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[Patentstudent]

I would appreciate your advice/opinion regarding the following:

Let's presume that, so far, it was impossible to produce a steel widget in one piece by means of casting. It was only possible to cast it in two separate sections and then soldering these sections to eachother. An alternative method to obtain the brass widget in one piece is machining it from a block of brass.

Can we now claim it by means of one independent claim:

'A brass widget made in one piece by means of casting.'

without having to specify what method we use in order to be able to cast it in one piece?

If we can claim it by one independent claim along the lines of the one shown above, is it wise to limit ourselves to that single claim?   
       
Thank you.

[JimIvey]

First, I'd stay away from "means" unless you intend to invoke Section 112, paragraph 6.

Second, you might not have to specify in the claims the method you use to cast the widget, but your specification will need to describe that.  In addition, if you want the claim not to be limited to the particular method you use (or possibly run afoul of the "written description" requirement), you should describe at least one alternative method of casting the widget in brass (or at least not sue someone for infringement if they use a different method).

Wisdom of anything in patents always depends on the economic circumstances.  Some patents have one claim and seem to do just fine.  If there are variations and features that add incremental value to your invention, additional claims are the typical way of trying to capture that value.

Regards.

[Patentstudent]

Jim, thank you for your helpful comments.

[Robert K S]

Of course, an examiner might broadside you with an "unclaimed essential matter" § 112 ¶1 rejection based on In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976) (see MPEP 2172.01).

I don't know why this section is even in the MPEP.  This case is so out of line with all the other jurisprudence on § 112 ¶2 claim form* that it would seem to me to be bad law.  But it is apparently at the examiner's disposal.

*Some choice quotes:
MPEP 2173.02: “In reviewing a claim for compliance with 35 U.S.C. 112, second paragraph, the examiner must consider the claim as a whole to determine whether the claim apprises one of ordinary skill in the art of its scope and, therefore, serves the notice function required by 35 U.S.C. 112, second paragraph, by providing clear warning to others as to what constitutes infringement of the patent.”

S3 Inc. v. nVIDIA Corp., 259 F.3d 1364, 1369, 59 USPQ2d 1745 (Fed. Cir. 2001): “The purpose of claims is not to explain the technology or how it works, but to state the legal boundaries of the patent grant.  A claim is not ‘indefinite’ simply because it is hard to understand when viewed without benefit of the specification.”

Exxon Research & Engineering Co. v. United States, 265 F.3d 1371, 1375, 60 USPQ2d 1272 (Fed. Cir. 2001): “We have stated the standard for assessing whether a patent claim is sufficiently definite to satisfy the statutory requirement as follows: If one skilled in the art would understand the bounds of the claim when read in light of the specification, then the claim satisfies section 112 paragraph 2.”

[khazzah]

'A brass widget made in one piece by means of casting.'

Stay away from means unless you really intend to invoke 112P6! And don't invoke 112P6 unless you fully understand the ramifications.

This works just as well:

A brass widget made in one piece by casting.

without having to specify what method we use in order to be able to cast it in one piece?

*IF* there is no prior art for a brass widget made in one piece by casting, you should be able to obtain a claim to the result "made in one piece by casting" without specifying in the claim the details of the casting.

You are, as Jim noted, required to describe the casting process in the spec, in order to comply with 112 1st Written Description, Enablement, and Best Mode.

The danger of the result-with-no-details claim is that your knowledge of the prior art is imperfect. If the Examiner finds a reference that teaches "a brass widget made in one piece by casting," your claim will be rejected.

More likely, the Examiner will find a reference that contains a snippet or two that suggests an integral cast brass widget, even if the reference really doesn't teach how to do the casting. Then you have to argue with the Examiner about whether or not the reference is enabled.

If we can claim it by one independent claim along the lines of the one shown above, is it wise to limit ourselves to that single claim? 

I'll go further than Jim and say No, it's not wise.

I would at least have dependent claims that included lots of details about the casting method. Think about it ... why are you leaving out these details? Because you want to catch infringers that produce an integral brass widget by casting but do it slightly differently. But as Jim said, then your broad claim will be subject to invalidation on 112 First grounds, ie, that your spec didn't show possession of the infringer's method and/or didn't show how to make/use the infringer's method. But your dependent claims that add detail could still be valid, even if that broad claim is invalidated under 112 1st.

[Oh, Crud]

Good advice all.  Now for a tangent.

This works just as well:
A brass widget made in one piece by casting.

The tangent issue is mixing types in your claim.  You have an article you want to claim, but are in part defining it in terms of how it is made (i.e., there's a method step in your article claim).  Sometimes this can be problematic.

But on the other hand, there is the argument that "cast" or "die-cast" is not necessarily a recitation of the method of making, but rather a term of art applied to a thing as an adjective, such that the thing is properly identified to those skilled in your art. ^{1}

So if a cast steel widget made as a single piece is truly novel,
"A cast steel widget comprising a unitary body structure" (or other words imparting the same, where you have carefully described in the spec what is meant by unitary).

One last consideration - I can't tell from your hypo if you mean only that single-piece steel widgets made by casting are new, or if single-piece widgets irrespective of method made are new.  If the latter is the case, hold the "cast" adjective for dependent claims.
1.  "A steel widget comprising a unitary body structure"
2.  "The steel widget of claim 1, wherein said widget is a cast steel widget."



^{1} This argument (if true) works fine in the US and most of Western Europe, but Poland and Russia and a few others always want to argue that any word tending to indicate how a thing is made is a method step recitation.  A sort of generic example is stuff like, "a magic invisible 600 thread count woven cloth".  I think for most people, "woven cloth" is a description of type.  But in some patent offices the word "woven" is read as, "a magic invisible 600 thread count cloth made by the process of weaving", and you're required to delete the "method step" from the article claim.

[khazzah]

This works just as well:
A brass widget made in one piece by casting.

The tangent issue is mixing types in your claim.  You have an article you want to claim, but are in part defining it in terms of how it is made (i.e., there's a method step in your article claim).  Sometimes this can be problematic.

You're talking about "product-by-process", right? If "cast" is found to be a process limitation, then it doesn't distinguish over the article made by another other process. Good point.

I asked for clarification because "mixing types" is often used in a different context to refer to a claim that is indefinite because it could be an apparatus or it could be a method. Don't see that here. The concern here would seem to be product-by-process.

But on the other hand, there is the argument that "cast" or "die-cast" is not necessarily a recitation of the method of making, but rather a term of art applied to a thing as an adjective, such that the thing is properly identified to those skilled in your art.

I recently came across some useful case law related to this:

If the words of limitation can connote with equal force a structural characteristic of the product or a process used to obtain it, then the limitation is commonly interpreted in its structural sense. See, e.g., 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003)

[Oh, Crud]

You're talking about "product-by-process", right? If "cast" is found to be a process limitation, then it doesn't distinguish over the article made by another other process. Good point.

I asked for clarification because "mixing types" is often used in a different context to refer to a claim that is indefinite because it could be an apparatus or it could be a method. Don't see that here. The concern here would seem to be product-by-process.

Yes, thank you, and thanks also for clarifying that for me (and also the law cite - gotta love it when guys are slugging it out over sticky labels...).

The biggest issue with having the method language in the claim is, once the examiner says the Office will afford "made by casting" no patentable weight, it can be like pulling teeth to get them to accept a revised "A cast steel widget..." claim.  Your 3MIPC case could come in very handy in that circumstance. 

Thanks again.

[JimIvey]

This works just as well:
A brass widget made in one piece by casting.

The tangent issue is mixing types in your claim.  You have an article you want to claim, but are in part defining it in terms of how it is made (i.e., there's a method step in your article claim).  Sometimes this can be problematic.

I'll respectfully disagree with this, not that it can be problematic but that there's a method step in there.  There isn't.

Here's an example of that claim containing a method step.

A brass widget comprising:
   one piece; and
   making the one piece by casting.

When you try to figure out what that covers, you will likely experience an honest-to-goodness WTF?! moment.  How can a part of the brass widget be a "making the one piece by casting"?  Put another way, imagine you and a friend are making such a brass widget and you say to your friend, "Hey, can you pass me a making the one piece by casting?"  Just doesn't make any sense.

Accordingly, you'd run afoul of 112p2 and it would certainly be problematic.

Regards.

[khazzah]

The tangent issue is mixing types in your claim.  You have an article you want to claim, but are in part defining it in terms of how it is made (i.e., there's a method step in your article claim).  Sometimes this can be problematic.

I'll respectfully disagree with this, not that it can be problematic but that there's a method step in there. 

Yeah, I already pointed out there isn't a method step in there, but that the Examiner may nonetheless decide that it's a product-by-process limitation. The former leads to rejection/invalidation under IPXL v. Amazon, the latter leads to no patentable weight.

[Patentstudent]

After reading the helpful comments of all of you, I am wondering whether the following would be the better route to follow:

A widget formed by using a die and made of brass comprising one piece.

This eliminates the limitation that 'casting' may create and also covers manufacturing the widget for example through powder metallurgy (compaction of powder in a die or mold and sintering the compact into a solid widget).

The patent application will not be drafted in English, so, in this example, the correctness of the English wording is less important.   

[khazzah]

The patent application will not be drafted in English, so, in this example, the correctness of the English wording is less important.   

Sounds like you're filing a patent outside the US. Most posters here are US practitioners. The concepts discussed here so far -- product-by-process, hybrid claims, etc. -- are relevant to US patent law.

If you want advice about patents outside the US, you should be clear about this.

[Patentstudent]

The patent application will not be drafted in English, so, in this example, the correctness of the English wording is less important.   

Sounds like you're filing a patent outside the US. Most posters here are US practitioners. The concepts discussed here so far -- product-by-process, hybrid claims, etc. -- are relevant to US patent law.

If you want advice about patents outside the US, you should be clear about this.

Karen, I apologize for not being clear about this when starting the thread.

[bakhus]

This question make me wonder ...

Can one have an element of a device in a combination claim, that would be defined by the process which manufacture it?

For example, suppose a device comprising: a handle; and a thing connected to said handle, wherein said thing is produced by the described good process.

What if the good process is just an instruction to build something that does a certain function i.e. make a thing that perform that function, and a few examples of how to make a thing, that does that function? What if the instruction include a few other instructions, but each of the other instructions is also of the form make a 1st thing doing 1st function, a 2nd thing doing 2nd function.... and connect the things into one thing?

[khazzah]

Can one have an element of a device in a combination claim, that would be defined by the process which manufacture it?

For example, suppose a device comprising: a handle; and a thing connected to said handle, wherein said thing is produced by the described good process.

That's classic product-by-process. You can draft such a claim, but the process doesn't distinguish over the art.

See MPEP 2113
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)