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[dab2d]

I saw someone proposing this claim language... To me it is odd and cumbersome.

Additionally they tried to do another one but stating method of "claims 3, 4, or 5". Is that okay? I think I have heard in the past that it is okay, but I don't like it. What about the multiple dependent/ claiming the alternative variety. 

[JimIvey]

A while back, we had a lengthy discussion of that in here (anyone willing to dig up the link?).  I think the consensus was that no one liked it but no one could explain why it was wrong.  Many, many years ago, I tried that and the supervising partner said "You can't do that."  I haven't tried it since.

I think the multiple dependent form might actually be useful if you need an extra few minutes to get a filing date.  I think you can avoid the multiple dependent claim fees by filing a preliminary amendment with the missing parts, but don't quote me on that -- others here know the rules much better than I do.

FWIW, if an examiner complains, it's easy to fix by amendment.

Regards.

[patentatt]

A while back, we had a lengthy discussion of that in here (anyone willing to dig up the link?).  I think the consensus was that no one liked it but no one could explain why it was wrong.  Many, many years ago, I tried that and the supervising partner said "You can't do that."  I haven't tried it since.

I don't like those because courts/PTO may later find them to violate 112, fourth.  Every dependent claim must include every limitation of the parent claim.  Claim 2 recites a method.  Claim 6 is not a method, it is an article of manufacture: the whole point of ~Beauregard claims is to remove them from the "process" category of 101.  For example, a method claim requires the infringer to actually perform the method steps, but a claim to a CD-ROM for the method can be infringed even if the method is never performed.  For that reason, claim 6 arguably does not include every limitation of claim 2, and therefore is invalid.  See the recent Supplemental Guidelines on 112 (specifically the part about 112, 4) in the Fed. Reg.

I remember hearing that the MPEP is inconsistent about these claims: one section says they are ok, another says not.  But I can't confirm or tell you the sections.

I think the multiple dependent form might actually be useful if you need an extra few minutes to get a filing date.  I think you can avoid the multiple dependent claim fees by filing a preliminary amendment with the missing parts, but don't quote me on that -- others here know the rules much better than I do.

I liked the multiple-dependent -> preliminary amendment route because it gives you a much broader disclosure while avoiding the additional claim fees.  We would routinely receive foreign applications with tons of
multiple dependent claims.  A coworker wanted to amend the spec directly.  I insisted that we leave the spec untouched and file a prelim - thereby preserving the broader scope of the original claims.  Ultimately, we called a name partner after hours and he agreed with me.

[JimIvey]

For that reason, claim 6 arguably does not include every limitation of claim 2, and therefore is invalid.  See the recent Supplemental Guidelines on 112 (specifically the part about 112, 4) in the Fed. Reg.

I think that's the most compelling argument I've heard to date.

What about this?

2.  A computer readable medium useful in connection with a computer and storing logic thereon that, when executed by the computer, causes the computer to ... preamble stuff ... by at least:
  performing method step 1;
  performing method step 2; and
  performing method step 3.

6.  A computer system comprising:
  one or more processors; and
  the computer readable medium of Claim 2 operatively coupled to the processors so as to enable execution of the logic  stored on the computer readable medium in the processors.

Regards.

[patentatt]

For that reason, claim 6 arguably does not include every limitation of claim 2, and therefore is invalid.  See the recent Supplemental Guidelines on 112 (specifically the part about 112, 4) in the Fed. Reg.

I think that's the most compelling argument I've heard to date.

What about this?

2.  A computer readable medium useful in connection with a computer and storing logic thereon that, when executed by the computer, causes the computer to ... preamble stuff ... by at least:
  performing method step 1;
  performing method step 2; and
  performing method step 3.

6.  A computer system comprising:
  one or more processors; and
  the computer readable medium of Claim 2 operatively coupled to the processors so as to enable execution of the logic  stored on the computer readable medium in the processors.

Regards.

I think that's fine - all of the limitations are physical limitations incorporated into the dependent claim.