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[Patentstudent]

I have a question regarding a patent application which primarily claims a method of doing something.
The method claims all claim characteristics of means that are required to perform the method.
Is it sufficient to have a set of (say 10) method claims and then add one claim for the means to perform the method according to claim 1 to 10?
Or is it better to also draw up a set of means claims that each specifically repeat what was claimed for the means in the method claims?

Thank you very much in advance for your reply.     

[khazzah]

Or is it better to also draw up a set of means claims that each specifically repeat what was claimed for the means in the method claims?

When you say "the method according to claim 1 to 10" are you asking about a multiple dependent claim?

And you're suggesting that this multiple dependent looks like .... what? .... "A means for performing the method according to claim 1 or 2 [etc.]" ?

[Patentstudent]

Karen, thank you for your reply.

Let me give a simple example:

Claim 1.  A method to hit a nail comprising the use of a hammer with multiple handles.
        2.  Method according to claim 1 in which at least one of the handles of the hammer has a circular cross section.
        3.  ...etc. up to and including dependent claim 10.

        11. A hammer to apply the method according to one or more of the preceeding claims.

Please don't look at the possible errors in the wording of these example claims.

My question basically is, whether claim 11 is enough to assure proper protection of the hammer as such, or should I (or is it safer to) add:

        12. The hammer according to claim 11 having multiple handles.
        13. The hammer according to claim 11 or 12 in which at least one of the handles of the hammer has a circular cross section.
             etcetara   

Thank you in advance for your reply.

[khazzah]

Claim 1.  A method to hit a nail comprising the use of a hammer with multiple handles.
        2.  Method according to claim 1 in which at least one of the handles of the hammer has a circular cross section.
        3.  ...etc. up to and including dependent claim 10.

        11. A hammer to apply the method according to one or more of the preceeding claims.
        12. The hammer according to claim 11 having multiple handles.
        13. The hammer according to claim 11 or 12 in which at least one of the handles of the hammer has a circular cross section.
             etcetara   

IMHO, no, claim 11 won't do, and adding 12 and 13 doesn't fix the problem.

Though it's a bit hard to put my finger on why. I think my basic problem is that I'm not sure your the language you used actually imports the structure of the handle. You want the device claim 11 to include the structure "multiple handles", but I'm not sure that it does.

Your device claim 11 is certainly a weird way of including structure, and some Examiners might ignore everything after hammer.

Therefore, I'd write a normal looking device claim

A device comprising:
a hammer including multiple handles.

Just my opinion. I'll admit I don't write a lot of mechanical cases. Nonetheless, I've been around long enough to have learned something about mechanical claims.

[af]

I have actually seen a claim similar to your claim 11 allowed, except it was a method referring back to a device rather than a device referring back to a method, as in your example.  That doesn't necessarily mean that it is proper. I agree with Karen, the claim doesn't seem proper but I can't quite put my finger on it either. Is it independent, is it dependent? Are you mixing claim types, which is improper?

I think you might be better off with something like the following:

A hammer, comprising:

a plurality of heads; and
means for ... (recite functional equivalents of the steps).

I have been recently reading an article by Bradley C. Wright called "Functional Claiming and Functional Disclosure" recommended by Klav on this forum (see: http://www.intelproplaw.com/ip_forum/index.php/topic,17781.0.html). In that article, he has a section about "Indefiniteness: Improper Mixing of Statutory Invention Categories", which I think is worth a read in context of your question.

I hope this information is helpful.
Alan

[af]

You may also want to look at MPEP 2173.05(p) II:
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2173_05_p.htm

[Patentstudent]

Thank you Karen and Alan. Your comments are very helpful.

[khazzah]

Claim 1.  A method to hit a nail comprising the use of a hammer with multiple handles.
        2.  Method according to claim 1 in which at least one of the handles of the hammer has a circular cross section.
        3.  ...etc. up to and including dependent claim 10.

        11. A hammer to apply the method according to one or more of the preceeding claims.

OK, you didn't ask for this, but here's another thing that strikes me as weird about your claim. A hammer is essentially an apparatus. One can write claims to a method of use, and sometimes it makes sense to have method of use claims. But it feels forced to write as a method claim and convert to an apparatus. The more natural way is to do the reverse. And even that's not the best approach, as it often ends up with a method claim that looks like "providing A; providing B; using A with B [functional language.]

So if you're really working on an apparatus, start with apparatus claims. *Then* think about whether method claims make sense: do they allow you to catch a different infringer or a different infringing scenario that you can't get from the apparatus. If not, I question whether method claims provide any value.

I feel differently about software/digital logic inventions. Then it often makes sense to start with the method of use, and to write apparatus claims that capture the use as functional limitations of the claimed structure.

But I don't like your claim 11 for software/digital logic inventions either. Even in that context, I don't see what your "Apparatus that performs the method" claims get you that you couldn't get with a more conventional claim format.

[Patentstudent]

Thank you.