Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[Ghoti]

Hi All,

I'm looking at a claim which has part A and a connection element (part B) for connecting various Part C's. It then says, 'wherein part C's include types 1 and types 2' and goes into details about types 1 and 2.

My gut feeling is that Part A and B are required elements, and Part C (types 1 or 2) are not required for infringement, what is required is that Part B is such that it can connect to those types of Part C's.

I have no idea where I'm getting this gut feeling from. The phrase 'positively identified intergers' keeps going through my head, but when I google that phrase I get references to antecedent basis, which is not where I was heading.

If anyone has any thoughts that could help trigger my memory or focus my attention on what I should be searching for I would greatly appreciate it. I'm searching through my textbooks, but I currently can't focus my search.

If you think I'm way off base (I'm still studying), please also let me know. Can you mention a claim element and not require it for infringement?

Thanks.

Ghoti.

[BobRoberts]

Because it's hard to work in an abstract, I'll guess that the claim reads something like...

A widget comprising:
a part A;
a connection element B coupled with Part A; and
a plurality of part C (each) coupled with the Connection element A;
wherein the plurality of Part Cs includes Type 1 and Type 2.

All of the claim elements (i.e., claim limitations) must be present for infringement.  If your device doesn't have one of the listed claim elements/limitations, then you do not infringe (unless you have an equivalent of the missing claim element in the device).   

It seems to me that depending on how the claim is actually worded, there may need to be both type 1 and type 2 of Part C's before infringement can be found.  Thus I would say that a 'wherein' clause limits a claim, and if the wording is as above, you would need both Part I and Part 2 in a device for the device to infringe (though I got to bed quite late last night, and haven't even had coffee this morning yet). 

If the wherein clause mentions type 1 and type 2 in a markush group, then you would likely need only one of the listed markush elements to infringe

i.e., wherein the Part C comprises one from the group consisting of Type 1 and Type 2. 

Though I'll admit that I haven't drafted many Markush claims ...  Do you have access to the Pros History to see if there were any limitations to the claims via amendments or arguments (i.e., a practitioner argued that a particular piece of art didn't apply because both of type 1 and type 2 were not present in the art)?

Good luck. 

[khazzah]

If anyone has any thoughts that could help trigger my memory or focus my attention on what I should be searching for I would greatly appreciate it. I'm searching through my textbooks, but I currently can't focus my search.

The phrase "positively identified" *anything* doesn't ring a bell with me in terms of case law or MPEP.

[khazzah]

Can you mention a claim element and not require it for infringement?

You can try. Consider this claim:

A system comprising:
a widget;
a foobar interlocking with the widget and connectable to a blodget.

Widget and foobar are positively recited elements of the claim, no way around it. You are requiring the infringing system to include a widget and a foobar.

Blodget is another matter, because blodget isn't positively recited as an element. Instead, blodget is merely referred to. I believe Landis calls this "inferential claiming".

However, you can't have it both ways, ie, use an element for patentability and then say it's not required for infringement. The Examiner may well decide that blodget doesn't get patentable weight  precisely because you didn't positively recite it, in which case a foobar connectable to virtually *anything* satisfies the limitation.

[khazzah]

A widget comprising:
a part A;
a connection element B coupled with Part A; and
a plurality of part C (each) coupled with the Connection element A;
wherein the plurality of Part Cs includes Type 1 and Type 2.

It seems to me that depending on how the claim is actually worded, there may need to be both type 1 and type 2 of Part C's before infringement can be found. 

Agreed that imprecise claim drafting could lead to this unwanted result. Not just unwanted, but possibly non-infringeable, ie, quite possibly the physical part is incapable of connecting to both at the same time.

Agreed that you want to claim Type 1 and Type 2 in the alternative to avoid this unwanted result. And that Markush group is one way to achieve this alternative claiming.

[Ghoti]

Thanks everyone.

Khazzah, you were spot on with 'inferrential claiming' and it being in Landis. Your post sparked my memory to find the section I was looking for. I was incorrect, it was 'positively recited claim elements' not 'positively identified integers' (don't you hate an imperfect memory).

For interest, the section was 3.4 - Workpiece or Enviornmental Element. What Landis says is that "In contrast to an element of the claim, the workpiece or environmental element is introduced in the claim by words indicating that the workpiece is not one of the claim elements. Therefore it is not written as the subject of a clause of the claim.' ...This is what was happening in my claim.

I looked at the prosecution history and it they used it in arguments so I believe the types are required elements, which is good for me. I've still got more work to do, but at least I've stopped going around in circles.

Thanks all. Much appreciated.