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[Isaac]

This one's really hard to follow and seems to be a bit fast and loose with 112 6th paragraph.

What do you see as the 112 6th issue?   I didn't spot any foul play.

6,966,462

1. A glove for personal protection or entertainment, which is comprised of:

a. a single piece of material;

wherein the single piece has a top surface and a bottom surface;

wherein the top surface and the bottom surface are a connected piece;

b. a hollow section of predetermined diameter is placed between the top surface and the bottom surface;

wherein a person's hand fits within the hollow section;

c. a means to fasten the device to the person's hand;

d. a cavity;

wherein the cavity is of a predetermined dimensions to house a canister of predetermined size;

e. a means of access to the canister;

wherein the means of access to the cavity has a cover;

f. a triggering mechanism;

wherein the triggering mechanism has a first end and a second end and allows the release of the contents of the canister through an aperture through mechanical linkage between the triggering mechanism and the canister;

wherein a channel within the device between the top surface and bottom surface provides a means to protect the triggering mechanism;

g. an aperture;

wherein the canister is placed in the cavity on the top surface of the device;

wherein the opening in the canister aligns with the aperture of the device aperture to allow the discharge of the contents of the canister.

2. The means to fasten the device as described in claim 1 is a piece of material with a hook and loop assembly which is threaded through a buckle.

3. The means to fasten the device as described in claim 1 is a snap and button.

4. The triggering mechanism as described in claim 1 is a wire.

5. The triggering mechanism as described in claim 1 is a balloon.

6. The triggering mechanism as described in claim 1 is a radio frequency.


hmmmm.... regarding dependent claim 6, the "radio frequency"   "has a first and second end"?  

A radio signal might have a start and a finishing time.  What does the specification say first and second end means with respect to a radio frequency.

I'm not enamored with the method of expressing the dependency for the dependent claims.   Arguably the dependent claims only claim parts of structure cited in claim 1 rather further limiting claim 1.

[Bill Guess]

Here's a decent claim written by a self filing inventor which, by the way, just survived a motion for summary judgement of non-infringement by her exclusive licensee who tried to side step her claim.

1. An ice cream scoop comprising:

a bowl shaped section having a concave front surface forming a rim at the highest point of said concave front surface rounding outward forming a back surface and a handle between 5 inches and 8 inches in length extending from said front and back surfaces of said bowl shaped section in the same direction from one side of said bowl shaped section forming a hollow tunnel interior throughout said handle and said bowl shaped section forming an opening between 4 inches and 8 inches in circumference at the end of said handle opposite said bowl shaped section whereby said ice cream scoop can be filled with warm tap water.

Mrs. Virkler inventor of the above ice cream scoop wrote and filed her own patent application.  The examiner first rejected her only claim.  She then, without amending the claim, pursuaded the examiner to allow it.  Which he did.  Her licensee decided to design around her claim and start selling ice cream scoops with minor changes that did not literally infringe, though in the district court's wisdom, the acused device did not evade the DOE with regards to infringement.  Argument based estoppel appearantly didn't hold up with this judge.   Very good.  Of course this thing isn't over yet.  I'm pulling for Mrs. Virkler.

Lois M. Virkler v. Herbert Interprises Inc.


Bill

[JimIvey]

Just a minor point about posts in these forums: if you're logged in, you can modify your prior posts to correct errors.  There should be a "modify" link at the top right of your posts.

Just thought you'd like to know....

p.s. RE follow up in the above post: No problem!  You can also delete your own posts too.

[Bill Guess]

"A radio signal might have a start and a finishing time.  What does the specification say first and second end means with respect to a radio frequency."

It doesn't.

There is no reference in the specification to "radio frequency"  only to a "radio frequency circuit"  Here's the only sentence that contain the words radio or frequency:

"The triggering mechanism 25 may be a trip wire with mechanical linkage, a small balloon with appropriate mechanical linkage, or a radio frequency circuit. "

That's it.

OK you've got a canister of mace strapped to your wrist and a rapist has you by the throat and you need to blast this fiend in the face with "habenero death".  How does a "radio frequency circuit" fire the mace.     This claim is not enabled.  The rest of them suck also.

Bill

[Bill Guess]

MR. Ivy says relative to Ron's "board" claim disaster:

"Sure, he could have used something other than "board," but I think this was an unfortunate result in litigation. "

I, on the other hand, think that the litigation was the unfortunate result of poor claim construction.

Robert Frost said:  "Good fences make good neighbors."
The same can surely be said for patent claims.

James can you tell me how to use those cute quote boxes?

Bill

[Bill Guess]

6,966,462   Why is the 6th paragraph of 112 fouled by this claim?

1. A glove for personal protection or entertainment, which is comprised of:  

a. a single piece of material;  

wherein the single piece has a top surface and a bottom surface;  

wherein the top surface and the bottom surface are a connected piece;  

b. a hollow section of predetermined diameter is placed between the top surface and the bottom surface;  

wherein a person's hand fits within the hollow section;  

c. a means to fasten the device to the person's hand;  

d. a cavity;  

wherein the cavity is of a predetermined dimensions to house a canister of predetermined size;  

e. a means of access to the canister;  

wherein the means of access to the cavity has a cover;  

f. a triggering mechanism;  

wherein the triggering mechanism has a first end and a second end and allows the release of the contents of the canister through an aperture through mechanical linkage between the triggering mechanism and the canister;  

wherein a channel within the device between the top surface and bottom surface provides a means to protect the triggering mechanism;  

g. an aperture;  

wherein the canister is placed in the cavity on the top surface of the device;  

wherein the opening in the canister aligns with the aperture of the device aperture to allow the discharge of the contents of the canister.  

2. The means to fasten the device as described in claim 1 is a piece of material with a hook and loop assembly which is threaded through a buckle.  

3. The means to fasten the device as described in claim 1 is a snap and button.  

4. The triggering mechanism as described in claim 1 is a wire.  

5. The triggering mechanism as described in claim 1 is a balloon.  

6. The triggering mechanism as described in claim 1 is a radio frequency.  


The above claim never uses the standard (and proper)  "means for"  rather means "of" and means "to"

of....... relates to the past
to.......relates to the future


for......relates to purpose and is indeed proper preposition for a means plus function claim element.

no proper means clause uses the prepositions: "of" or "to".

Bill

[Bill Guess]

Here's a claim where the inventor's patent was perforated with a dysfunctional means-plus-function claim element.

Shelly Cole invents a training brief that featured perforations along the outside of the legs to the waist.  This thing was like a disposable diaper except  they went on like briefs, hence "training briefs".  And in the even of a ooops the sides could be ripped apart and the brief taken off like a diaper.  Brilliant.  Except for one thing, this claim:

1. A disposable training brief comprising, in combination:

outer impermeable layer means;

first absorbent layer means, including a first relatively thin outer absorbent layer and a first relatively thin inner absorbent layer, substantially coextensive with the outer impermeable layer;

second absorbent layer means including a relatively thick absorbent layer secured to the first absorbent layer means and disposed between the first outer absorbent layer and the first inner absorbent layer for providing a relatively highly absorbent layer;

waist band means for securing the training brief to a user;

leg band means through which the user's legs extend;

perforation means ( ) extending from the leg band means to the waist band means through the outer impermeable layer means for tearing the outer impermeable layer means for removing the training brief in case of an accident by the user, and

side zones on the outer impermeable layer means adjacent to the perforation means at which the first absorbent layer means terminates.

In the above claim "perforation means" spelled disaster.  In standard form it says "means for perforating", that's stupid, hell that would be a tatto machine.  Should have been "means for allowing a human to rip apart with moderate, laterally oposing force, the sides of junior's brief" or something like that.


In a patent claim the word "means" is like a six shooter.  Dont pull it unless you mean it, pardner, cause you are liable to get yore inventor's patent shot dead.   "Perforations" absent the word "means" would probably have been as effective as the pro se lady's ice cream scoop claim, with the measured circumference deminsions,  relative to the DOE.   Means plus function elements must be done so without including structure.

Cole v. Kimberly Clark........tragic......

Bill

[Isaac]

I disagree with the discussion concerning "means".  Invoking 112 6th paragraph is neither good nor bad as long as you as the practitioner control its use rather setting up a situation where the court does it or refuses to do it contrary to your expectations.


If you want to use the provisions of 35 USC 112 6th, then a good strategy is to use "means for" or "step for".  If you don't want it invoked, a starting point is to avoid using the keying words although avoiding them is not dispositive.
Absent a use the trigger words, the court will apply 112 6th if the claim cites an element using functional language without citing sufficient structure.  I don't know what side of the line
"perforating means" falls on, but if the practitioner knows, then where is the problem?

For example there is no difference between "a circuit comprising x, y, z" and a circuit means comprising x, y, z" if x, y, and z describe the structure of the circuit.

[listenup77]

I have a basic question about claims.
Is it a dependent claim when, it refers the the original claim 1? If so, an independent claim would be when it doesn't refer to any prior mentioned claims?
Also, lets say, if claim 3 refers to claim 2 and claim 2 refers to claim 1, is this an example of an A+B+C style claim? And is A+B, A+C, A+D, etc. is an example of:
Claim 2 referring to claim 1, claim 3 referring to claim 1, claim 4 referring to claim 1, etc.
Please help me understand this. Thanks.

Miguel

[Isaac]

Miguel, I think you've got the concept of claim depencies exactly correct.

[Bill Guess]

To write "perforating means" in a diaper claim to me is like writing "sugar means" in a sweetened beverage claim.  It sould be either --an amount of sugar--    or --sweetening means--    or better still --means for sweetening--.  If the drafter writes the standard  "means for" preceeding the functional gerund he or she is forced to state the function more directly rather than use the function, or in this case the structure, as an adjective preceeding the word "means".  Which in Ms. Cole's case ended in disaster.

"means" invoked (though not always) in this case the 6th paragraph and perforation provided the specific structure.  This is at odds with the specific language of the statute.  The accused device used a taped connection along the lateral seams.

Bill

[Isaac]

I disagree that the cited use is contrary to the statute.  First, the statute is written in permissive language and second, the statute does not say that the language "means for" invokes the 6th paragraph.  The trigger described in the statute is functional language without structure.

I agree that a "sugar means" is pretty silly, but a "sweetening means" may or may not be silly.   But despite being silly, "sugar means" is not contrary to the statute.

The court interpretation is that "means for" presumptively invokes 112 6th paragraph.  The presumption can be overcome by citing the required structure.

[listenup77]

Thanks Isaac, I guess I'm no longer a "Newbie", huh. I have learned tons about patents in such a short time (atleast only the surface). I thank everyone here who gives of their valuable time to keep this forum legit and legally sound.

Miguel