The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Jun 24th, 2018, 3:01am

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Patent Drafting/Interpretation
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Mixed claim types?
« Previous topic | Next topic »
Pages: 1  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Mixed claim types?  (Read 932 times)
BotchedExperiment
Newbie
*




   
Email

Posts: 34
Mixed claim types?
« on: Dec 13th, 2007, 4:28pm »
Quote Quote Modify Modify

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?
IP Logged

Repeating experiments since 1998.
PA
Guest
Re: Mixed claim types?
« Reply #1 on: Dec 13th, 2007, 7:49pm »
Quote Quote Modify Modify Remove Remove

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.
IP Logged
BotchedExperiment
Newbie
*




   
Email

Posts: 34
Re: Mixed claim types?
« Reply #2 on: Dec 14th, 2007, 10:54am »
Quote Quote Modify Modify

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.
« Last Edit: Dec 14th, 2007, 10:57am by BotchedExperiment » IP Logged

Repeating experiments since 1998.
DJoshEsq
Full Member
***




   
Email

Posts: 104
Re: Mixed claim types?
« Reply #3 on: Dec 14th, 2007, 3:21pm »
Quote Quote Modify Modify

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.
IP Logged

D. Joshua Smith, Esq.
Registered Patent Attorney
McDonald Hopkins, LLC
Cleveland, OH
216-348-5400
Pages: 1  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright © 2000-2004 Yet another Bulletin Board