Is a preamble required in this case?

[LaplacesDemon]

My invention bridges two subclasses of a related subject. I'm reading about the Jepson claims and I don't feel one is required in my case. While the embodiment of the invention falls into an improvement on an old design its actually improvements on TWO very different designs. The invention in this case is NOT the embodiment. I feel that saying its an improvement on either one is limiting the definition of what it actually is. I'm thinking about adding a statement under "CONCLUSION, RAMIFICATIONS, AND SCOPE OF INVENTION" to that effect.

To give an example we'll say that one subclass is a frog, the other is medicine, and they are both classified under biology. To say its an improvement on a frog denies that its a medical improvement and vice versa. What are the requirements in a case like this? Can they throw out my claims for not including one if someone thinks it should be there?

 

[klaviernista]

A "preamble" is a necessary part of any U.S. claim, and must be included.  However, I think you are lumping the so called "Jepson" preamble specified in 37 C.F.R. 1.75(e) (i.e., "An XYZ having ABC elements, wherein the improvement comprises:" with a generic preamble, such as "An article, comprising:"

In the U.S., Jepson claims are never required if an application is drafted appropriately.  And I would wager that most patent attorneys would agree that Jepson claim format is not desireable or widely used, despite the fact that 99.9999999% of all inventions are derivative, i.e., an improvement over something that came before.

Also, I would not use at least two of the section headers you mentioned, i.e., "Ramifications" and "Scope of Invention."  The latter screams prosecution disclaimer/history estoppel.  The former could be construed as providing a hard and fast characterization of your invention which could be later used to limit the scope of your claims.

I would stick to very general section headers, similar to those suggested by the PTO, i.e.: Abstract; Field; Background; Summary; Brief Description of the Drawings; Detailed Description.  If you need to include the "ramifications" of the invention, present them in a non-limiting way (I can already see Jim's ear's pricking up at this).  For example, if one benefit of an invention is that it improve the efficiency of an electric lamp by 15% or  more, I would present that as "In some embodiments, the [insert idetnifier of the invention] improves the efficiency of an electric lamp by at least about 15%."  If the language in the specification suggests that in all instances, an invention results in some improvement, it is possible that a court could use such a statement to interpret the claims  of that application as only encompassing embodiments wherein that improvement is obtained.

[LaplacesDemon]

Thanks again Klav. I be lost without the help of all the fine people on this board.

I'm writing this app based on the book "Patent It Yourself" by Pressman at NOLO. Hopefully I'm doing everything right because circumstances don't allow for council. No doubt there are things about this app that qualified council would change but all in all I'm very happy with the way its coming out. Fortunately I'm a fairly competent tech writer so that helps.

I spent about 3 days reading everything on this board and that helped a lot. If admin will continue to indulge me I'll have this done in the next few days. As you surmised I'm working on the claims now which as you can imagine is mind boggling. But with the help of NOLO, "Invention Analysis and Claiming" by Slusky, and the kindness of those like yourself everything will work out for the best. I'm sure this will sail right through the USPTO and then the sky will open up and it will rain money. Torrential floods of money. Tsunamis of money.

BTW the CONCLUSION, RAMIFICATIONS, AND SCOPE OF INVENTION portion is taken straight from Pressman at NOLO and just gives a quick comment about the subject area, lists a few minor alternate embodiments, and finishes with:


"Accordingly, the scope of the invention should be determined not by the embodiment(s) illustrated, but by the appended claims and their legal equivalents."

If even the title sends shivers up your back I'll take your suggestion to change it. Thanks again!

[Wiscagent]

A "preamble" is a necessary part of any U.S. claim, and must be included. 

Let's modify that to "A 'preamble' is a typically part of any U.S. claim, and must be included in almost every claim."

See US Patent 3,156,523.  Claim 1 is "Element 95."  That's the whole claim.

[LaplacesDemon]

Does it have to be comprising:   ?   

I would prefer to write it as "A verb noun whereby:

Is that kosher?

[JimIvey]

Nope, that's not kosher.

Your claim will describe the defining characteristics of your thing and you need to indicate whether the listed defining characters are exclusive ("consisting essential of") or not exclusive ("comprising") -- in other words, should adding on to your listed defining characteristics avoid infringement.

"whereby" is a term of art in claims and you ought to avoid it unless you know what you're doing.

Regards.

[klaviernista]

A "preamble" is a necessary part of any U.S. claim, and must be included. 

Let's modify that to "A 'preamble' is a typically part of any U.S. claim, and must be included in almost every claim."

See US Patent 3,156,523.  Claim 1 is "Element 95."  That's the whole claim.

Sigh.  Fine. If you are claiming a single element composition of matter you can get away without a preamble.  Shame on me for giving a hard and fast answer.  I was wondering what that strange "ants crawling up my spine" feeling was when wrote my last response.  I should have known that it was the familiar feeling of millions of lawyers simultaneously leaping to point out the one exception to a rule.

No offense to you Wisc.  It has been a looooooong day.


Best,

Klav

[LaplacesDemon]

Thanks for the heads up Jim. Are there any other words or phrases I should avoid in the claims? I seem to recall reading that the word "or" is forbidden. Anything else?

Also what is negotiable via interoffice actions? Can a claim be reworded or is it a rejection then more big fees if they don't accept it?

[Robert K S]

I seem to recall reading that the word "or" is forbidden.

Not at all.  See MPEP 2173.05(h) Alternative Limitations.

I have argued, here on this board and before the capital-B Board, that if alternative-expression claiming is permitted, conditional-expression claiming should also be permitted, since conditional statements are nothing other than more specific forms of alternative statements.  We'll see how that one turns out.

[khazzah]

Thanks for the heads up Jim. Are there any other words or phrases I should avoid in the claims? I seem to recall reading that the word "or" is forbidden. Anything else?

I think I read on another thread that you're pro se. If you're going to do this pro se, you'll need to become familiar with the MPEP, just as most practitioners are familiar with the MPEP.

For claim construction guidance, start with MPEP 2111 and 2173.

Also what is negotiable via interoffice actions? Can a claim be reworded or is it a rejection then more big fees if they don't accept it?

The only thing you're negotiating during pros is claim scope. Claims can be, and will be, amended. Amending doesn't cost extra. Although you don't get an infinite number of rounds of examination for free. If you amend you'll almost certainly have to pay for an RCE at some point.

"Patent It Yourself" by Nolo Press has a chapter on OAs. You should know everything in this book, thoroughly, if you expect to proceed pro se.

If you're not pro se ... well, the advice still stands for any beginning professional.

[LaplacesDemon]

Yes I'll be acting pro se. I'm still on Chapter 9 Claims. Right now my biggest problem is this buggy da**ed Word 2007 doesn't number right. OAs don't come up till Chapter 11. 

Chances are good I'll end up going MPEP 707.07(j) on the claims. I'm about 98% sure I've got something though. Maybe a lot of something.