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[af]

I hope this makes sense. This is a question about the use of "first", "second", "third" in claiming. Is it proper to use "second" and "third" without referring to "first"?

Here is an example. Let's say that the specification consistently refers to certain "parameters" as a first parameter, a second parameter, and a third parameter. Throughout the specification, the first, second, and third parameters each have specific and distinct meanings, i.e. although they are all "parameters", each has certain traits that make them distinct.

Claims have been allowed that embody all three "parameters".

Now, I want to write claims in a continuation that embodies only the second and third parameter. In order to avoid confusion I would prefer to write a claim that is consistent with the specification, and refer to them as they are referred in the specification.  Is it proper to write a claims like the following?

An apparatus, comprising:

a second parameter defined by ...; 
a third parameter defined by ...; and
the combination of the second parameter and third parameter ...

Thanks,
Alan

[khazzah]

Throughout the specification, the first, second, and third parameters each have specific and distinct meanings, i.e. although they are all "parameters", each has certain traits that make them distinct.

That's very unusual. Conventional practice is to use first, second, etc. in a very generic sense. If "first parameter" is meant to convey something like "weight parameter," then it makes a lot more sense to just refer to it as "weight parameter."

Now, I want to write claims in a continuation that embodies only the second and third parameter. In order to avoid confusion I would prefer to write a claim that is consistent with the specification, and
refer to them as they are referred in the specification. 

Is it proper to write a claims like the following?
An apparatus, comprising:
a second parameter defined by ...; 
a third parameter defined by ...; and
the combination of the second parameter and third parameter ...

The only relevant requirement is indefiniteness, which boils down to would a POSITA understand the claim. If your spec does indeed give special meaning to "second parameter" then it seems to me that Yes, a POSITA would understand the claims.

That said, I would expect some Examiners to have a knee-jerk reaction to the use of second without first, and to give you an indefiniteness rejection. Perhaps arguing that "second parameter" has special meaning when read in light of the spec would convince him to withdraw the rejection. Perhaps not.

IMHO, even when first and second were used in the typical generic sense, I still think the claim is understandable, so that you should win an appeal on an indefiniteness rejection.

[TaiwanIP]

It would really bother me to draft a claim like that. How about in the continuation application, you state in the specification that the second parameter can also be referred to as an xyz parameter (such as the weight parameter that Karen mentioned) and do the same for the third parameter? Then in the claims, you can use these new terms? I believe that the addition of such a disclosure in the specification of the continuation would fall under amendments that merely rephrase verbiage and so would not be considered new matter. (MPEP 2163.07) Of course, if it's clear from the specification that the second parameter is something like a weight parameter, then you wouldn't need the addition of such a disclosure.

[af]

Thanks Karen and TaiwanIP. I appreciate your comments.

It would really bother me to draft a claim like that.

Yes, I am bothered by it as well. What I am thinking is to write a normal claim with first, second, and third and clearly define what I mean by a "first parameter", "second parameter", etc. in the claim. For example, a first parameter measured at ... , a second parameter measured (or defined by ...). I am thinking that a POSITA should understand the corresponding meaning and support in the specification even if the ordinal numbers don't match up.

Alan

[Simpletown]

This just seems like odd phrasing.

a second parameter defined by ...; 
a third parameter defined by ...; and
the combination of the second parameter and third parameter ...

It seems like it would be easier to write the claims such as:

a parameter defined by ...; 
another parameter defined by ...; and
the combination of those parameters ...

If the parameters are no longer second or third, then the meaning conveyed by leaving such terms as second and third in the claims without a first pretty much reeks of indefiniteness and would grab a halfway decent examiners attention. Once you have done that they might even think about your original disclosure and notice the invention as envisioned required a first parameter and that the new claims may not be supported by that disclosure. This depends on if it was shown in the spec a first parameter was indeed required. Remember, leaving something essential out can be new matter just as much as putting something new in. If the original disclosure states the first parameter was always required and doesn't have any of the fun "may or may not be there" language that lets you make the invention whatever you may someday want, you might end up causing a headache by leaving in words that actually make the examiner think about your claims and the invention, rather than ones they can just gloss over.

[JimIvey]

This issue has me perplexed and I'm not sure what I'd do about it.  I have no idea why you'd refer to first, second, third, etc. parameters in the spec.  But, it seems like that's what you're stuck with.

If the spec had given better names to the parameters, i.e., indicative of by what the parameter is defined, you could use first, second, etc. in the claims, or the same better names.

For example, let's say the first parameter is "defined by" (not sure I like that language either) a measured speed of a vehicle.  So, you'd recite "a vehicular speed parameter that is defined by a measured speed of a vehicle."

I'm not wild about "parameter" in computer-implemented inventions either, since "parameter" is a term of art, though it seems to have been largely replaced by "argument". 

Regards.

[TaiwanIP]

What I am thinking is to write a normal claim with first, second, and third and clearly define what I mean by a "first parameter", "second parameter", etc. in the claim. For example, a first parameter measured at ... , a second parameter measured (or defined by ...). I am thinking that a POSITA should understand the corresponding meaning and support in the specification even if the ordinal numbers don't match up.

To me this issue falls more under the category of taking pride in your specifications than trying to avoid rejections during prosecution. I would try my best to avoid the route of calling something a first parameter in the specification, then calling another element the first parameter in the claims (I'm assuming this is what you meant by the ordinal numbers not matching up), even though someone skilled in the art would know exactly what you're talking about. Maybe you could consider my advice (of adding a disclosure in the specification in which you refer to the first, second, and third parameters using other terms to set up what you'll be doing in the claims) or come up with something else creative.
(Edit 1: Alan, I don't mean to insinuate in any way that you don't take pride in your specifications. I’m merely asking out loud to anyone who might be reading this, "Why stop at avoiding rejections? Why not go all the way and write a good, clean specification?" Edit 2: I notice that I'm now a "Full Member" with my 50th post. Wow! Do I get anything?)

[smgsmc]

What I am thinking is to write a normal claim with first, second, and third and clearly define what I mean by a "first parameter", "second parameter", etc. in the claim. For example, a first parameter measured at ... , a second parameter measured (or defined by ...). I am thinking that a POSITA should understand the corresponding meaning and support in the specification even if the ordinal numbers don't match up.

To me this issue falls more under the category of taking pride in your specifications than trying to avoid rejections during prosecution. I would try my best to avoid the route of calling something a first parameter in the specification, then calling another element the first parameter in the claims (I'm assuming this is what you meant by the ordinal numbers not matching up), even though someone skilled in the art would know exactly what you're talking about. Maybe you could consider my advice (of adding a disclosure in the specification in which you refer to the first, second, and third parameters using other terms to set up what you'll be doing in the claims) or come up with something else creative.
(Edit 1: Alan, I don't mean to insinuate in any way that you don't take pride in your specifications. I’m merely asking out loud to anyone who might be reading this, "Why stop at avoiding rejections? Why not go all the way and write a good, clean specification?" Edit 2: I notice that I'm now a "Full Member" with my 50th post. Wow! Do I get anything?)

Substituting descriptive parameters for "first", "second", ... in the spec this late in the game could run afoul of new matter.  It's better to focus now on the claim language without touching the spec if at all viable.

[TaiwanIP]

Maybe you could consider my advice (of adding a disclosure in the specification in which you refer to the first, second, and third parameters using other terms to set up what you'll be doing in the claims) or come up with something else creative.

Substituting descriptive parameters for "first", "second", ... in the spec this late in the game could run afoul of new matter.  It's better to focus now on the claim language without touching the spec if at all viable.

I’m curious how others feel about this. I’ve never added such language in a continuation so I don’t have first-hand knowledge of how examiners would treat this issue. However, what I stated in an earlier post seems to make sense. Here it is for easy reference: “in the continuation application, you state in the specification that the second parameter can also be referred to as an xyz parameter (such as the weight parameter that Karen mentioned) and do the same for the third parameter? Then in the claims, you can use these new terms? I believe that the addition of such a disclosure in the specification of the continuation would fall under amendments that merely rephrase verbiage and so would not be considered new matter. (MPEP 2163.07).” Any thoughts?