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[SteveO]

So, here is a question on claims drafting.  I’m drafting an electical patent.

1.  A device, comprising:
   an electrothing;  and
   a magnetothing;
   wherein, etc….

Now I have several dependent claims referring to the electrothing and the magnetothing.

Next, I get to a claim where my device has, let’s say, an additional electrothing which is similar too, but somehow different from, the first electrothing.  (Imagine, for example, that an electrothing is a transistor, and now I need two different types of transistors, maybe one BJT, one MOS – but I do not want to specify exactly which types.)

So, I could claim:

4.  The device of claim 1, further comprising:
   a second electrothing which does its electrothinging according to a different thinging principle than the electrothing.

The problem I have with that is, somehow it seems to read less than clear, having a simple “electrothing” and a “second electrothing.”

So, here is what I want to do:

4.  The device of claim 1, further comprising:
   a second electrothing which in addition to the electrothing, now referred to as the first electrothing, wherein:
the second electrothing does its electrothinging according to a different thinging principle than the first electrothing.

In other words, within the claim I want to relabel the “electrothing” as the “first electrothing.”

My question is, does anyone see any problems with this?

Of course, I could call the “electrothing” the “first electrothing” right from the outset, in claim 1.  But then, that reads confusing, because the reader is left wondering:  Why is this guy claiming a first electrothing, when I don’t see a second electrothing anywhere in the claim?

Any comments or suggestions?  Would what I want to do be formally legal?  I think it is, but I'm open to comments to the contrary.  Even if legal, would it be helpful or problematic?

[bleedingpen]

you are about to create a mess

[SteveO]

A concise and pithy reply.  There is much to be said for brevity.  But can you be more specific as to why you think it would be a "mess"?

[MYK]

"The circuit of Claim 1 where the electrothing is a discombobulating electrothing, further comprising a recombobulating electrothing."

[JustAnotherExaminer]

1.  A device, comprising:
   a first electrothing;  and
   a magnetothing;
   wherein, etc….

Boom, done.

[SteveO]

>> A device, comprising:
>>    a first electrothing;  and
>>    a magnetothing;
>>    wherein, etc….

Yes, technically, "done."  But as an examiner or other interested party, I read that, an my immediate thought is:  "Okay, 'first electrothing,' so there's got to be a reference some place in this claim to a second electrothing."  And when I don't see that reference to the "second electrothing" -- it doesn't show up until dependent claim 12, or whatever -- I'm scratching my head and I'm confused.  I'm trying to avoid that problem.

Moreoever, there's another layer to this.  Say the "device" is a cell phone.  (I'm the lucky inventor of cell phones!)  So my first 10 claims are all directed to the inner workings of my cell phone.  But eventually, I want to have claims referring to how the cell phone communicates with a second cell phone.  Same issue.  Do I:
(i) refer to the cell phone from the outset as a "first cell phone" (seems odd to me); or do I...
(ii) wait till I get to claim 12, and say, "The cell phone of claim 1, now referred to as a "first cell phone", wherein the first cell phone is configured to form a communications link with a second cell phone, etc."?

Choice (ii) seems cleaner to me.

[JustAnotherExaminer]

>> A device, comprising:
>>    a first electrothing;  and
>>    a magnetothing;
>>    wherein, etc….

Yes, technically, "done."  But as an examiner or other interested party, I read that, an my immediate thought is:  "Okay, 'first electrothing,' so there's got to be a reference some place in this claim to a second electrothing."  And when I don't see that reference to the "second electrothing" -- it doesn't show up until dependent claim 12, or whatever -- I'm scratching my head and I'm confused.  I'm trying to avoid that problem.

Moreoever, there's another layer to this.  Say the "device" is a cell phone.  (I'm the lucky inventor of cell phones!)  So my first 10 claims are all directed to the inner workings of my cell phone.  But eventually, I want to have claims referring to how the cell phone communicates with a second cell phone.  Same issue.  Do I:
(i) refer to the cell phone from the outset as a "first cell phone" (seems odd to me); or do I...
(ii) wait till I get to claim 12, and say, "The cell phone of claim 1, now referred to as a "first cell phone", wherein the first cell phone is configured to form a communications link with a second cell phone, etc."?

Choice (ii) seems cleaner to me.

You know I'm an examiner, right?   You don't want to refer to grammar within the claim.  With your choice (ii) a potential infringer now doesn't know whether he has to refer to his cell phone as "first cell phone" to be infringing. (ie, you get a 112 2nd rejection)


It's common to do any of the following:
i) first mention: "a first cell phone", "a second cell phone"; subsequent mention: "the/said first cell phone", "the/said second cell phone",
ii) first mention: "a cell phone", "a second cell phone"; subsequent mention: "the/said cell phone", "the/said second cell phone",
iii) first mention: "a cell phone", "an another cell phone"; subsequent mention: "the/said cell phone", "the/said another cell phone".

[SteveO]

Okay, thanks for the feedback, one and all.

[Evil In House Counsel]

"The circuit of Claim 1 where the electrothing is a discombobulating electrothing, further comprising a recombobulating electrothing."

This is how I would do it. Renaming an element in a dependent is just creating a huge mess for no good reason.

[smgsmc]

"The circuit of Claim 1 where the electrothing is a discombobulating electrothing, further comprising a recombobulating electrothing."

This is how I would do it. Renaming an element in a dependent is just creating a huge mess for no good reason.

I asked exactly the same question several years ago.  I think the title of the post was "Can you have a 'first' without a 'second' in the claim?"  The search function doesn't appear to be working, so I can't pull up the old post.  In our sister forum (iptalk.pro) a similar question was also asked recently  (how do you get from one widget in an independent claim to a plurality of widgets in a dependent claim, in which the widgets are all identical).  Here's my take.

(1) Isn't the construction  "The circuit of Claim 1 where the electrothing is a discombobulating electrothing, further comprising a recombobulating electrothing." tantamount to "renaming" the "electrothing" of claim 1 to a "discombobulating electrothing" in claim 2?

(2)  But, more to the point, what if the two "electrothings" are identical?  That is, there is not a "discombobulating electrothing" and a "recombobulating electrothing", just simply a "first electrothing" and an identical "second electrothing"?

(3)  Anyway, I see no problem with:

Claim 1

An apparatus comprising:

an electrothing;
...; and
....

Claim 2

The apparatus of claim 1, wherein the electrothing is a first electrothing in a plurality of electrothings, further comprising:

a second electrothing .....

This construction was recommended by another forum member.  After trying out many different claim constructions, I've standardized on this one, because I think it's clearer than alternatives.   I've not had any 112 rejections for it.  There were some people who took exception to reciting a "first thing" in claim 1, but a "second thing" was deferred to claim 2 and not recited in claim 1.

If "discombobulating" and "recombobulating" are OK, I don't see why "first" and "second" would not be OK.