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[minntabo]

Hi all,

I've been practicing drafting claims and came across a scenario where I'd like to minimize the total number of claims, while protecting as much subject matter as possible.

Stimulus:  The specific rules or possibilities to be claimed are:

   My friend can give me a command to find an apple.  If I find an apple, then I will raise a sign that says I FOUND IT.  If I don't find an apple, then I will either sigh or give up, and I CANNOT raise a sign that says I FOUND IT.  Simple.

   Now, my enemy can also give me a command to find a special apple.  If I find a special apple, then I will smile or jump.  If I don't find a special apple, then I will go home, and I CANNOT smile or jump.  Finding a special apple requires that I first find an apple, of course.  Also simple.

Task:  To write a SINGLE broad claim that covers BOTH scenarios of the stimulus.  Also write as few dependent claims as possible, while covering every aspect of the stimulus.  No repetition of concepts or redundant claims.

Issue:  I spent all afternoon and came up with the set of claims below.  The problem is, I'm not satisfied because it doesn't seem like such an elegant claim set.  That is, I just have this feeling that there's a much better way of mixing and matching the concepts around, with fewer claims (e.g., no repeating of claims like claims 6 and 7, and 13 and 14).  Maybe it's a thought process issue, or perhaps the various combinations has crippled my logical thinking abilities.  Any suggestions or guidance is much appreciated.

Claim Set:

1.   Invention comprises: 
      If I receive an external instruction, then proceed to work to find an apple.
         If I find an apple, then perform task 1.
         If I don't find an apple, then perform task 2.

2.   The invention of claim 1, wherein the external instruction comprises at least one of a friend's command and an enemy's command.

=====

3.   The invention of claim 1, wherein task 1 comprises raising a sign that says I FOUND IT.

4.   The invention of claim 1, wherein task 2 comprises at least one of sighing and giving up.

5.   The invention of claim 1, wherein task 1 does not comprise any of sighing or giving up.

6.   The invention of claim 3, wherein the external instruction comprises a friend's command.

7.   The invention of claim 4, wherein the external instruction compises a friend's command.

=====

8.   The invention of claim 1, wherein the proceeding to work to find an apple comprises examining the color of the found apple to determine if the apple is a special apple.

9.   The invention of claim 8, wherein task 1 is performed if the found apple is determined to be a special apple.

10.   The invention of claim 8, wherein task 2 is performed if the found apple is not determined to be a special apple.

11.   The invention of claim 9, wherein task 1 comprises at least one of smiling and jumping.

12.   The invention of claim 10, wherein task 2 comprises going home.

13.   The invention of claim 10, wherein task 2 does not comprise any of smiling and jumping.

13.   The invention of claim 11, wherein the external instruction comprises an enemy's command.

14.   The invention of claim 12, wherein the external instruction comprises an enemy's command.

[JustAnotherExaminer]

Your independent claim is anticipated with 102b prior art.  http://www.ietf.org/rfc/rfc2068.txt

I'm sure you could ask the attorneys on here what happens when you file claims you know are already anticipated.


Now, as for drafting claims:
There's a difference between i) drafting claims in order to find patentable subject matter and ii) drafting claims once the examiner has indicated patentable subject matter.

In the first instance, you need to put something you think is neither anticipated nor obvious in the independent claim.  Then, for the dependent claims, you should add core concepts of the disclosure that also, on their own might, may be neither anticipated nor obvious.  This makes the examiner examine all your core concepts of the invention early in prosecution, and indicate which, if any, are patentable.  I've never been a fan of trivial or repetitive dependents in instance i) because they don't help at all at finding patentable subject matter and just jack up fees.

Once you've found patentable subject matter, you shift to instance ii).  Redraft the independent claim, clean it up and maybe broaden areas of it that aren't necessary for patentability.  And, once you have that as-broad-as-possible-but-still-patentable independent claim, you write the dependents accordingly and for litigation.

[JustAnotherExaminer]

So....

An instance i) example.  Let's say we think the patentable subject matter area is determining the originator of the instruction (ie, friend vs enemy) and crafting a response based on the originator.  So we draft independent claim:

1) A method comprising:
receiving a query instruction from an originator;
determining the originator of the query instruction;
determining a classification of the originator;
executing a query based on the query instruction;
obtaining a result of the executed query;
generating a response based on the obtained result and the classification of the originator; and
transmitting the response to the originator.

But that probably isn't nonobvious (we're hoping it is, though), so we're going to draft dependents around further core concepts of the invention, but still within the original patentable subject matter area (determining the originator and generating a response based on such).

2) The method of claim 1, wherein determining the classification of the originator comprises:
transmitting originator information to one or more third-party classifier;
receiving one or more classifications from the one or more third-party classifier.

3) The method of claim 2, wherein determining the classification of the originator further comprises:
determining a classification of the originator based on the received one or more classifications.

4) The method of claim 3, wherein:
the determined classification is determined based on an occurrence rate of a first classification within the one or more classifications.

5) The method of claim 1, wherein generating a response comprises:
determining whether to insert at least part of the obtained query result into the response based on the classification of the originator.

6) The method of claim 5, wherein generating a response comprises:
determining to not insert at least part of the obtained query result into the response based on the classification of the originator.

[JustAnotherExaminer]

Then an example for instance ii)...

Say the examiner comes back and says... claim 6 has patentable subject matter.

You might draft these guys:

1) A method comprising:
receiving a query instruction from an originator;
determining a classification of the originator;
executing a query based on the query instruction;
obtaining a result of the executed query;
generating a response based on the obtained result and the classification of the originator;
determining to not insert at least part of the obtained query result into the response based on the classification of the originator.

2) The method of claim 1, further comprising:
determining the originator of the query instruction.

3) The method of claim 1, wherein determining the classification of the originator comprises:
transmitting originator information to one or more third-party classifier;
receiving one or more classifications from the one or more third-party classifier.

4) The method of claim 3, wherein determining the classification of the originator further comprises:
determining a classification of the originator based on the received one or more classifications.

5) The method of claim 4, wherein:
the determined classification is determined based on an occurrence rate of a first classification within the one or more classifications.

6) The method of claim 1, wherein generating a response comprises:
determining to insert at least part of the obtained query result into the response based on the classification of the originator.

7) The method of claim 1, further comprising:
transmitting the response to the originator.

The method of claim 1, wherein the classification of the originator is one of the following: friend, foe, coworker, employee, management, peon, citizen.

9) The method of claim 1, wherein a query instruction comprises at least one of the following: a SQL Select statement, a SQL Where statement, a SQL From statement.

[minntabo]

Hey JustAnExaminer,

Thanks for the detailed post.  I was an examiner myself for 2 years.  I'm now on the "dark side," as they like to refer to it at the PTO. 

Regarding me claims drafting scenario, I was actually looking for how I can minimize the number of claims to a SINGLE while accommodating all of the different mix and match scenarios in the stimulus.  Reason being is to save money (fewer claims = less $ for the client, especially fewer independents).  I'm not worried or focused on what's patentable or what the prior art teaches.  I'm looking for more of an engineering approach to broadly claim all of the scenarios of the stimulus, while limiting the number of claims.  Sorry for repeating myself.

[Yak]

I'm not worried or focused on what's patentable or what the prior art teaches. 

I don't mean to be thick here, but can you properly draft claims in this environment?  Or are you asking this question as more of a mental exercise?

[khazzah]

I'm not worried or focused on what's patentable or what the prior art teaches. 

I don't mean to be thick here, but can you properly draft claims in this environment?  Or are you asking this question as more of a mental exercise?

I took OP's question to be a hypo ... he did say "I've been practicing drafting claims." I think he's looking for a paradigm or approach about how to structure the claims, and not about how to express the individual elements.

[minntabo]

I'm not worried or focused on what's patentable or what the prior art teaches. 

I don't mean to be thick here, but can you properly draft claims in this environment?  Or are you asking this question as more of a mental exercise?

I took OP's question to be a hypo ... he did say "I've been practicing drafting claims." I think he's looking for a paradigm or approach about how to structure the claims, and not about how to express the individual elements.

Yes, Karen, that is what I'm looking for.  Anyone else have suggestions regarding my claim set?