The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Mar 6th, 2021, 9:19pm

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 1493 times)
JimIvey
Moderator
Senior Member
*****




  jamesdivey  
WWW

Posts: 2584
Re: Question about claim numbering in amendment.
« Reply #5 on: Sep 7th, 2006, 11:58am »
Quote Quote Modify Modify

Re Honeywell v. Sunstrand, Isaac's right.  I had misread the opinion.  I thought the element for which equivalents was denied was in the independent claim and it would have therefore been a different result if the amendment had gone the other way -- if the dependent claim had been incorporated into the independent claim.  I was wrong; the element at issue was in the dependent claim.  So, the court in effect held that it doesn't matter which way you go.  It seems that it wouldn't even make a difference whether you had started with 2 indepedent claims of slightly differing scope and canceled the broader one.
 
Mea culpa.
 
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 #6 on: Sep 9th, 2006, 6:19am »
Quote Quote Modify Modify

on Sep 7th, 2006, 11:02am, NeoDeas wrote:
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.

 
I cannot recall the source, but I remember being told the same thing.   I don't know how much credence to place on what I was told.   I'd be tempted to call the examiner if I weren't going to follow the examiner's recommendation verbatim.
 
 
IP Logged

Isaac
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