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[Yak]

I have a claim construction question in an attempt to claim alternate embodiments and remain under 20 claims:
The invention discloses a main body which is partially split down the center, from the top down, forming a 1st section and a 2nd section.  The main body, and thus the 1st and 2nd sections, also comprises a top face and a bottom face.  The invention describes alternate embodiments where the materials of the top face and bottom face are the same, are different, and also where the top and bottom faces of the 1st and 2nd sections may be different in various combinations.

---- I initially began with (claim #'s are for illustration only and content is simplified to protect the innocent):

1.      The invention comprising a main body, a partial split, a 1st section, a 2nd section, a top face, and a bottom face.
2.   The invention of claim 1, wherein said top face and said bottom face of said 1st section and said 2nd section comprise different material.
3.   The invention of claim 1, wherein said top face of said 1st section and said 2nd section comprise different material.
4.   The invention of claim 1, wherein said bottom face of said 1st section and said 2nd section comprise different material. 

--- this line of claiming leads me to exceed 20 claims which I am trying to avoid and I don't think it claim covers all the embodiments.

---- I also thought about:

2.     The invention of claim 4, wherein said top face or said bottom face of said 1st section comprises a different material than said top face or said bottom face of said 2nd section.

---  but fear this is uber-confusing and still doesn't cover the various alternate combinations correctly. and also thought about:

2.    The invention of claim 1, wherein said top face or said bottom face of said 1st section comprise a different material than said top face of said 2nd section.

3.    The invention of claim 1, wherein said top face or said bottom face of said 1st section comprise a different material than said bottom face of said 2nd section.

---- again, doesn't seem correct.  Any suggestions? Does this even make sense?  Also, can you use "may" in claims?  i.e.: "... said 1st section may comprise a different material than said 2nd section"?

Thank you all in advance,
Joe

[klaviernista]

"May" is fine, unless it is so unclear that meets and bounds of the claims is unclear.

Might want to consider:

1.  An apparatus comprising a main body comprising a partial split defining a first section and a second section of said main body, said first section comprising a first top face and a first bottom face, and said second section comprising a second top face and a second bottom face.

2.  The apparatus of claim 1, wherein said first section comprises a first material, and said second section comprises a second material, said first and second materials optionally being the same.

3.  The apparatus of claim 1, wherein said first top face comprises a third material, said first bottom face comprises a fourth material,  said second top face comprises a fifth material, and said second bottom face comprises a sixth material, wherein said third, fourth, fifth, and sixth materials are optionally the same.

Of course, these are only suggestions for consideration on this forum.  Rely on them at your own risk.

Best,

Klav

[JimIvey]

I'll disagree with Klav slightly.  It may be perfectly legal to use "may" in claims, but I recommend against it.  I don't even like "can".  I prefer to recite that the thing responds to stimulus/i to do a certain thing -- the thing that others like to recite a thing "may" or "can" do.  I prefer to really nail down in affirmative language that the thing performs the function when so triggered and, if appropriate, what triggers the performance of the function by the thing.

My intent is to make determination of infringement as simple as possible while still providing broad coverage.  I think waffle words like "may" and "can" detract from that objective.  Not an absolute rule, but a stylistic preference of mine.

Regards.

[Yak]

Thank you all for the help.  I came up with a solution, I guess we will see if it works.

[klaviernista]

I'll disagree with Klav slightly.  It may be perfectly legal to use "may" in claims, but I recommend against it.  I don't even like "can".  I prefer to recite that the thing responds to stimulus/i to do a certain thing -- the thing that others like to recite a thing "may" or "can" do.  I prefer to really nail down in affirmative language that the thing performs the function when so triggered and, if appropriate, what triggers the performance of the function by the thing.

Good point Jim, though I think our differing opinions comes from the fact that you and I typically practice in different technological areas.  In the mechanical/CS art area, you are of course correct that it is better to use positive language that recites how a particular component functions in response to a particular event or stimulus.  In the chemical arts, however, optional limitations are frequently used in order to ensure the broadest possible coverage for a particular genus.

For example, a client may have discovered a class of a new chemical entitities comprising a phenyl ring.  In such cases, it is common for a client to request language that covers not only the unsubstituted phenyl, but all possible substituents on the phenyl.  Ergo, an optional limitation in the base claim is almost necessary, i.e., "A composition comprising a compound of formula 1, wherein the phenyl ring in formula 1 is optionally substituted with a [insert substitutents here]. . ."  Of course, if the client doesn't mind havign an enormoous number of claims, you could claim compounds of formula 1 more specifically in a number of distinct claims, but that will just set the stage for a restriction/species election.

Best,

Klav

[JimIvey]

I acknowledge that I know very little about chemical practice.  My technique applied to the situation you describe (phenyl and hundreds of similar elements serve a novel and non-obvious purpose in a chemical) would be to claim an element/agent in the chemical mix by it's properties (at least those relevant to giving an advantage and that are non-obvious over prior art chemical mixes).  e.g., binds at this or that point and adds this sort of structure to the overall molecule -- if (i) we know what properties are helpful and non-obvious and (ii) it can reasonably be described in those terms.  Alas, I admit that I don't know much about chemical practice, so this might be completely useless.

Regards.