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   Ricky
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   Author  Topic: Ricky  (Read 1082 times)
Ricky Williams
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Ricky
« on: May 8th, 2007, 4:03pm »
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Is there some hard and fast rule that you should not use "means for" in dependent method claims?
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JimIvey
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Re: Ricky
« Reply #1 on: May 8th, 2007, 6:17pm »
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Yeah.  "Means for" is structure.  You can't mix structure and methods.
 
1.  A method comprising:
getting a homework assignment;
performing the homework assignment; and
providing results of the performing of the homework assignment.
 
2. The method of Claim 1 further comprising:
means for writing.
 
How does the means fit in with the steps of the method?  I don't know.
 
You could probably do this:
 
2.  The method of Claim 1 wherein performing comprises:
using means for writing.
 
Although, I'd rather do this:
 
2.  The method of Claim 1 wherein performing comprises writing.
 
Regards.
« Last Edit: May 8th, 2007, 6:18pm by JimIvey » IP Logged

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Re: Ricky
« Reply #2 on: May 8th, 2007, 6:50pm »
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The sixth paragraph is implicated with regard to steps only when the steps plus function without acts are present.  Method or process claims may therefore be written as a step for performing a specified function without the recital of acts in support of the function.  O.I. Corp. V. Tekmar Co., 115 F.3d 1576, 42 USPQ2d 1777, 1781 (Fed. Cir. 1997)
 
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Isaac
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Re: Ricky
« Reply #3 on: May 9th, 2007, 6:09am »
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Claims that describe a process performed with a novel/nonobvious apparatus may need to recite some of the structure of the apparatus.   I suppose in such cases instance you could legitimately use "means for" in a method claim.   As Jim suggests, means for is used to introduce a structural element described using functional language.
 
For US practice you should not use "means for" in any claim unless you intend to invoke 35 USC 112, sixth paragraph.
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Isaac
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Re: Ricky
« Reply #4 on: May 22nd, 2007, 10:33am »
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"means for" should not be used, however, I am sure you can change that language to "the ability to" for the method and cover what you would like.    
Example:
 
The method of claim 1, wherein the network includes means for communicating on a network.
 
"The method of claim 1, wherein the network includes the ability to communicate on a network.
 
Are there any problems with this?
 
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