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Topic: Mixed claim types? (Read 1352 times) |
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BotchedExperiment
Newbie
Posts: 34
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Mixed claim types?
« on: Dec 13th, 2007, 4:28pm » |
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I'd like to claim a mechanical assembly, wherein part of the assembly is folded in a specific manner:
A (mechanical) assembly comprising:
- an X;
- a folded Y, wherein Y is folded according to a method comprising the steps of:
---ing;
---ing; and,
---ing;
-a Z; and,
-a Q.
I'm not trying to write a product-by-process claim, as the lead attorney doesn't like them, but maybe that's exactly what the above example claim is.
What to you guys think?
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Repeating experiments since 1998.
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PA
Guest
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Before you mix method and apparatus claims together, you might want to read IPXL Holdings vs. Amazon from the Federal Circuit a couple of years ago.
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BotchedExperiment
Newbie
Posts: 34
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Re: Mixed claim types?
« Reply #2 on: Dec 14th, 2007, 10:54am » |
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PA, thanks for the input, but I think IPXL v Amazon is not applicable to my claim.
IPXL's claim was considered indefinite because the scope of the claim could not be defined. Further, the court upheld the previous decisions wherein reciting both an apparatus and a method for using the apparatus in a claim is indefinite.
My claim does not claim an apparatus and a method for using it, but rather an apparatus and a method for manipulating one part of the apparatus so that the apparatus functions as intended.
Any thoughts?
As I noted before, this is only one type of claim I'm writing for this assembly. Other claims are typical method claims.
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| « Last Edit: Dec 14th, 2007, 10:57am by BotchedExperiment » |
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Repeating experiments since 1998.
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DJoshEsq
Full Member
Posts: 104
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Re: Mixed claim types?
« Reply #3 on: Dec 14th, 2007, 3:21pm » |
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Reorganize the claim! You do not need those method steps just define how Y is positioned. For example, Y has a first side and a second side, where the second side is folded onto the first side.
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D. Joshua Smith, Esq.
Registered Patent Attorney
McDonald Hopkins, LLC
Cleveland, OH
216-348-5400
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