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[Joseph Liu]

Hi, every body

Here I raise another question again and thanks to any one in advance who shares ideas with me.

If a compoent is drafted in a transformed Markush-type claim and it lacks of the term "or" due to typographical errors. Thus it reads as follows:

"....... wherein A is X, Y, Z."
Is this lack of "or" an acceptable omission in present patent practice, or it is an curable or incurable defect??

Thanx in advance again to whom shares idea with me.

Joseph

[Jonathan]

My opinion: You will just get a section 112, 2nd paragraph rejection as to the claim being indefinite. That is, how can A be X, Y and Z all at the same time?

It is a curable defect my merely amending the claim to insert --or--.

[JimIvey]

I think Jonathan's right, but with this clarification.  It's curable during prosecution -- before issue or during prosecution of a reissue.

Regards.

[Joseph Liu]

Thank you very much to Jonathan and again to JimIvey, and I am sorry for not clearly elaborate my question.  The case is regarding a patent being issued for more than 2 years.

In this condition, even this lack is obviously an typographical error (and the patentee can also proves it indeed is an typographical error), but it is not incurable. Is this due to the reason that any correction of it definitely involves the change of claim scope and thus that this kind of correction won't be accepted by USPTO according to MPEP?

If yes, can we challenge this claim by claiming that it is indefinite because this claim means both "A is X, Y, and Z" and "A is X, Y or Z" and also that it lacks utility because A is X, Y, and Z does not exist or that it is not enabled because spec doesn’t teach how to make an “A is X, Y, and Z”???

Thanks again to any one for clarifying this problem.

Regards,

Joseph



Is this correct???  

Regards,

Joseph

[Isaac]

"Not incurable" means curable.

[Joseph Liu]

Sorry !! an typographical error!! It's "incurable" instead of "not incurable" .
Thank you, Issac!!

[JimIvey]

... any correction of it definitely involves the change of claim scope and thus that this kind of correction won't be accepted by USPTO according to MPEP?

From what little I know of this hypothetical, the error seems to be a clear clerical error and, assuming the specification makes it fairly clear what the claim(s) meant to recite, it should be curable -- even beyond 2 years.  The 2-year limit is for broadening claims.

If yes, can we challenge this claim by claiming that it is indefinite because this claim means both "A is X, Y, and Z" and "A is X, Y or Z" and also that it lacks utility because A is X, Y, and Z does not exist or that it is not enabled because spec doesn’t teach how to make an “A is X, Y, and Z”???

Of course, you can challenge just about anything.  By "curable" I don't mean that successful cure is guaranteed if attempted.  "Curable" means that the PTO has the ability to reissue the patent corrected but they may also have the ability to refuse to do so.  And, you can argue in court after reissue that the PTO overreached its authority by allowing broadening of a claim in reissue more than 2 years post issue.  There are many things you can argue in court.  That's one of the reasons litigation is so expensive.

Of course, saying you can argue things in court does not mean that your argument is necessarily a persuasive one.

Regards.

[Joseph Liu]

Thank you very much for comments from all of you and for helping me to understand more.

The condition for this problem is that this defect probably can not be corrected under 35 USC 255 due this error involves the scope of claim, but that the patentee can try to apply for an reissue to correct such error.  Is my thinking right?

Regards,  
 

[Isaac]

Thank you very much for comments from all of you and for helping me to understand more.

The condition for this problem is that this defect probably can not be corrected under 35 USC 255 due this error involves the scope of claim, but that the patentee can try to apply for an reissue to correct such error.  Is my thinking right?

Regards,  
  
 

That's not how I read 35 USC 255.  Since the claim was probably examined as if the word "or" were present, correcting the error would not require re-examination or introduce new matter.

Reissue might have the undesired side-effect of creating intervening rights because the claim as written has no scope.

[Joseph Liu]

Thank you very much, Isaac, regarding 35 usc 255, I think I've mistaken its meaning.   Thanks again for your correction.
Now, I think I have a more clear idea regarding this case.

With best regards,