The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Jul 7th, 2020, 12:31pm

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)
   Method Claims and Divisionals
« Previous topic | Next topic »
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Method Claims and Divisionals  (Read 1193 times)
patag2001
Junior Member
**




   


Posts: 82
Method Claims and Divisionals
« on: Oct 4th, 2007, 10:05am »
Quote Quote Modify Modify

Frequently, patent applications are written to include claims to more than one statutory class.  Let’s say a patent application received by the PTO includes structure and method claims.  Is it more likely that the PTO will deem the application a divisional based on the type on method claims included?  In particular, is the application more likely to become a divisional if the method claims are a method of making or a method of using?
 
Many Thanks!
IP Logged
pentazole
Full Member
***




   


Posts: 197
Re: Method Claims and Divisionals
« Reply #1 on: Oct 4th, 2007, 12:40pm »
Quote Quote Modify Modify

the PTO can't deem an application "dvisional" unless you file it as a divisional.  What you are asking is whether or not the PTO is going to restrict the claims, which will then lead to you filing a divisional.  Depending on the method claim, it is usually up to the Examiner's discretion.  If the method claim is complicated, as in it includes steps that weren't in the structure claims, then you can expect a restriction.  For example, if you claim a structure that is a golf club, and then you claim a method claim that would recite, a method of hitting a golf ball comprising making a golf ball, putting a golf ball on the ground, buying golf gloves, hitting the golf ball with the golf club of claim 1, and then using a binocular to see where the golf ball went, then this is expected to get restricted.  If, on the other hand, you claim a golf club in your structure, and then in your method you claim a method of hitting a golf ball, comprising contacting the golf ball with the club of claim 1, then you may or may not get restricted, depending on the examiner.  Usually you won't get a restriction for something like this, but you may.
IP Logged
SoCalAttny
Guest
Re: Method Claims and Divisionals
« Reply #2 on: Oct 4th, 2007, 10:55pm »
Quote Quote Modify Modify Remove Remove

Pentaz' is on target. MPEP 804-806 covers this topic really well. The MPEP maps out the tests for obviousness, restriction etc. Kayton also had a pretty good test extracted from a case.
IP Logged
patag2001
Junior Member
**




   


Posts: 82
Re: Method Claims and Divisionals
« Reply #3 on: Oct 9th, 2007, 4:02pm »
Quote Quote Modify Modify

Pentaz’s response: If the method claim is complicated, as in it includes steps that weren't in the structure claims, then you can expect a restriction.
 
From the response above, I am not clear on structure claims having steps.  I presume you mean a claim to a “method of using” that refers to a structure not included in the structure claim.  I believe you cited an example using binoculars.  I understood that the binoculars were not included in the original structure claim.  Is this correct?
 
Would the same thing (above) apply as well to claims to a “method of making” included in an application having structure claims?
 
Many thanks!!
IP Logged
pentazole
Full Member
***




   


Posts: 197
Re: Method Claims and Divisionals
« Reply #4 on: Oct 11th, 2007, 12:45pm »
Quote Quote Modify Modify

methods of making have a chance of not being restricted, but a lot of times they are, and a lot of time rightly so, and they lead to separate patents.  But again, it falls to the examiner.
 
If the method of making is novel, it may be a good thing to get restricted and file a divisional.  If the only novelty in the method of making is the fact that it's a new product that is formed in the end, it may not matter.  You know what I mean?  Basically just because the product is novel, the method of making it doesn't necessarily have to be novel, but it can.
IP Logged
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