The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Feb 26th, 2021, 11:04pm

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Patent Filing and Prosecution
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Question about claim numbering in amendment.
« Previous topic | Next topic »
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Question about claim numbering in amendment.  (Read 1488 times)
NeoDeas
Newbie
*




   
WWW

Posts: 13
Question about claim numbering in amendment.
« on: Sep 6th, 2006, 8:53pm »
Quote Quote Modify Modify

I've received a final action that indicates that newly-added claims are allowable.  I had added claims 25, 26 in the previous amendment because I didn't want to include those amendments in the initial independent claims.  Now that claims 25 & 26 are allowable, I'm wondering if  
 
(1) I should cancel the original independent claims ( 1 & 8 ), rewrite 25 & 26 as independents and make the remaining claims (2-7, 9-24) depend from these allowable claims  
 
OR  
 
(2) Incorporate the limitations of claims 25 & 26 into claims 1 & 8, respectively, and then cancel 25 & 26?
 
It seems weird having claim 2 depend from claim 25 and claim 9 depend from claim 26, but I'm worried that if I cancel these and incorporate them into the original independents, this quirky examiner won't enter the amendments.  I know you're not supposed to renumber claims, which would make the whole thing easier.  I plan on including a request re: renumbering in the amendment if I go with option 1.
 
Thoughts?
 
Thanks!
 
ND
IP Logged

Recovering Inventaholic

http://www.neodeas.com
Isaac
Senior Member
****




   


Posts: 3472
Re: Question about claim numbering in amendment.
« Reply #1 on: Sep 7th, 2006, 3:44am »
Quote Quote Modify Modify

After allowance, the examiner will renumber and reorder the claims.   Don't worry about the current apparent mess.
IP Logged

Isaac
JimIvey
Moderator
Senior Member
*****




  jamesdivey  
WWW

Posts: 2584
Re: Question about claim numbering in amendment.
« Reply #2 on: Sep 7th, 2006, 8:20am »
Quote Quote Modify Modify

While it's unlikely to make a difference, I'd suggest option (2).  Under Festo, any amended element gets no equivalents (things literally outside the element but still covered by the element).  The doctrine of equivalents is really pared back, so only loss of coverage is probably very small if any at all.
 
Under option (1), the entirety of the claim other than the incremental portion of Claim 25 is amended and not entitled to any equivalents.  Under option (2), just the incremental portion of Claim 25 is amended and not entitled to any equivalents.
 
Odds are that this really won't ever matter to you, but it's a little thing you can do to sway the odds in your favor.
 
Lastly, it's entirely likely that, if your case ever gets there, the Federal Circuit will understand that this is largely a triumph of form over substance and it won't make a difference which option you choose.  However, under Festo, it would seem that it would make a difference.  It just goes to show how silly and abitrary the Festo rule is.
 
Regards.
IP Logged

--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Isaac
Senior Member
****




   


Posts: 3472
Re: Question about claim numbering in amendment.
« Reply #3 on: Sep 7th, 2006, 8:31am »
Quote Quote Modify Modify

on Sep 7th, 2006, 8:20am, JimIvey wrote:
Lastly, it's entirely likely that, if your case ever gets there, the Federal Circuit will understand that this is largely a triumph of form over substance and it won't make a difference which option you choose.  However, under Festo, it would seem that it would make a difference.  It just goes to show how silly and abitrary the Festo rule is.

 
We've discussed this before.  Honeywell v. Sundstrand pretty much killed off the idea that form could triumph over substance in this fashion at least.   While that does not make the Festo rule any more correct, it does mean that the CAFC is not silly in this particular way.  
 
I realize that defending the CAFC in anyway makes me a bit of a pariah  Smiley.
 
If the district court follows CAFC precedent it won't make any difference whether you amend claim 1, or rewrite claim 25 to independent format.    In this particular case, the PTO might well renumber claim 25 to claim 1 if you chose option 2.
IP Logged

Isaac
NeoDeas
Newbie
*




   
WWW

Posts: 13
Re: Question about claim numbering in amendment.
« Reply #4 on: Sep 7th, 2006, 11:02am »
Quote Quote Modify Modify

Thank you both for sharing your thoughts on this.
 
Normally, I would prefer to simply incorporate the limitations of claims 25 & 26 into claims 1 & 8, as it is cleaner.  However, in this case, two issues give me pause:
 
1.  I vaguely remember being told years ago that if you cancel the actual claims indicated as allowable, and incorporate those limitations into other claims, the examiner is not obligated to allow those other claims.
 
2.  In this particular case, we have now received a final action after receiving 3 non-final actions - I had to gently point out examiner errors in the first 2 OAs.  So this examiner makes me a bit nervous.  We're quite happy with the scope indicated as allowable, and I don't want to give this examiner any excuse to disallow the claims at this point.
 
The screwy numbering irks me, but I think I'll just go with option 1 and then specifically request renumbering under 37 CFR 1.126:
 
"When the application is ready for allowance, the examiner, if necessary, will renumber the claims consecutively in the order in which they appear or in such order as may have been requested by applicant."
 
I realize the examiner may not technically be bound by his indication of allowability, but am relieved that you both feel option 1 is at least viable, as I was leaning that way out of examiner-engendered paranoia.  
 
ND
IP Logged

Recovering Inventaholic

http://www.neodeas.com
Pages: 1 2  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