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(Message started by: lurking in the shadows on May 11th, 2007, 1:23am)

Title: Claims in light of the specification
Post by lurking in the shadows on May 11th, 2007, 1:23am
Has any patent attorney/agent ever had problems figuring out a client drafted spec and a previous attorney written claims to determine what in the heck they were covering?

I mean during markman hearings they try and define these things, how are you supposed to take over anothers work and figure out where they were going with the claims?

Title: Re: Claims in light of the specification
Post by JimIvey on May 11th, 2007, 10:49am
Yes, I have and all the time.

I don't have any answers, though.  Usually, that's a clue that the application wasn't written very well.  And, that's probably a perfect reason to not have one person draft the spec and another draft the claims.  Even so, the person drafting the claims ought to be careful to follow the spec.  If that can't be done reasonably with the spec the way it is, the person drafting the claims ought to modify the spec as needed.

Now, getting away from what ought to be done and closer to what you can do when faced with that problem, I try to divine what was in the respective minds of the previous drafters -- looking for some heart, essence, or gist of the invention.  Then, that might shed some light on what they were thinking and help you to work from there.

Notice that I said "try" and "might."

Regards.

Title: Re: Claims in light of the specification
Post by lurking in the shadows on May 11th, 2007, 1:04pm
thank u for the reply.  it is weird because terms are used to couch terms used in the specification, but that term does not exist in the specification.   It would seem to me, that if you amended the spec to include this term, you would be adding new matter correct?   I mean, if the terms used in the spec were all related in some way, it would not be new matter, but if unrelated, you are ecompassing them in some random term.   This is very difficult.

Title: Re: Claims in light of the specification
Post by Isaac on May 11th, 2007, 1:28pm

on 05/11/07 at 13:04:13, lurking in the shadows wrote:
It would seem to me, that if you amended the spec to include this term, you would be adding new matter correct?


The claims as filed are part of the specification.  So moving terminology from the claims as filed into the disclosure may not constitute new matter.   In that case, the question is instead whether the specification as a whole contains support for the claims.

It isn't clear to me from your original question at exactly what stage of prosecution you are becoming involved.  


Title: Re: Claims in light of the specification
Post by lurking in the shadows on May 11th, 2007, 1:59pm
I am filing a prel. amend, trying to claim matter that was left unclaimed.  I am finding the problem in trying to couch many terms with one word.  However, I guess I could always write a dependent for each, but that would cost more.  

I always try and use spec vocabulary in trying to do this, but it is difficult.

Title: Re: Claims in light of the specification
Post by TataBoxInhibitor on May 16th, 2007, 9:03am
That is a tough question to answer without seeing the application.  If you try and couch elements within a term that is not in the spec or claims, I think you may find yourself with a new matter rejection/objection.  It is tough to say.  If the elements are related to some extent, then maybe there is hope.   I am not sure.



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