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[Memo]

I have a claim which lists a couple of types of data and then later references that data.  In later parts of that claim and additional dependent claims, do I need to specify which data type (i.e. the antecedent basis) is the subject matter I'm referencing? 

Example:

Claim 1.  A system which
(i) uploads user-specific GPS data or non user-specific GPS data or both from at least one server.....
(ii) calculates user-specific algorithms using the GPS data uploaded from at least one server
(iii) uses these calculations to do generate user instructions

There are different ways to implement the system whether the service provider utilizes user-specific GPS data or non user-specific GPS data or both, but all arrive at the same end result.   So, does this claim language cover every option or combination for the uploaded data (since I'm leaving out the adjectives) or do I need to specify the antecedent basis for which of the data uploads is being used in the calculation.  Clearly I'd like to leave it as open as possible.

Thanks

[khazzah]

Claim 1.  A system which
(i) uploads user-specific GPS data or non user-specific GPS data or both from at least one server.....
(ii) calculates user-specific algorithms using the GPS data uploaded from at least one server
(iii) uses these calculations to do generate user instructions

...do I need to specify the antecedent basis for which of the data uploads is being used in the calculation. 

As written, you'll almost certainly get a rejection for lack of antecedent basis for "using the GPS data".

The typical paradigm for this is an independent claim
(i) uploads GPS data from at least one server.....
(ii) calculates user-specific algorithms using the GPS data uploaded from at least one server ...

And then dependent claims:

wherein the GPS data comprises user-specific GPS data.
wherein the GPS data comprises non-user-specific GPS data.

I was gonna refer you to the recent thread concerning OR, but I see you're the original poster for that thread.

[JimIvey]

First, Karen's response provides a nice collection of claims differing somewhat in scope, as is good practice.  I'll just mark-up your claim to address all the antecedent basis issues I see.

Claim 1.  (Currently Amended) A system which
(i) uploads GPS data, which can be user-specific GPS data or non user-specific GPS data or both, from at least one server.....
(ii) calculates user-specific algorithms using the GPS data uploaded from at least one server to form one or more calculations; and
(iii) uses these the calculations to do generate user instructions

or maybe this is closer to what you meant:

Claim 1.  (Currently Amended) A system which
(i) uploads GPS data, which can be user-specific GPS data or non user-specific GPS data or both, from at least one server.....
(ii) calculates user-specific algorithms using the GPS data uploaded from at least one server
(iii) uses these the calculations user-specific algorithms to do generate user instructions

Regards.

[khazzah]

I'll just mark-up your claim to address all the antecedent basis issues I see.

Thanks for Jim for actually answering the Original Poster's question. I kinda went off on a tangent.

Jim, do you see any difference in your phrasing "which can be user-specific GPS data or non user-specific GPS data or both" and some sort of phrase using "comprising" ?

My first reaction to OP's question was to use comprising to get both types of data in there. Here's what I came up with:

(i) uploads GPS data from at least one server, wherein the GPS data comprises user-specific GPS data or non user-specific GPS data

But I was vaguely unsatisfied with that phrasing. Any comments from the board? I think "comprising" is often used as a crutch, and I think maybe that's true with my attempt to use it.

[JimIvey]

Jim, do you see any difference in your phrasing "which can be user-specific GPS data or non user-specific GPS data or both" and some sort of phrase using "comprising" ?

In terms of coverage, no, I don't see a meaningful distinction.  Well, if I were more careful, I would have said "includes" rather than "can be" -- "includes is synonymous with "comprises", though some prefer that "comprises" appears only once in a claim.  Maybe you're right.  In my language, it's less clear that "GPS data" can include things other than user-specific GPS data and non user-specific GPS data.  Though, in this particular example, I don't see how GPS data could include GPS data beyond A and not(A), where A=user-specific GPS data.

However, if I were to draft the claim from scratch, I would have done something more like this:

uploads GPS data from at least one server, wherein the GPS data includes one or more selected from the group consisting of user-specific GPS data and user-generic GPS data.

I think it flows better and I like the "one or more selected from" form better than a string of "or"s.

In amendment claims written by others, I try to get the coverage right while changing as little as possible (even pre-Festo).

One thing I might have done differently in view of Festo would have been to move the "wherein" clause to the bottom in hopes that I can get that considered to be a separate "element" in application of Festo.

Oh, one last thing.  Typically you "upload" to a server and "download" from a server, but I'd just make sure my terminology is consistent with the specification.  So, I left that part a lone.

Regards.

[Memo]

Thanks Karen.  That was actually really helpful.  I'm an entrepreneur and I've been so caught up in making changes and getting the correct phraseology for an amendment that I lost sight of making sure that every new component I add to the independent claim is defined in dependent claims.  That helped me take a step back and solved my problem.

Thanks to you as well Jim.  Nice catch on the upload/download.  I'm actually uploading to another server and it doesn't have anything to do with GPS but I just used it as an example.  This forum has been very useful and I really appreciate the advice and contributions.