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   One year rule and Patentability
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   Author  Topic: One year rule and Patentability  (Read 2682 times)
john2006
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Posts: 11
Re: One year rule and Patentability
« Reply #20 on: Sep 20th, 2006, 8:08pm »
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Hi everyone,
 
Wallflower wrote  
 
John, you don't see the difference between saying the "improvements are covered by the claims of the original patent" and  "improvements of an invention covered by the claims of the patent"?  From your last response, it is clear that the latter is what you meant.
 
My reply
 
Based on exactly what I said, I don't understand the confusion. You have taken what I said out of context. You are just quoting one section of one sentence.
 
Again, here is exactly what I said...
 
 "Let's say you have a patent with about 9 years left on it, and you find a non-obvious way to improve your product. The improvements are covered by the claims of the original patent, but you want to patent the new improvements so you can monopolize them for a period longer than 9 years".    
 
Based on the two sentences above, I don't understand why it was not obvious that I was referring to improvements of the invention or product.  
 
You used the term "claims" in both of your interpretations of my statement. I just wanted to point out that the claims of a prior art patent reference won't prevent a pending application from issuing as a patent, just becasue the device disclosed in the pending application would infringe the claims of the prior art patent reference. It seemed to me that this was what you were implying when you said the following ...
 
Wallflower wrote...
 
"You gave the conditional statement: "The improvements are covered by the claims of the original patent...."  If that statement is true, no one will be able to patent those improvements".
 
I'm just curious, what did you mean to imply with the statment quoted above ? I don't understand how you originally interpreted my two sentence statement, or the source of the confusion.
 
 
Sincerely,
John
« Last Edit: Sep 20th, 2006, 8:18pm by john2006 » IP Logged
IPL61003
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Posts: 27
Re: One year rule and Patentability
« Reply #21 on: Oct 25th, 2006, 1:45pm »
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on Sep 20th, 2006, 8:08pm, john2006 wrote:
"Let's say you have a patent with about 9 years left on it, and you find a non-obvious way to improve your product. The improvements are covered by the claims of the original patent, but you want to patent the new improvements so you can monopolize them for a period longer than 9 years".

Sorry I am a bit confused here.  
 
If for the new patent application, "[t]he improvements are covered by the claims of the original patent", then the "improvement(s)" in the new application would not seem to qualify as being "non-obvious", since they were anticipated in the original patent.  In other words, it would appear the new patent application would be denied.  
 
Unless there is an exception or a more relaxed rule for "non-obvousness", that I am not aware of, which applies where the same inventors are involved.  I doubt it, though.  
 
Opinions, anyone?
 
Regards.
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Grammar Dawg
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Re: One year rule and Patentability
« Reply #22 on: Oct 25th, 2006, 4:55pm »
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Why is it that, whenever I find senseless bickering in these forums, Wallflower is never far away?
 
Sloppy words and sloppy grammar lead to pointless debates about he-said and she-said ... bla ... bla ... bla ...
 
Why do you debate a word having an ill-defined scope?
What is this word "cover" at the root of your debate?
Why are you debating what a claim covers?
Does this refer to the disclosure a claim represents?
Does this refer to the protection a claim represents?
It relates well to covering your head with an umbrella. But what does it mean when discussing infringement and patentability?
 
Why not use patent language in discussing patent concepts?
 
For example, one might discuss whether an item or activity appears to "infringe" the claim of a patent. One might also discuss whether the same item or activity appears to be novel and non-obvious in view of the same patent ... the entire patent ... even the claims. Yes, these are separate discussions.
 
Stop all your silly semantic monkey jibberish at once you children!
 
Wipe your tears Wallflower ... and yes ... I fully expect you to accuse me of hysteria and puffing the pipe as you have before when you have no substance left to offer.
 
Your Nemesis
Grammar Dawg
 
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john2006
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Posts: 11
Re: One year rule and Patentability
« Reply #23 on: Nov 24th, 2006, 9:01pm »
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Hi everyone,
 
Grammar Dawg makes a good point.
 
when I said the the improvements are "covered" by the original patent, I just meant that the improvements are protected by the original patent claims, i.e., if someone other than the original patent owner were to make, use, or sell the improved version, they would infringe the claims of the original patent.
 
In the case I attempted to explain, the claims of the original patent do not make the improvements disclosed in the second patent application obvious because the claims simply do not disclose or suggest anything about the improvements.
 
For example, a "means for" claim can be worded broadly and "cover" i.e., protect, many different alternative mechanisms, but not really disclose anything about the alternative mechanisms that the claim protects. A "means for" engaging lever (a) with lever (b), could be a gear, a belt and pulley, a linkage, or just about anything.  
 
Just because an improvement, modification, or alternative embodiment would infringe a claim, does not mean that the claim automatically renders the improvement or alternative embodiments obvious.  
 
It is quite possible to obtain a patent on a device that would infringe the claims of an earlier more broad patent. The claims of the earlier patent would not prevent the later patent from issuing, but the owner of the earlier patent could prevent the owner of the later patent from using his or her own invention. Of course if the owner of the earlier and later patent are the same person, then this is not a problem.
 
Sincerely,
John
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Wiscagent
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Posts: 843
Re: One year rule and Patentability
« Reply #24 on: Nov 25th, 2006, 9:43am »
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John2006 –
 
I agree with most of what you wrote, but I do have a problem with your example:
   ... a "means for" claim can be worded broadly and "cover" i.e.,
   protect, many different alternative mechanisms, but not really
   disclose anything about the alternative mechanisms that the
   claim protects.
 
35 USC 112, paragraph 6 states:
   An element in a claim for a combination may be expressed as
   a means or step for performing a specified function without the
   recital of structure, material, or acts in support thereof, and
   such claim shall be construed to cover the corresponding
   structure, material, or acts described in the specification and
   equivalents thereof.
 
If a claim includes “... a means for engaging lever (a) with lever (b)”, in order to understand the claim the specification must be examined.  If the spec. states “lever (a) can be engaged with lever (b) using a clutch, a solenoid, or a rubber band,” then the means for is just “a clutch, a solenoid, or a rubber band” or equivalents.
 
“Means for” is not just an open ended claim that includes anything that will work to engage lever (a) with lever (b).
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Richard Tanzer
Patent Agent
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