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[still_learnin]

I have an independent claim that refers to "a network layer protocol". I want to narrow that element in a dependent claim to refer specifically to a particular network layer protocol, namely, IP.

What's the best claim format to do this?

• wherein the network layer protocol is an Internet Protocol
• wherein the network layer protocol is Internet Protocol
• wherein the network layer protocol is the Internet Protocol
• wherein the network layer protocol is an Internet Protocol defined by IETF RFC 791

[Isaac]

What's the best claim format to do this?

I think I've gone with either "Internet Protocol" or "the Internet Protocol" in the past.  You could leave yourself some room by referencing the RFC in the specification.

[still_learnin]

I think I've gone with either "Internet Protocol" or "the Internet Protocol" in the past. 

Neither of those variations compiles with a strict application of the antecedent basis rule, correct?

So do you think Examiners except this sort of claim from antecedent basis requirements?

Or do you start off with one of the above and amend to "an Internet Protocol" if the Examiner rejects under 112 2nd?

[bald & chained]

I have an independent claim that refers to "a network layer protocol". I want to narrow that element in a dependent claim to refer specifically to a particular network layer protocol, namely, IP.

What's the best claim format to do this?

• wherein the network layer protocol is an Internet Protocol
• wherein the network layer protocol is Internet Protocol
• wherein the network layer protocol is the Internet Protocol
• wherein the network layer protocol is an Internet Protocol defined by IETF RFC 791

careful there, RFC 791 doesn't cover IPv6, only IPv4 and we all know IPv6 is the future.   I don't think the examiner will reject "the Internet Protocol" under 112, the same way he won't reject "the World Wide Web" when it is used for the first time.

As a side question, what does having a dependent claim reciting a network layer protocol = IP get you?  I never understood what dependent claims that recited such extremely common technical parameters got you in the end.  When it comes to enforcement, it's unlikely to help you preserve validity. I also don't see how it would help you with claim differentiation, unless you only describe IP in the specification and might want to apply the claim to some other non-IP network layer protocol, such as ...ugm, CLNP in X.25?  Really aren't many other network layer protocols left, are there, unless you also want to distinguish between IP and IPsec, etc?  But what do I know...

[still_learnin]

I don't think the examiner will reject "the Internet Protocol" under 112, the same way he won't reject "the World Wide Web" when it is used for the first time.

I've had Examiners reject both. Some Examiners are sticklers for strict antecedent basis.

As a side question, what does having a dependent claim reciting a network layer protocol = IP get you?  I never understood what dependent claims that recited such extremely common technical parameters got you in the end.

I think you're wise to be skeptical about this sort of claim. But I have a reason: to avoid this 103 rejection of an independent claim

• feature A taught by IP stuff in reference Y
• feature B taught by X.25 in reference Z

Both IP and X25 are "network layer protocols". Yet the differences are great enough that I think it's a really weak combination.

I plan to argue the weakness of the combination on technical merits, and may win on that ground for my independent claim. But I also want to add a dependent claim that specifically recites IP to force the Examiner to find feature B in the IP context.

careful there, RFC 791 doesn't cover IPv6, only IPv4 and we all know IPv6 is the future.   

Got a suggestion on how to cover future variations of IP and yet exclude other network layer protocols?

Actually, that brings up another question ... would a claim that says "wherein the network layer protocol is the Internet Protocol" cover IPv6?

[Isaac]

Neither of those variations compiles with a strict application of the antecedent basis rule, correct?

I don't think the antecedent rule applies.  For example if there is only one Morse Code, it doesn't make sense to talk about a message transmitted in "a Morse code".

Some nouns just don't need antecedent basis.  The North Pole, the Atlantic Ocean, the United States of America, the Moon, the medulla oblongata..

So do you think Examiners except this sort of claim from antecedent basis requirements?

Some may need convincing.   I usually cave when the answer is ambiguous, but sometimes the knee jerk answer is just wrong.

Also, there are no per se rule for rules for evaluating 112 2nd compliance.  Even when antecedent basis is missing, the claim can still be definite.

[/quote]

[JimIvey]

I have an independent claim that refers to "a network layer protocol". I want to narrow that element in a dependent claim to refer specifically to a particular network layer protocol, namely, IP.

What's the best claim format to do this?

• wherein the network layer protocol is an Internet Protocol
• wherein the network layer protocol is Internet Protocol
• wherein the network layer protocol is the Internet Protocol
• wherein the network layer protocol is an Internet Protocol defined by IETF RFC 791

I'd go with the first.  But there are ways to avoid that altogether.

Suppose your independent claim recites "accessing the data through a network layer protocol."  Your dependent claim could recite "wherein the accessing includes using an IP address."

@Isaac:  I agree that some nouns don't need introduction (e.g., The North Pole), but I'm not sure The Internet Protocol is one of them.  The existence of multiple addressing schemes (IPv4 and IPv6) might suggest that there are multiple IPs.  I don't think you lose anything by reciting "an Internet Protocol" any more than you do by reciting "a North Pole".  If I tell someone to go find a north pole, the fact that there's only one (on this planet, at least) doesn't hinder anyone from understanding me.

Last point: whatever you choose, it should be easily fixable if the examiner thinks you should have chosen differently.

Regards.

[khazzah]

I don't think you lose anything by reciting "an Internet Protocol" any more than you do by reciting "a North Pole". 

I dunno. I'd be afraid that some Examiners would read "an Internet Protocol" as *any* protocol used on the Internet -- e.g., HTTP, SIP, SOAP, REST, etc. In fact, I'd be afraid that some judges and juries might read it like this. Maybe the presence of initial caps should help prevent this misinterpretation, but I'm not so sure it does.

In fact, under a ridiculously broad reading "an Internet Protocol" could cover physical layer protocols too (e.g. T1, OC3) because the Internet uses such protocols.

So I vote for "the Internet Protocol". But I think there are some Examiners who won't budge on strict antecedent basis. Then what are you gonna do?

Generally speaking, I'll cave and amend to provide strict antecedent basis when the Examiner insists, ie

receiving a packet;
processing the received packet;

But I cave only because I don't think that particular amendment changes claim scope. "Internet Protocol" is an unusual case where I think the choice of article (a/the/[none]) might actual affect claim scope, for the reasons already discussed.

[bald & chained]

In fact, under a ridiculously broad reading "an Internet Protocol" could cover physical layer protocols too (e.g. T1, OC3) because the Internet uses such protocols.

ah, but is there such a thing as "the" Internet?  Or must it be defined as "an Internet" first?  And what is "Internet" anyways? At least one expert defined it was "a series of tubes," so let me just get the cite for my Markman brief.... And if you are running only a local area network, without connectivity to the outside world, how can the computers within it use the Internet Protocol... They must be using the Intranet Protocol, right?

Anyways, I think your concern is valid in hands of a skilled sophist and a dumb jury, but it this case the Internet Protocol was recited as part of the dependent claim that was further narrowing down the "network layer protocol,' we would hope that no one would try to interpret IP as a physical layer protocol. 

On the other hand, I'd be very careful using the strict OSI model language, such as "link" or "network layers" in claims.  The simple OSI model often breaks down with some newer protocols, such as MPLS, that arguably reside somewhere in-between the original OSI layers 2 and 3.  You might be surprised that when your patent is enforced 5 years later, the defendants will claim that their protocol, whatever it is, is not a network layer protocol.

[Isaac]

@Isaac:  I agree that some nouns don't need introduction (e.g., The North Pole), but I'm not sure The Internet Protocol is one of them. 

I agree with your point regarding "Internet Protocol", but the idea that a claim can indefinite because earth might have than one North Pole is ridiculous.  

Sometimes examiners forget that there ain't no such thing as a "lack of antecedent basis" rejection.  If your claim is not indefinite under 112 2nd, then any perceived lack of antecedent basis is immaterial.  

I'll admit that I don't tilt at windmills over this issue.  As Jim says, you can always find something the examiner will accept and usually you can do it without writing silly claims.

[Isaac]

ah, but is there such a thing as "the" Internet?  Or must it be defined as "an Internet" first?  And what is "Internet" anyways?

When I examined in the art area previously known as "computer networks" we were taught that there was only one "Internet" but many "internets", which meant that an initial reference to  "the Internet" would not be considered to lack antecedent basis.

[khazzah]

Anyways, I think your concern is valid in hands of a skilled sophist and a dumb jury, but it this case the Internet Protocol was recited as part of the dependent claim that was further narrowing down the "network layer protocol,' we would hope that no one would try to interpret IP as a physical layer protocol. 

Yeah, you're right that I broadened the topic away from OP's specific question. So yeah, since the OP's claim referred to "network layer protocol", IP couldn't be read as a physical layer.

And if you are running only a local area network, without connectivity to the outside world, how can the computers within it use the Internet Protocol... They must be using the Intranet Protocol, right?

Hmm. I agree there is a theoretical scenario where computers on a LAN don't actually have Internet connectivity, yet use an IP protocol stack to communicate locally. If I had a claim that recited "the Internet Protocol," I could live with a claim construction that didn't cover that scenario.

ah, but is there such a thing as "the" Internet?  Or must it be defined as "an Internet" first? 

The only reason that it would have to be defined as "AN" before we referred to "THE" is to deal with an Examiner's antecedent basis rejection. Yet as Isaac just pointed out, there actually is no such thing. No antecedent basis <> indefinite.

And what is "Internet" anyways?

I'm okay leaving that to be decided by the dueling expert witnesses.

[JimIvey]

I dunno. I'd be afraid that some Examiners would read "an Internet Protocol" as *any* protocol used on the Internet -- e.g., HTTP, SIP, SOAP, REST, etc. In fact, I'd be afraid that some judges and juries might read it like this. Maybe the presence of initial caps should help prevent this misinterpretation, but I'm not so sure it does.

I don't know the terminology well enough to say that such an interpretation is wrong.  FWIW, it wasn't my idea to recite "Internet Protocol" in the first place.  I still know it as TCP/IP and I'm not sure where UDP fits in all of that.  Of course, if I were writing an application in which those distinctions mattered, I'd have it all cleared up by the time I ever got around to writing claims.

While my practice has been mostly Internet technologies (and some intranet technologies) for many years, I've never recited "an/the Internet Protocol" in a claim.  I've recited things like "a hypertext transport protocol", "a file transport protocol", etc.  "The Internet Protocol" has just never been an important distinction in my work (as far as I can recall).

If the important feature is the use of an IP address, then cite that (as I mentioned in the example in my prior post).  That term is pretty well defined and distinguished from URLs, URIs, e-mail addresses, and other types of addresses.

Regards.

[still_learnin]

I've never recited "an/the Internet Protocol" in a claim.  I've recited things like "a hypertext transport protocol", "a file transport protocol", etc.  "The Internet Protocol" has just never been an important distinction in my work (as far as I can recall).

If the important feature is the use of an IP address, then cite that (as I mentioned in the example in my prior post).  That term is pretty well defined and distinguished from URLs, URIs, e-mail addresses, and other types of addresses.

But based on what I've read here, doesn't that just move the problem/concern?

• wherein an address field in the packet is an Internet Protocol address

Does that only read on IP (as IP is understood in plain English)? Or does it read any any address in use with any protocol associated with the Internet?

[Isaac]

I still know it as TCP/IP and I'm not sure where UDP fits in all of that.

UDP is an alternate transport protocol.   You can use UDP over IP instead of TCP.