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Author Topic: Limiting method claims with structural elements  (Read 221 times)

RolandS

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Limiting method claims with structural elements
« on: 11-20-17 at 08:56 pm »

Hello all together!

A method or process claim has to comprise at least one step in order to not be indefinite or improper.

If I have a claim like "A method for digging a hole using a shovel characterized in that the shovel comprises at least 1 metric ton of gold" it would be rejected as being indefinite or improper or both.

If I rearrange the elements and amend the claim to read "a method for digging a hole comprising at least one step of utilizing a shovel that comprises at least 1 metric ton of gold" it should be ok in view of Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992).

Can I now introduce further limits in the dependent claims without having to add further steps?

For instance if I claim "The method according to claim 1, characterized in that the shovel further comprises at least one metric ton of platinum"?

Thank you very much!
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Tobmapsatonmi

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Re: Limiting method claims with structural elements
« Reply #1 on: 11-21-17 at 12:35 pm »

It is common that dependent claims might only further define the composition or structure of elements recited in the independent claim, without introducing any additional steps.

I've never seen an objection to this.
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mersenne

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Re: Limiting method claims with structural elements
« Reply #2 on: 11-21-17 at 02:09 pm »

I agree with Tobmapsatonmi: if the independent claim is OK, then a dependent with no additional steps is probably OK.

FWIW, I was taught to always include at least two steps in a method (and also to not call them steps, but rather operations or something else).
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Mersenne Law
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Robert K S

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Re: Limiting method claims with structural elements
« Reply #3 on: 11-21-17 at 03:16 pm »

It is common that dependent claims might only further define the composition or structure of elements recited in the independent claim, without introducing any additional steps.

I've never seen an objection to this.

I had to take this issue to the PTAB.  The examiner's position was that a dependent claim adding a structural limitation to a method claim triggered a 112 fourth rejection as not properly limiting the method with a method step.  I cannot believe I actually had to appeal that.  Except that I can, because some examiners try to get away with all manner of impropriety if you let them.
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lazyexaminer

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Re: Limiting method claims with structural elements
« Reply #4 on: 11-21-17 at 03:25 pm »

FWIW, I was taught to always include at least two steps in a method (and also to not call them steps, but rather operations or something else).

I know the OP was just presenting a simple hypo, but to expand on this, the original claim language presented might be considered to invoke 112(f) as a step plus function. This may not be desirable since nobody knows how to deal with step plus function (just a slight exaggeration).

Additionally, since there is only one step presented in any of the claims, the claims might be considered non-enabled as "single step" type claims. I am assuming, without ever seeing this before, that an analysis analogous to single means claims would apply since the statute would seem to require a combination for both means and steps. Maybe adding a structure avoids this but I don't know. But it's an issue you may not want to deal with.

So, from mersenne's advice, if you don't use the word "step" you should avoid the issue of invoking at all (recent training has said not to use nonce words in place of step like we do for means as the CAFC never authorized that, but you never know what a court will say later), and if you use more than one step you will avoid the "single step" issue.
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Tobmapsatonmi

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Re: Limiting method claims with structural elements
« Reply #5 on: 11-21-17 at 04:19 pm »

How do you view a claim such as the below?  (It's a hypo but matches an existing granted claim)


1. A method for making a stent, comprising designing the stent to have a reduced adherence to biological tissue and to be effective in reducing occurrence of tissue adherence.

Oh, and here's the companion article claim:

10. A stent, comprising: a stent body comprising a design wherein adherence to biological tissue is reduced and the stent body is effective in reducing occurrence of tissue adherence.
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mersenne

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Re: Limiting method claims with structural elements
« Reply #6 on: 11-21-17 at 04:49 pm »

Claims like that make me embarrassed about my generally pro-patent outlook ("the system is valuable, the participants are generally intelligent and trying to make good decisions," etc.)

Those claims just state intentions or objectives, not how to achieve the objectives.  Is it a special material you use?  Or a special shape?  Then those should be in the claims.

Even if it's true that there is no prior art that suggests that tissue adherence to stents is a Bad Thing, I would have hoped that the examiner put up more of a fight.  (Please don't tell me these were allowed after appeal!)
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lazyexaminer

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Re: Limiting method claims with structural elements
« Reply #7 on: 11-21-17 at 05:04 pm »

Yes, I hate when you claim a result with no link to structure. It is hard to search for that but at the same time it is so broad. I worry about enablement of the full scope of the claim (does it cover anything that produces that result, even totally different designs than you've disclosed). I hope the spec is clear as to what "reduced" means--reduced from what? Does that make it indefinite? To what extent can I just argue that this result will be inherent in whatever stent I find? One stent surely has reduced adherence compared to another non-identical stent.

These are just things that popped into my head...none of these things are alone fatal, but there are a lot of questions. I wouldn't want to examine it, and as a patentee I wouldn't really want to assert it either.
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Tobmapsatonmi

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Re: Limiting method claims with structural elements
« Reply #8 on: 11-21-17 at 05:17 pm »

Thanks both.  As to lazy's comment about enablement, it's not enabled for anything so far as I can tell.  How do you reduce adherence? Welp, you just design the stent to have reduced adherence.  The whole spec is just a bunch of hand-waving. 

But I thought of it more because of the "single step" thing you were talking about.  In a "method for making" claim, the sole step is... to design the thing.  Also, at what step in the claim do you actually make the thing?  You don't.  The "making" never happens.  Just the one step of designing it.

To mersenne's final question: nope.  First action allowance by a primary who's been there churning out first action allowances on junk for waaaaaay too long.
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lazyexaminer

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Re: Limiting method claims with structural elements
« Reply #9 on: 11-21-17 at 05:41 pm »

Thanks both.  As to lazy's comment about enablement, it's not enabled for anything so far as I can tell.  How do you reduce adherence? Welp, you just design the stent to have reduced adherence.  The whole spec is just a bunch of hand-waving. 

But I thought of it more because of the "single step" thing you were talking about.  In a "method for making" claim, the sole step is... to design the thing.  Also, at what step in the claim do you actually make the thing?  You don't.  The "making" never happens.  Just the one step of designing it.

To mersenne's final question: nope.  First action allowance by a primary who's been there churning out first action allowances on junk for waaaaaay too long.

Yeah I basically just lumped the method and device claim together but you're right--design isn't making. Are we just claiming human thought and intent? If I think of a way to reduce adhesion did I just "design" and thus infringe? So add 101 problems too, to the method at least...

Yuck, back to examining some device claims with clear structural limitations...
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