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[TaiwanIP]

I have a USB device. When connected to a PC, the USB device sends information to the PC in response to user interaction with the USB device. In response to receiving this information from the USB device, the PC displays things in a particular format that facilitates more user interaction with the USB device. A device driver must be installed on the PC to allow the PC to perform such display.
Ideally, I would be claiming just the USB device since that is what will be manufactured by the applicant. In view of the fact that the PC is also performing some of the operations, how should this be claimed? I do not want to claim the combination of the USB device and PC, if at all possible. Thank you.

[JimIvey]

Well, it sort of matters where the logic (program, circuitry, etc.) resides.

If the USB actually does things that are novel and non-obvious, claim that.  You might have to recite things that the USB causes the PC to do or things done by the PC that are detected by the USB that influences the behavior of the USB.

Same in the reverse direction.  If the PC actually does things that are novel and non-obvious, claim that.  You might have to recite things that the PC causes the USB to do or things done by the USB that are detected by the PC that influences the behavior of the PC.

In general, it's best to have claims that don't cover things sold separately in combination.  So, your objective is a good one.

Regards.

[TaiwanIP]

Well, it sort of matters where the logic (program, circuitry, etc.) resides.

If the USB actually does things that are novel and non-obvious, claim that.  You might have to recite things that the USB causes the PC to do or things done by the PC that are detected by the USB that influences the behavior of the USB.

Same in the reverse direction.  If the PC actually does things that are novel and non-obvious, claim that.  You might have to recite things that the PC causes the USB to do or things done by the USB that are detected by the PC that influences the behavior of the PC.

In general, it's best to have claims that don't cover things sold separately in combination.  So, your objective is a good one.

Regards.

That’s very good advice. I think I’ve got my three independents: a method performed on the USB device driver side, a method performed on the PC side, and the USB device that has a processor configured to perform a method.
(I meant to put this in the patent claim drafting forum.)

[khazzah]

[quote author=JimIvey link=topic=17998.msg89036#msg89036
I think I’ve got my three independents: a method performed on the USB device driver side, a method performed on the PC side, and the USB device that has a processor configured to perform a method.
(I meant to put this in the patent claim drafting forum.)

What's the difference between the device driver "side" and the PC "side"? In my view, both are on the same "side" since the processor on the PC executes the device driver.

As opposed to the USB device "side", where the device functionality is provided by either digital logic or by firmware executing on e.g. a microcontroller.

Now, maybe it makes sense to talk about a method directed to PC software that runs above/utilizes the device driver ... a configuration utility, maybe.

All speculation on my part since I know nothing about your USB device. I do know device drivers, though ... that was my thing before I became a patent attorney.

[TaiwanIP]

[quote author=JimIvey link=topic=17998.msg89036#msg89036
I think I’ve got my three independents: a method performed on the USB device driver side, a method performed on the PC side, and the USB device that has a processor configured to perform a method.
(I meant to put this in the patent claim drafting forum.)

What's the difference between the device driver "side" and the PC "side"? In my view, both are on the same "side" since the processor on the PC executes the device driver.

As opposed to the USB device "side", where the device functionality is provided by either digital logic or by firmware executing on e.g. a microcontroller.

Now, maybe it makes sense to talk about a method directed to PC software that runs above/utilizes the device driver ... a configuration utility, maybe.

All speculation on my part since I know nothing about your USB device. I do know device drivers, though ... that was my thing before I became a patent attorney.

Of course you're right. I meant to say USB device side. I think I was excited this morning before heading off to work knowing I had a clear direction for this application!

[JimIvey]

What's the difference between the device driver "side" and the PC "side"? In my view, both are on the same "side" since the processor on the PC executes the device driver.

I'm not clear either on what exactly the USB device does.  I had two thoughts that made me think the USB device might actually be doing something.

First is U3.  Years ago, USB devices would include software on it that would be executed by the PC but only use the USB device rather than the PC's storage.  For example, it would have a localized version of Firefox and Thunderbird on the USB device with all your bookmarks, history, contact list, e-mail correspondence, etc.  So, you plug in the device at a PC in a hotel lobby or library or borrowed from a friend and it becomes your computer temporarily.  Kinda cool, IMO.

Something about it caused the computer to execute code on the USB drive and the USB drive dictated the behavior of the PC.  I think you can craft claims covering just the USB device in that case.

Second is eye-fi, an SD card with wifi capability.  While not a USB device (without an adapter), it has "logic" on it, not just dumb storage.  In fact, USB web cams have processors in them, as do other USB devices.  So, I assumed it was possible that the USB device is not just a dumb storage device and that the logic on the USB device itself could have novel logic on it.

However, if neither of those is true and the USB device is really just a dumb storage device and all of the novelty is what the PC does with it (even if there's a custom driver on the PC that does novel things with USB storage devices), Karen's right, all the novel stuff would likely be on the PC exclusively.

Regards.

[khazzah]

I'm not clear either on what exactly the USB device does.  I had two thoughts that made me think the USB device might actually be doing something. ...

Yep, those sound like good examples of inventions where the novelty lies in the device itself. Your first piece advice was the best: figure out where the novelty lies and draft claims to that, taking care to avoid claims to combinations of elements that are sold/used separately.

[TaiwanIP]

What's the difference between the device driver "side" and the PC "side"? In my view, both are on the same "side" since the processor on the PC executes the device driver.

I'm not clear either on what exactly the USB device does.  I had two thoughts that made me think the USB device might actually be doing something.

However, if neither of those is true and the USB device is really just a dumb storage device and all of the novelty is what the PC does with it (even if there's a custom driver on the PC that does novel things with USB storage devices), Karen's right, all the novel stuff would likely be on the PC exclusively.

Regards.

I’m going to try this without giving the idea away (i.e., this is not the invention I’m working on). Imagine a remote control touchpad for your PC that connects to the PC by a USB connection (USB device). It would be possible to include processing in the USB device itself in which signals from the touch surface are received and processed to determine which gestures are being performed. A gesture table in the memory of the USB device could be accessed to determine which command that the determined gestures correspond to. The determination of the command may be performed with reference to an additional determination as to whether the USB device is vibrating (maybe to determine whether the user is on the move such as sitting in a bus or in a subway train as opposed to sitting still at a desk), and maybe with reference to the outside temperature (maybe to determine whether it’s summer or winter). The USB device has an accelerometer and thermometer to allow for such processing/control. During a prior art search, it was determined that at least these features are novel. The PC displays a map of the world when the USB device is connected to the PC. In response to receiving commands from the USB device obtained as described above, the PC displays things on the map in a unique way. Maybe all past manipulation of the map by the user is shown until a reset button is pressed on the USB device and a corresponding signal is generated by the USB device and received by the PC. Maybe also a bar graph is shown of the amount of vibration of the USB device in real-time and a thermometer is shown of the temperature. Such display is performed by the PC in response to receiving corresponding signals from the USB device. The way in which such display is performed, including in response to receiving various signals from the USB device, were found to be novel during the prior art search. Finally, the USB device has some aspects about it’s structure that have also been found to be novel.

Again, this is NOT the invention I’m working on. This is purely hypothetical and written to (hopefully) illustrate how there could be novelty on both sides so please be nice when discovering holes in my logic (such as whether this thing has any utility)!

[khazzah]

novelty on both sides so please be nice when discovering holes in my logic (such as whether this thing has any utility)!

Not sure what you mean by utility.

Since there is novelty on both sides, write claims to both. And maybe throw in another claim that includes the interaction between the two. Despite the much-discussed problems with divided infringement, these sorts of system claims can be valuable in some scenarios.

[TaiwanIP]

novelty on both sides so please be nice when discovering holes in my logic (such as whether this thing has any utility)!

Not sure what you mean by utility.

Since there is novelty on both sides, write claims to both. And maybe throw in another claim that includes the interaction between the two. Despite the much-discussed problems with divided infringement, these sorts of system claims can be valuable in some scenarios.

After immersing myself in this specification, it turns out that there are some very practical applications in which the USB device could also be embedded as part of an electronic device. So there we go - claims directed to a single system that performs all the novel features. I will also draft subcombination claims, of course, but I can avoid claims directed to two devices that are typically manufactured and sold separately. Karen or anybody else, can you let me know when it would be advantageous to include such claims (directed to devices made and sold separately)? In the subcombination claims, I’m going to recite one device doing things in response to receiving signals from the other device. Is that what you meant by throwing in “another claim that includes the interaction between the two”?