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   usage of "first, second and third" in cl
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   Author  Topic: usage of "first, second and third" in cl  (Read 586 times)
wade
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usage of "first, second and third" in cl
« on: Jun 23rd, 2007, 8:25am »
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when we drafting a claim, sometimes we will say "a first element" and "a second element"...,because the two elements are the same kind of element.
i saw two independent claims like these:
1. a communication system, comprising a first network device and a second network device, wherein.....
5. a communication system, comprising a third network device and a second network device, wherein....
 
in the detail description, there are two embodiments. one embodiment includes two network device, one is named as first network device, and the other is named as second network device.
the other embodiment also includes two network devices, one is second network device which is same as that of embodiment 1. The other network device is named as third network device just because the drafter wants to make the third network device different from the first network device.
Back to the claim 5, if it is proper that there are only "the second network device" and "the third network device" but no "the first network device"?  when explaining the scope of claim 5, will someone say: hey, where are your "first network device"? even there has no "the first network device" in claim 5, but in fact the first network device must be comprised in claim 5, or not, why there are "the second network device" and "the third network device"?
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pentazole
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Re: usage of "first, second and third" i
« Reply #1 on: Jun 23rd, 2007, 10:16am »
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There should be a clause in the spec denoting that first, second, third, etc. don't indicate a specific order, and are just used to differentiate different elements.  Noone should ask you "where is the first element" if you only have second and third, but if you don't have that defined in the spec you leave room for people to do just that.
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Wiscagent
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Re: usage of "first, second and third" i
« Reply #2 on: Jun 23rd, 2007, 1:04pm »
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"5. a communication system, comprising a third network device and a second network device, wherein.... "
 
I take a more literal interpretation of this claim than pentazole.  Since there is a 2nd & a 3rd network device, a 1st network device must exist.
 
But the larger point is that more than one reasonable interpretation can be made.  The claim probably should have been rejected as being indefinite.  Also, its indefiniteness is likely to be a problem if the claim is ever asserted.
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Richard Tanzer
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pentazole
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Re: usage of "first, second and third" i
« Reply #3 on: Jun 23rd, 2007, 1:37pm »
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I respectfully disagree Wink
 
First, second, third, etc. are sometimes unavoidable especially when, in my case, dealing with layered articles in the polymer arts. a *first* element does not necessarily have to be the first in a sequence (though it might be in this case I don't know). a first element, second element, third element could be the equivalent of saying element A, element B, element C. I'ts just to distinguish one element from another. But since it could be interpreted otherwise, it should be defined like I mentioned earlier to avoid such confusion. If it's not defined then we could start getting into ambiguity and indefiniteness.
« Last Edit: Jun 23rd, 2007, 1:40pm by pentazole » IP Logged
TataBoxInhibitor
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Re: usage of "first, second and third" i
« Reply #4 on: Jun 23rd, 2007, 2:39pm »
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If location is specific, use some other adjective based on function or location, otherwise, first, second, third if no specific orientation is required.  Thus, I do not think that someone will ask about a first network device off of claim 5, provided everything is properly defined in the specification.
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