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   Author  Topic: Need Help w/ this  (Read 1862 times)
Wiscagent
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Re: Need Help w/ this
« Reply #5 on: Nov 5th, 2006, 8:34am »
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The way I look at it is this – suppose Inventor develops a new gizmo using a new process.  You could write one specification and have claims to i) the new gizmo, ii) the new gizmo made by the new process, iii) anything made using the new process., iv) any process to make the new gizmo, v) the new process, vi) use of the new gizmo, and so forth.
 
Each set of claims has somewhat different scope, and depending on the details of the case, might require different searches and may be properly restricted.  I don’t know that there is anything special about means + function, or structure + function in that respect.
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Richard Tanzer
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JimIvey
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  jamesdivey  
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Re: Need Help w/ this
« Reply #6 on: Nov 6th, 2006, 8:04am »
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I routinely include method claims, computer-readable medium claims, and computer system claims in a single application/patent.  Only once have I ever experienced a restriction requirements and I was able to overcome the rejection.  For people who have some experience with software application, that's a routine issue.
 
Regards.
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James D. Ivey
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TataBoxInhibitor
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Re: Need Help w/ this
« Reply #7 on: May 16th, 2007, 12:01pm »
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Jim,
 
Would you care to share how you responsed?
 
Regards,
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TataBoxInhibitor
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Re: Need Help w/ this
« Reply #8 on: May 16th, 2007, 12:01pm »
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responded
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JimIvey
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Re: Need Help w/ this
« Reply #9 on: May 16th, 2007, 12:30pm »
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Here it is:
 
Quote:
Applicants respectfully traverse the Examiner’s requirement for restriction.  Aside from the various preambles, each group of claims recite generally the same limitations.  In particular, Claims 1-<n> recite a method comprising various steps; Claims <n+1>-<2n> recite a computer-readable medium storing computer instructions which cause a computer to perform generally the same steps; and Claims <2n+1>-<3n> recite a computer system comprising a processor, a memory, and a module which, when executed, causes the computer system to perform generally the same steps.  Therefore, if the Examiner conducts a search for the steps recited in any of Groups 1, 2, and 3, the Examiner conducts a search for the steps recited generally in all 3 Groups.  To require that Applicants prosecute the current Application as three (3) separate applications burdens the Applicants with unnecessary expense and delay.
 
In support of the traversal of the Examiner’s requirement for restriction, Applicants bring to the Examiner’s attention the following issued U.S. Patents prosecuted by Applicants’ undersigned Attorney:
 
 1. U.S. Patent 6,052,512 issued April 18, 2000 to Bret E. Peterson et al.;
 2. U.S. Patent 6,021,389 issued February 1, 2000 to Athanassios Protopapas; and
 3. U.S. Patent 6,293,801 issued September 25, 2001 to William M. Jenkins et al.
 
 Applicants’ undersigned Attorney has prosecuted other U.S. patent applications with similar multiple claim types to issuance.  Each of these U.S. Patents enjoys the presumption of validity notwithstanding inclusion of method claims, computer-readable medium claims, and computer system claims in the same Patent.  Accordingly, Applicants respectfully traverse the Examiner’s requirement of restriction.

 
FWIW, it wasn't persuasive until the case was transferred to a technology center familiar with computer-implemented inventions.
Regards.
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James D. Ivey
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