By: Robert R. Sachs
The difficulty which American courts…have had…goes back to the primitive thought that an “invention” upon which the patent gives protection is something tangible. The physical embodiment or disclosure, which, in itself is something tangible is confused with the definition or claim to the inventive novelty, and this definition or claim or monopoly, also sometimes called “invention” in one of that word’s meanings is not something tangible, but is an abstraction. Definitions are always abstractions. This primitive confusion of “invention” in the sense of physical embodiment with “invention” in the sense of definition of the patentable amount of novelty, survives to the present day, not only in the courts, but among some of the examiners in the Patent Office. E. Stringham, Double Patenting, Washington D.C., Pacot Publications (1933) (emphasis added).
The black letter law statement that claims are not limited to the disclosed embodiments, Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), only makes sense because claims necessarily make use of abstractions to cover a wide range of embodiments. As the Phillips court states, “persons of ordinary skill in the art rarely would confine their definitions of terms to the exact representations depicted in the embodiments.” Id. at 1323 (emphasis added). The only way one does not confine their definition to an exact representation is by the use of abstractions.