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   Question about claim numbering in amendment.

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Topic: Question about claim numbering in amendment. (Read 1493 times)

JimIvey
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Re: Question about claim numbering in amendment.
« Reply #5 on: Sep 7^th, 2006, 11:58am »

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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.

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James D. Ivey
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Isaac
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Posts: 3472

Re: Question about claim numbering in amendment.
« Reply #6 on: Sep 9^th, 2006, 6:19am »

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on Sep 7^th, 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.

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Isaac

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