnt”

Key Points: Detailed Description (cont.)Key Points: Detailed Description (cont.)

Avoid using “patent profanity,” if possible:

– fundamental, necessary, primary, key, essential, critical, special, main, significant, etc.

Rationale

– Potentially lead a reader of the patent application to believe that a particular feature is important or required aspect of invention

Sample ClaimSample Claim

A recording signal processing apparatus comprising:

a recording signal processing unit processing a video/audio signal

Recommended ClaimsRecommended Claims

A recording signal processing apparatus comprising:

a recording signal processing unit [processing] which processes a video/audio signal

or

A recording signal processing apparatus comprising:

a recording signal processing unit [processing] which is configured to process a video/audio signal

Sample ClaimsSample Claims

The recording signal processing apparatus according to claim 1, further comprising a storage unit for storing . . . .

Recommended ClaimsRecommended Claims

The recording signal processing apparatus according to claim 1, further comprising a storage unit [for storing] which stores . . . .

orThe recording signal processing apparatus

according to claim 1, further comprising a storage unit [for storing] which is configured to store . . . .

RationaleRationale

Clearly distinguish claim elements which may be interpreted as a means-plus-function element under 35 U.S.C. § 112, sixth paragraph

Rationale (cont.)Rationale (cont.)

Means-plus function elements:

“means for storing”

“storing means”

“storage unit for storing”

“storage unit storing”

Non-means-plus-function

elements:

“storage unit”

“storage device”

Sample ClaimSample Claim

. . . wherein the pathway selection part transmits the even data and the odd data of the second digital video signal to the first video data transmitting part when the second digital video signal is output from the video data output part . . . .

Recommended ClaimRecommended Claim

. . . wherein the pathway selection part transmits the even data and the odd data of the second digital video signal to the first video data transmitting part [when] if the second digital video signal is output from the video data output part . . . .

RationaleRationale

“when” implies a temporal relationship between

– i) transmitting the even data and the odd data and

– ii) the condition of the second digital video being output

“If” provides a broader relationship not temporally limited

Sample ClaimSample Claim

A video processing method comprising:

receiving a first video signal with a main channel and a sub channel

Recommended ClaimRecommended Claim

A video processing method comprising:

receiving a first video signal [with] comprising a main channel and a sub channel

Recommended ClaimRecommended Claim

“Comprising” has well established legal meaning

Legal meaning of certain terms such as “including,” “having,” “with,” etc., are not as well-established and may depend on context

Key Points: ClaimsKey Points: Claims

Clearly differentiate between non-means-plus-function elements and means-plus-function elements

If possible, use “if” instead of “when” so that claim is not temporally limited

Try to avoid using “having” and “with” or other synonyms which may ultimately not be given an open-ended interpretation

Sample AbstractSample Abstract

A digital video data transmitting apparatus for transmitting a digital video data to a panel driving part driving a flat display panel, includes: a video data output part outputting one of a first digital video signal having an even data and an odd data of n bit bus width and a second digital video signal having the even data and the odd data of bus width of m bit which is smaller than the n bit; a plurality of video data transmitting part to convert the digital video data to be input into the digital video data having the even data and the odd data of the bus width of k bit, which is smaller than the n bit, according to a predetermined digital video data transmitting method and to transmitting the converted digit video data to the panel driving part; and a pathway selection part for transmitting the even data of the first digital video signal to at least one of the plurality of video data transmitting parts and transmitting the odd data of the first digital video signal to the rest of the plurality of video data transmitting parts when the first digital video signal is output from the video data output part, and for transmitting the even data and the odd data of the second digital video signal to at least one of the plurality of video data transmitting parts when the second digital video signal is output from the video data output part. Thus, the present invention provides a digital video data transmitting apparatus and a display apparatus which can transmit a digital video data of a bus width of n bit which is larger than m bit by using a plurality of digital video data transmitting chips and receiving chips capable of processing the digital video data of the m bit bus width.

Recommended AbstractRecommended Abstract

A digital video data transmitting apparatus and display apparatus for transmitting digital video data to a panel driving part are provided. The apparatus includes a video data output part which outputs a first digital video signal having even data and odd data of an n-bit bus width or a second digital video signal having even data and odd data of an m-bit bus width; a plurality of video data transmitting parts which convert the digital video data into digital video data having even data and odd data of a k-bit bus width, according to a digital video data transmitting method, and which transmits the converted digit video data to the panel driving part; and a pathway selection part which selects between the data of the first digital video signal and the data of the second digital video signal when the second digital video signal is output.

(under 150 word-length requirement)

Sample AbstractSample Abstract

A data receiving apparatus comprises a determining part determining whether a clock signal and a data signal are respectively in a high state and/or in a low . . . .

Recommended AbstractRecommended Abstract

A data receiving apparatus [comprises] is provided. The apparatus includes a determining part determining whether a clock signal and a data signal are respectively in a high state and/or in a low . . . .

A data receiving apparatus and control method [comprises] are provided. The apparatus includes a determining part determining whether a clock signal and a data signal are respectively in a high state and/or in a low . . . .

Key Points: AbstractKey Points: Abstract Single paragraph Within the range of 50 to 150 words All legal phraseology should be avoided

– “said”– “comprises”– “means”

Avoid phrases which can be implied– "This disclosure concerns" – "The disclosure defined by this invention" – "This disclosure describes”

Thank YouThank You

Darryl Mexicdmexic@sughrue.com

Sunhee Leesxlee@sughrue.com

Seok-Won Stuart Leeslee@sughrue.com