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Author Topic: Claim, sometimes helpful to include usefulness?  (Read 1931 times)

Alistair

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Re: Claim, sometimes helpful to include usefulness?
« Reply #15 on: 07-27-11 at 12:02 am »

Blimey you've gone far ;)

I'm not technical enough to get everything you've been discussing, but it's all very interesting nonetheless. What I plan to do in the first application is to write as if this 112 6th paragraph wasn't there (and it probably isn't in the UK where I intend to patent my silly thing).

From a normal guy point of view I do understand that the structure that performs the holding of the sandwich of my hypothetical belt must be disclosed in the claim, even if it's not obvious to the examiner what that structure is for, he/she will know that because it's well anticipated in the specifications. My doubt is that some "inventions" are not inventions at all to me, they're just using old devices/technology and use them in different ways, so it's quite acceptable that you MUST say "to hold a sandwich" (I think "to" must be one of the most used, I've seen it everywhere), if not you actually haven't invented anything at all, makes no bones about it. I've downloaded tons of patents and, as I'm sure you know, MANY of them mention the function in the 1st claim, MANY of these were claimed well before the 2007 introduction of your 112 6th.   
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NJ Patent1

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Re: Claim, sometimes helpful to include usefulness?
« Reply #16 on: 07-27-11 at 04:29 pm »

Alistair:  Sorry if the thread I contributed to seemed over the top.  I'll try to be a 'normal guy' here  ;).  Your views are 100%  in sync with the KSR decision in the US.  The patentability of a new device that merely combines known elements or structures, each doing what they are known to do and producing an expected result should be viewed with skepticism.  The following statements are US-centric and are based on my experience, and experience of colleagues, and are not statements of "the law".  Recall "use" claims are tabu in the US.  I understand that the EPO may sometimes take a different view of new uses for known things.  The old "Mobil Oil" case comes to mind.   
     As a practical matter, nowadays, statements of intended use in a preamble (for ...) almost always raise a red flag.  You will see claims issue with those phrases.  But a lot of issued claims you see don't have them because they were there and got amended out.
     Modifiers like adapted to, or just 'to', also don't carry much punch in the US, unless some structure or function is included, as in "a basket adapted to hold a 5 kg sandwich"  We now know a little bit about how the basket is "adapted".
     If the claim is to a stand-alone apparatus (e.g. just a basket or just a buckle for a belt), "configured to" gets a little more respect.  But not in claims to combinations of old structures. People always 'adapt' these things to fit a use
     For the US, you might also consider claims to the combination of the sandwich and the belt (or whatever).  Also, you might consider claims to a method of delivering (or conveying) a sandwich comprising the steps of, 1. providing a belt having, etc.

  All the best
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