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[cheesepep]

What if I had the following claim:

1)  A computer comprising:

a storage system; and
a processor that is in electronic communication with a satellite.

Assuming that this claim meets all 101, 102, 103 requirements, is "a satellite" part of the claim?  That is for patentability and infringement purposes, is the satellite taken into consideration for patentability purposes?  Also, assuming issuance, is the satellite considered for infringement purposes?  The reason why I ask is because "a processor" is certainly being claimed here as being part of the computer whereas the satellite is merely a external device that is not really part of the computer (just communicates with it).

TIA.

[JimIvey]

Assuming that this claim meets all 101, 102, 103 requirements, is "a satellite" part of the claim? 

Yes and no.  The accused device must, indeed, communicate with a satellite.  However, the accused device need not include the satellite itself.  In other words, if a company provides a device which infringes except for providing the satellite but communicates with someone else's satellite, the device still infringes.

Regards.

[khazzah]

What if I had the following claim:

1)  A computer comprising:

a storage system; and
a processor that is in electronic communication with a satellite.

Assuming that this claim meets all 101, 102, 103 requirements, is "a satellite" part of the claim [for purposes of anticipation and infringement]? 

I agree with JimIvey: a satellite is not required for infringement. While it's possible some infringer will make the argument that it is, that argument just doesn't have legs.

As for anticipation, I think the law is also clear that the limitation "in communication with a satellite" doesn't get patentable weight. Meaning Examiner doesn't have to find a reference teaching a satellite. That said, some Examiners *will* give it patentable weight. I find that patentable weight is something that varies a lot from Examiner to Examiner.

Related question ...  does "in communication with" get patentable weight? I say No, because you didn't positively recite a communication interface or a processor configured to communicate.  Thus, the Examiner could ignore not only the satellite, but communicating in general.

BTW, I call this "inferential claiming." I believe I found that term in some well-known reference (Chisum?) though I can't recall exactly where.

[cheesepep]

Thanks for the replies.  What if I rephrase the claim like this to eliminate inferential claiming?

A computer configured to communicate with a satellite, the computer comprising:

a storage system; and
a processor that does something with the satellite.

Assuming it again meets 101, 102, 103 requirements, does "a satellite," since it is now mentioned in the preamble and is not inferentially claimed, hold any patentable weight?  And for infringement purposes?  TIA.

[khazzah]

Thanks for the replies.  What if I rephrase the claim like this to eliminate inferential claiming?

A computer configured to communicate with a satellite, the computer comprising:

a storage system; and
a processor that does something with the satellite.

Assuming it again meets 101, 102, 103 requirements, does "a satellite," since it is now mentioned in the preamble and is not inferentially claimed, hold any patentable weight?  And for infringement purposes?  TIA.

I'll speak to anticipation first.

The "does something" part is definitely given patentable weight. For example, if the processor "calculates a satellite trajectory" then the calculating is given patentable weight. That is, the Examiner must find a reference that teaches not just a trajectory, but one for a satellite (or, alternatively, must assert that it's obvious to make the trajectory be one for a satellite.)

Simiarly, if the processor "transmits a trajectory to a satellite", the transmission is given patentable weight. The "to a satellite" may or may not be ... depending on whether the Examiner chooses to invoke the non-functional descriptive material doctrine.

Note that patentable weight for "satellite" may not get you where you need to go. That is, in many scenarios even if you can convince the Examiner to give "satellite" patentable weight, he may just throw in another reference that mentions satellites,. That is, if you're relying on the interaction with a satellite as a patentable distinction, it may not be so patentable.

Therefore, if at all possible, focus instead of what the *computer* does that's novel.

[cheesepep]

Thanks for the reply.

You mean "that does something" is given patentable weight just because it interfaces with the satellite and/or because the satellite is mentioned in the preamble and the body of the claim so there is no inferential claiming?

I understand that the focus should definitely be on the computer but I wanted to know this answer for completeness sake.  Thanks.

[dendog220]

What if I had the following claim:

1)  A computer comprising:

a storage system; and
a processor that is in electronic communication with a satellite.

Please pardon my question.  I am sometimes troubled by the proper intrepetation of "workpiece" in the claims.  In the above example, it seems to me that the claim requires the computer to be "in connection" with a satellite; it seems to me that the claim requires the infringer to turn on his computer and establish satellite connection to infringe the claim.  Is my understand proper?

I was taught to be careful with whatever element in the claim that we don't want to include... and one of the safer way to recite the "workpieces" is to address them in the preamble in the form of a Jepson claim.  

Look forward to your further insight and input.

Thank you,

Sincerely,
Den

[JimIvey]

I was taught to be careful with whatever element in the claim that we don't want to include... and one of the safer way to recite the "workpieces" is to address them in the preamble in the form of a Jepson claim.  

I'm not sure what you mean by workpieces, and I really don't like Jepson claims -- way too much admitted prior art and challenging for inventions that are novel, non-obvious combinations of known things (i.e., pretty much all inventions).  To the extent "workpieces" means things that interact with the invention but are not part of it, I just recite them inferentially like in the examples above.  I believe that's sufficient.

Karen raised a lot of good points, and I never just claim "in communication with" some external thing -- primarily because the substantive content of the communications is usually important for the inventions I work with.

I'll give an example -- a GPS device (not novel, but let's assume it is).

A position determining device comprising:
  one or more processors;
  satellite communication circuitry that is operatively coupled to the processors and that is capable of receiving signals from two or more satellites;
  computer readable media operatively coupled to the processors and to the satellite communication; and
  positioning determining logic that executes in the processors from the computer readable media and that, when executed, causes the device to determine the position of the device by at least:
    receiving respective signals from each of at least two of the two or more satellites;
    determining a respective distance of the device from each of the at least two satellites using respective times of arrival of the respective signals;
    determining a respective position of each of the at least two satellites; and
    determining a position of the device from the respective positions of and the respective distances from the at least two satellites.

I don't believe that an accused infringer would have to make, use or sell the satellites themselves in addition to GPS devices to infringe the claim.  I also believe the recited interaction is enough to avoid anticipation for "in communication with" if the examiner asserts someone could walk by a satellite and say, "Hello, Satellite!".

Regards.