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[markpatterson]

Hi all, these questions are (in my mind) related so I am just going to put them in one post.

1) Suppose in a claim I introduce ‘a X which Y’, do I later refer to this X as ‘said X’ or ‘said X which Y’?

2) In several claims I have 'a X which Y' and also 'a X which Z'... am I causing a double inclusion issue here?
I assume if you answered the ‘said X’ instead of ‘said X which Y’ to my first question then there would be a double inclusion issue here.

2) Similarly suppose in a claim I introduce ‘a X for Y’, do I later refer to this X as ‘said X’ or ‘said X for Y’?

3) Also a similar case, in a claim I introduce 'a wheel rim on the vehicle’, can I later introduce 'a wheel rim' without causing a double inclusion issue? In other words in introducing 'a wheel rim on the vehicle' and 'a wheel rim' is it clear that I am introducing two wheel rims that are not necessarily the same?

4) In a claim, I have ‘[do A to] one or more of X’. If I later write ‘[do B to] one or more X’, is it clear that the 'one or more X' which have B done to them are not necessarily the same 'one or more X' which have A done to them?

Also, I know that I am not introducing these 'one or more X' with 'a', but would I still be hitting on a double inclusion problem by mentioning 'one or more X' twice (namely once for having A done to them and once for having B done to them).

I read somewhere on the forum that double inclusion isn't really a legal issue anymore, perhaps bear with me anyways, I just want to make sure my claims are as clear as possible, and the examiner seems to have a real problem with double inclusion.


Thanks in advance,
Mark

[bald & chained]

This is exactly why what you posted earlier didn't set right with me. What do you mean by not necessarily the same? The rules that govern claim interpretation dictate that your two wheels ARE different. As you're stating the claim, they CAN'T be the same. When you use "a" that means that it is a new and different thing.

It is ambiguous, yes, but there is no bright line rule which says that the wheels can't be the same.  Depending on what the rest of the claim and the spec says, the court could interpret it to be the same wheel.

[markpatterson]

Thanks for the reply, will look at the details in a sec, but in the meantime:

"The examiner" was me, and I didn't have an problem (except with the use of the term double inclusion).

I meant the patent examiner handling my application, I am not sure what you said about double inclusions, thought I should clear that up

This is exactly why what you posted earlier didn't set right with me. What do you mean by not necessarily the same? The rules that govern claim interpretation dictate that your two wheels ARE different. As you're stating the claim, they CAN'T be the same. When you use "a" that means that it is a new and different thing.

It doesn't seem to make sense to me that that would be the case (you could be right ofcourse, I am new to these things). For example, in a hypothetical claim I introduce 'a fruit' and then I introduce 'an apple'... the case that the apple is also the fruit should be covered... it seems a really necessary restriction that they be different? Again, you could ofcourse be right, but how can I know this for sure? Eg. What document lays down this rule which states that these two items are different?

Thanks,
Mark

[dablueman]

"The examiner" was me, and I didn't have an problem (except with the use of the term double inclusion).

I meant the patent examiner handling my application, I am not sure what you said about double inclusions, thought I should clear that up

Sorry I got "Mike" and "Mark" confussed. See below:
http://www.intelproplaw.com/ip_forum/index.php/topic,13685.0.html

It doesn't seem to make sense to me that that would be the case (you could be right ofcourse, I am new to these things). For example, in a hypothetical claim I introduce 'a fruit' and then I introduce 'an apple'... the case that the apple is also the fruit should be covered... it seems a really necessary restriction that they be different? Again, you could ofcourse be right, but how can I know this for sure? Eg. What document lays down this rule which states that these two items are different?

I'd suggest getting a book on patent law if you're trying to do this yourself (I'd also consider getting legal counsel). The rules of claim construction are not statutory. They're from the common law (i.e. judge made).

I understand that it can be confusing, but the EXACT words you use are very important and make a big difference. If I find an easy to follow guide I'll post a link.

Edit:
Here is one guide: warecivpro.com/Federal_Courts/marathon_exhibitD.pdf
Another Reference: http://www.fishiplaw.com/strategic-patenting/chapter-4---basic-claiming_17.html

[JimIvey]

1) Suppose in a claim I introduce ‘a X which Y’, do I later refer to this X as ‘said X’ or ‘said X which Y’?

Yes. 

Either will work, but "said" means "the" and "the" is easier to read.  I prefer "the".

2) In several claims I have 'a X which Y' and also 'a X which Z'... am I causing a double inclusion issue here?
I assume if you answered the ‘said X’ instead of ‘said X which Y’ to my first question then there would be a double inclusion issue here.

I don't even know what "double inclusion" is, but you'll have problems with that in precisely the manner you describe -- later reciting "the X".

Hmmm, now that I think about, I know of someone who used precisely that construct -- where the two "X"s could be one and the same.  Thereafter, he would always recite "said X which Y" or "said X which Z" (he used "said", too, and did a bunch of other stuff I thought was stupid).  His claims were long and awkward.  I prefer claims to be light and tight.

I use "a first X that Y" (for style reasons, I use "that" rather than "which") and "a second X that Z".  If the two Xs can be one and the same, I recite that they are in a dependent claim.

2) Similarly suppose in a claim I introduce ‘a X for Y’, do I later refer to this X as ‘said X’ or ‘said X for Y’?

I don't see what "for" in place of "which" introduces as a significant distinction.  My answer would be the same as (1) above.

3) Also a similar case, in a claim I introduce 'a wheel rim on the vehicle’, can I later introduce 'a wheel rim' without causing a double inclusion issue? In other words in introducing 'a wheel rim on the vehicle' and 'a wheel rim' is it clear that I am introducing two wheel rims that are not necessarily the same?

See (2) (the first one) above.

4) In a claim, I have ‘[do A to] one or more of X’. If I later write ‘[do B to] one or more X’, is it clear that the 'one or more X' which have B done to them are not necessarily the same 'one or more X' which have A done to them?

Same answer. 

My technique is to recite "doing A to a first collection of one or more Xs selected from the Xs" and "doing B to a second collection of one or more Xs selected from the Xs".  To make it clear that the collections can over lap, I include a dependent claim that recites "wherein at least one of the Xs of the first collection is included in the second collection."

Also, I know that I am not introducing these 'one or more X' with 'a', but would I still be hitting on a double inclusion problem by mentioning 'one or more X' twice (namely once for having A done to them and once for having B done to them).

An indeterminate article (a/an) is not needed to introduce an element in a claim.  "One or more Xs" is fine.

Regards.

[ChrisWhewell]

They're from the common law (i.e. judge made).

1) There is no federal common law; and
2) Laws aren't made by judges.

[bald & chained]

They're from the common law (i.e. judge made).

1) There is no federal common law; and
2) Laws aren't made by judges.

surely there is federal common law.  Civ Pro 101.

[ChrisWhewell]

Surely, you jest.


http://www.law.cornell.edu/supct/html/historics/USSC_CR_0304_0064_ZS.html

[bald & chained]

not really. There is federal common law, for areas such as admiralty, antitrust, etc.

I could probably find a more thorough link, but Answers.com seems sufficient,...

"Federal common law is often misunderstood because of the famous statement in *Erie Railroad v. Tompkins (1938) that “there is no federal general common law” (p. 78). Nonetheless, federal common law is an important part of our tradition of case‐by‐case adjudication, allowing the judiciary to resolve unforeseen issues fairly; federal common law shows no sign of diminishing in importance."

http://www.answers.com/topic/federal-common-law

[JimIvey]

tech_spec is correct. 

If I remember correctly, Eerie said that there was no federal common law when the cause of action is based on state law.  In other words, the federal courts are not free to ignore state laws when the federal case is in federal courts solely for diverse jurisdiction.

Courts do make law.  If not, we wouldn't give a rat's petard about Bilski, Festo, KSR, etc.

There is federal common law in that each Circuit recognizes stare decisis for earlier opinions of the same Circuit.  And, at least in theory, stare decisis applies Supreme Court decisions, too, forming a body of federal common law.  Otherwise, why would we care about Graham, Graver Tank, Blonder-Tongue, etc.?

From what I understand, the only place where there is not common law in the US and where judges do not make law is Louisiana state law.  I forget the term for the antithesis of common law, but it's there, based on the French legal system.  In essence, each judge in each case is free to interpret the statutes anew.

Regards.

[ChrisWhewell]

tech_spec is correct. 

If I remember correctly, Eerie said that there was no federal common law when the cause of action is based on state law.  In other words, the federal courts are not free to ignore state laws when the federal case is in federal courts solely for diverse jurisdiction.

Courts do make law.  If not, we wouldn't give a rat's petard about Bilski, Festo, KSR, etc.

There is federal common law in that each Circuit recognizes stare decisis for earlier opinions of the same Circuit.  And, at least in theory, stare decisis applies Supreme Court decisions, too, forming a body of federal common law.  Otherwise, why would we care about Graham, Graver Tank, Blonder-Tongue, etc.?

From what I understand, the only place where there is not common law in the US and where judges do not make law is Louisiana state law.  I forget the term for the antithesis of common law, but it's there, based on the French legal system.  In essence, each judge in each case is free to interpret the statutes anew.

Regards.

Respectfully disagree, I think you're both wrong.  Legislation originates in the legislature, may be signed into law by the CEO, and are subject to review/interpretation by the courts.

If you think Bilski, et cet are making law, all I can say is WOW.   In those instances, the courts are merely interpreting the law.

If you can show me one statute created by a court, I'd be interested in seeing it.   Of course, the statute by itself is not the law, right ?

A court may declare what the law is, but based on an already-existing statute.  Even "double patenting is but a doctrine, not law.

If there's any federal common law, I'd say its the UCC.

[bald & chained]

So I am wrong about the existence of the federal common law?  You mean you are not convinced by existence of an Answer.com article? I do have a handy Wikipedia entry for "federal common law," if you want... If you are still not convinced, then I don't know what else could change your mind

[ChrisWhewell]

I trust Justice Brandeis' opinion over that of the author of the answers.com article, Martha A. Field, but only because the constitution charged the supremes with the review.   Had the constitution vested review in Martha A. Field, I'd trust her opinion more.  Erie had more significance than most realize, in overturning Swift, certainly more than I've seen in any modern books on FRCP.

"There is no general federal common law".    I don't know what could be plainer than that.

 

[JimIvey]

Respectfully disagree, I think you're both wrong.  Legislation originates in the legislature, may be signed into law by the CEO, and are subject to review/interpretation by the courts.

Statutes are just one type of law, often with important details missing.

If you think Bilski, et cet are making law, all I can say is WOW.   In those instances, the courts are merely interpreting the law.

So, you're happy ignoring Bilski altogether and arguing Section 101 without any "color" added by the Federal Circuit or the Supreme Court?  I would go so far as to mention the "M" word for anyone practicing in such blissful ignorance.

If you can show me one statute created by a court, I'd be interested in seeing it.   Of course, the statute by itself is not the law, right ?

As far as statutes go, courts often remove them, thereby changing statutory law.  Here's an example.

That case is also a very good and generally unchallenged example of federal common law.  Before that case, it wasn't clear that judicial branch of our government had the power to undo acts of the legislative branch.  Now, it's quite clear that the judicial branch does have that power.  If you can show me some legislative authorization for that, negating federal common law as the sole thing responsible for its existence, or some compelling arguments that such judicial authority does not, or at least shouldn't, exist -- post-Eerie -- I'd really love to see that.

If there's any federal common law, I'd say its the UCC.

I don't think you understand what "common law" means.  It means law declared by courts and followed by subsequent courts.  The UCC is not, in and of itself, law.  It has been adopted, in various forms, by many states but it is neither federal law nor common law.  The law of contracts is clearly state law, and statutes are not common law by definition.

I don't have time for a comprehensive tutorial on our particular hybrid of common law and statutory law and which courts are bound to follow which other courts.  Just let it suffice to say at this point that it's best that we stick to patents here.  Eerie did away with a very specific type of federal common law, not all of it.

Regards.

[ChrisWhewell]

Statutes are just one type of law, often with important details missing.
 
Regards.

Again, I disagree with your statement that statutes are always a type of law, based on Justice Rehnquist's clear statements in Calif. Bankers Association v. Schultz that without an implementing regulation, statutes are of no effect.   A more accurate statement would be to say "statutes are one facet of what the law might be".

So, you're happy ignoring Bilski altogether and arguing Section 101 without any "color" added by the Federal Circuit or the Supreme Court?I would go so far as to mention the "M" word for anyone practicing in such blissful ignorance.
 

Nothing in my writing indicated expression of any emotion on that, nor that I have, or intend to, ignore anything.  Rather, all I wrote was my disagreement with your erroneous belief that courts make laws.  Bilski will be an interpretation of that which already exists.

I don't personally consider it to be changing the law when a court strikes a statute, rather, an abolishment of a purported law in accordance with the review that the courts are charged with.  Laws repugnant to the constitution are void ab initio, which means they were never laws in the first place and it is hence impossible to change that which never was.