Intellectual Property Forum The Intellectual Property Forum

Please login or register.

Login with username, password and session length
Advanced search  

News:

The forum software has been upgraded.  New registrations are not currently permitted while we iron out any bugs and other matters.  Please report any problems you find.

Author Topic: Antecedent Basis: nested claim terms and implicit articles  (Read 998 times)

rokahn

  • Newbie
  • *
  • Posts: 1
    • View Profile

Two antecedent basis questions concerning the application snippet below:

Question 1 (Nested Claim Terms): should there be articles before "document map" in the claims when used as part of a larger claim term, "document map zoom range"?  Note that claim terms are supported by part references 28 and 58, respectively.

Question 2 (Implicit Articles): "document map zoom range" is preceded by "including" and "where" in claims 2 & 3.  If, as in these occurrences, there is no explicit indefinite or definite article, am I correct the claim term is assumed to be indefinite?

DETAILED DESCRIPTION:
A document map 28 is overlaid ...
...show what portion are represented by the visual indication of document map zoom range 58.

CLAIMS:
1. A method comprising: displaying a document map ...
2. Claim 1 including visual indication of document map zoom range.
3. Claim 2 where visual indication of document map zoom range ...
« Last Edit: 12-30-10 at 07:35 pm by rokahn »
Logged

JimIvey

  • Forum Moderator
  • Lead Member
  • *****
  • Posts: 5413
    • View Profile
    • IveyLaw -- Turning Caffeine into Patents(sm)
Re: Antecedent Basis: nested claim terms and implicit articles
« Reply #1 on: 01-03-11 at 11:15 am »

CLAIMS:
1. A method comprising: displaying a document map ...
2. Claim 1 including a visual indication of document map a zoom range of the document map.
3. Claim 2 where the visual indication of document map zoom range ...[/i]

If I've understood the relationships correctly, the amendment should take care of it.  At the very least, I hope I've shown how to indicate which terms have been previously introduced in the claims and which haven't and the interrelationships between the terms with clarity and certainty.

Regards.
Logged
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

khazzah

  • Lead Member
  • *****
  • Posts: 1559
    • View Profile
    • Patent Prosecution Blog
Re: Antecedent Basis: nested claim terms and implicit articles
« Reply #2 on: 01-03-11 at 04:07 pm »

1. A method comprising: displaying a document map ...
2. Claim 1 including a visual indication of document map a zoom range of the document map.
3. Claim 2 where the visual indication of document map zoom range ...[/i]

I concur with JimIvey: I would make the very same amendments.

If, as in these occurrences, there is no explicit indefinite or definite article, am I correct the claim term is assumed to be indefinite?

The vast majority of Examiners I've dealt with will give you an indefiniteness rejection under these conditions. I'd say that this approach is a bit overzealous, and that the law is not quite so picky. IOW, you'd win at the Board of Appeals in some cases without *explicit* antecedent basis.

That said, I don't think your particular claim example is one of those "lose with the Examiner, win at the Board" -- it really *is* indefinite.
Logged
Karen Hazzah
Patent Prosecution Blog
http://allthingspros.blogspot.com/

Information provided in this post is not legal advice and does not create any attorney-client relationship.
 



Footer

www.intelproplaw.com

Terms of Use
Feel free to contact us:
Sorry, spam is killing us.

iKnight Technologies Inc.

www.intelproplaw.com

Page created in 0.079 seconds with 17 queries.