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Author Topic: Is it legal for a phrase “each of zero or more logic blocks”?  (Read 1063 times)

Weng Tianxiang

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Hi,

I have to define word “logic blocks”, but they may be absent.

Is it legal for a phrase “each of zero or more logic blocks”?

Thank you.
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smgsmc

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Hi,

I have to define word “logic blocks”, but they may be absent.

Is it legal for a phrase “each of zero or more logic blocks”?

Thank you.
I won't address the issue of whether it's "legal" to do so, but I will address the issue of whether it's wise to do so.  The answer is no.

In the specification, you should describe embodiments with no logic blocks and embodiments with one or more logic blocks.  In the claims, your independent claims should not include logic blocks.  Then include logic blocks in dependent claims.  That's how I would do it.
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bluerogue

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Legally? Maybe. 

Smart? No.

Smgsmc is right.  His solution is the way to go.  "zero or more logic blocks" would be given no patentable weight in a claim as the BRI of that includes no logic blocks, which renders that phrase useless for getting around any prior art or limiting your claim.
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The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

Weng Tianxiang

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Hi smgsmc and bluerogue,

Thank you for your response that forces me to do more search.

I used Google to search the "zero or more" and found several interesting discussions:

1. How to claim "zero to some" amounts  (Read 8322 times!!!)
« on: 11-30-12 at 11:09 pm »

http://www.intelproplaw.com/ip_forum/index.php?topic=23882.0.

2. Can I use "none or at least one of" in claim language?

https://www.avvo.com/legal-answers/can-i-use--none-or-at-least-one-of--in-claim-langu-1958960.html

"Posted on Nov 14, 2014
The claim construction "none or at least one of" has been used in at least one claim of 11 issued U.S. utility patents since 1992. So the construction has been used successfully in getting through prosecution. Although use in only 11 patents is not that many. Some examiners do not like "or" and sometimes they may be correct, if such use renders the claim indefinite. Also keep in mind, that just because you get a claim by an examiner, does not mean the claim will stand up to future litigation.

Critically such claim language must be supported by your choice of language in the specification (e.g. Detailed Description of the Invention). If you explain what you mean by this claim language in your specification that may be sufficient to justify your proposed claim construction.

Some of the other responding attorney may offer a better construction of general claim language for what you are trying to accomplish."

The first one is very useful to me!

My situation is different from what it is in first post: How to claim "zero to some" amounts  (Read 8322 times!!!).

I think I may have a good solution, because mine is method claims:

1. Method..., comprising:
...
doing A with one or more X;
doing A with one or more Y if the one or more Y exist; <-- is it acceptable from point view of an Examiner?
..
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MYK

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I think I may have a good solution, because mine is method claims:

1. Method..., comprising:
...
doing A with one or more X;
doing A with one or more Y if the one or more Y exist; <-- is it acceptable from point view of an Examiner?
..
People have commented here in the past that "if" is a bad word to use in claims.  "When ... then" is apparently the preferred phrasing.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

smgsmc

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I think I may have a good solution, because mine is method claims:

1. Method..., comprising:
...
doing A with one or more X;
doing A with one or more Y if the one or more Y exist; <-- is it acceptable from point view of an Examiner?
..
Yes, many Examiners don't care for an "if" construction, and will give it no patentable weight.  That can be fixed with other wording.  Putting that issue aside for now ... what is your intent?  In your hypo claim as written:

A is always done with one or more X, regardless of whether one or more Y exist;
A is done again with one or more Y, if one or more Y exist.

Is that what you mean? 

Or do you mean:

If one or more Y do not exist, do A with one or more X;
If one or Y do exist, do A with one or more Y [instead of with one or more X] ?

Or do you mean something else?



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Weng Tianxiang

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Hi smgsmc,

What I mean is:
A is always done with one or more X, regardless of whether one or more Y exist;
A is done again with one or more Y, if one or more Y exist.

Here is my original claim 1:

1. A method ..., comprising:

...
Doing A with one or more X and zero or more Y;

...

Zero is possible so that it must be included in the claim.

Claim "Doing A with one or more X and one or more Y;" would greatly reduce the coverage!

I am reading "Beware of Conditional Limitations when Drafting Patent Claims"

http://www.ipwatchdog.com/2017/08/28/beware-conditional-limitations-when-drafting-patent-claims/id=87242/

MYK,
I really don't understand what is the difference between:
doing A with one or more Y if the one or more Y exist;
doing A with one or more Y when there is the one or more Y exist;

Now I don't know what it is the best way to do.

Thank you.
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Weng Tianxiang

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Hi blueroger,

"Smgsmc is right.  His solution is the way to go.  "zero or more logic blocks" would be given no patentable weight in a claim as the BRI of that includes no logic blocks, which renders that phrase useless for getting around any prior art or limiting your claim."

1. My situation is that no matter "zero or more logic blocks" exists or not, the novelty of the method is guaranteed.

2. "zero or more logic blocks" is only used to cover the situation when zero situation is permitted.

So I am trying to write:

1. Method..., comprising:
...
doing A with one or more X;
doing A with one or more Y if the one or more Y exist; <-- this step has no impact on patenability!
..

Thank you.
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smgsmc

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Hi blueroger,

"Smgsmc is right.  His solution is the way to go.  "zero or more logic blocks" would be given no patentable weight in a claim as the BRI of that includes no logic blocks, which renders that phrase useless for getting around any prior art or limiting your claim."

1. My situation is that no matter "zero or more logic blocks" exists or not, the novelty of the method is guaranteed.

2. "zero or more logic blocks" is only used to cover the situation when zero situation is permitted.

So I am trying to write:

1. Method..., comprising:
...
doing A with one or more X;
doing A with one or more Y if the one or more Y exist; <-- this step has no impact on patenability!
..

Thank you.


If you can include "one or more Y" in a dependent claim, then go that route instead.  That is, if A is always done by one or more X, and is patentable if one or more Y do not exist, and if A is done again if one or more Y do exist, then claim as follows:

1.  A method comprising:
doing A with one or more X;
....


2.  The method of claim 1, further comprising:
doing A with one or more Y;
....


If the real scenario is more convoluted, you may need two independent claims:  one that does not include Y and one that includes one or more Y.  You might end up with a restriction requirement and have to file a divisional, but that might be preferable into being dragged into a conditional morass during prosecution and litigation.


Sometimes conditional claiming is unavoidable, but check whether conditional claiming is avoidable in your instance.
« Last Edit: 05-19-18 at 04:28 pm by smgsmc »
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Weng Tianxiang

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Hi smgsmc,

I would like to accept your advice and use the method with 2 divided claims instead of 1 claim.

But here is another problem that may arise and I would like to clarify:

The claim 1 must be executable.

In my situation the divided claim 1 cover only one special situation in billion situations, and both claims 1 and 2 cover all relevant situations.

The added divided claim 2 would expand the range from claim 1 dramatically actually, not limit the range of claim 1?

Is there any new problem?

Thank you.
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Weng Tianxiang

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Hi smgsmc,

I think that your claim construction and mine still have a big difference:

A. Mine:
1. Method..., comprising:
...
doing A with one or more X;
doing A with one or more Y if the one or more Y exist;
...

2. The method of claim 1 further comprising:
...

B. Yours:
1.  A method comprising:
doing A with one or more X;
....


2.  The method of claim 1, further comprising:
doing A with one or more Y;
....


C. The claim set equivalent to mine should be:
1.  A method comprising:
doing A with one or more X;
....


2.  The method of claim 1, further comprising:
doing A with one or more Y;
....

3. The method of claims 1 and 2 further comprising: <-- introduction of a multiple dependent claim
...

4. The method of claim 3, further comprising:

I will try to determine if your construction is valid for me.

Thank.
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Weng Tianxiang

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Hi blueroger,

Your following comment is very valuable to me:
""zero or more logic blocks" would be given no patentable weight in a claim as the BRI of that includes no logic blocks, which renders that phrase useless for getting around any prior art or limiting your claim."

Here I have another option to fully express my claims and hope to know if following "when..." has patentable weight?

1. A method..., comprising:
...
doing A with one or more X;
doing A with one or more Y when the one or more Y exists; <-- patentable weight?
...

Thank you.
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mersenne

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A is always done with one or more X, regardless of whether one or more Y exist;
A is done again with one or more Y, if one or more Y exist.

If you really mean A is done twice (once by Xs, and a second time by Ys) then you should probably say that:

Quote
A method comprising:
doing A a first time using at least one X; and
doing A a second time using at least one Y

For your "zero or more Y" issue, if you mean that you do A once with Xs, and then if you have any Ys, you do A again, you could write it as an independent/dependent pair:

Quote
1. A method comprising:
doing A a first time using at least one X.

2. The method of claim 1, comprising:
when at least one Y is available, doing A a second time using the at least one Y.

Note that methods should have at least two steps (which should be called "operations," last I heard).  So the independent claim probably needs at least one other step.
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Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

smgsmc

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Hi smgsmc,

I would like to accept your advice and use the method with 2 divided claims instead of 1 claim.

But here is another problem that may arise and I would like to clarify:

The claim 1 must be executable.

In my situation the divided claim 1 cover only one special situation in billion situations, and both claims 1 and 2 cover all relevant situations.

The added divided claim 2 would expand the range from claim 1 dramatically actually, not limit the range of claim 1?

Is there any new problem?

Thank you.
(1) You are confusing claim scope with most probable commercial embodiment. 

(2) From a mathematical perspective, a dependent claim is a proper subset of an independent claim; therefore, a dependent claim always has a narrower scope than the independent claim.

(3) If there is a particular embodiment (having further limitations in addition to those in the independent claim) that you think will be the one that will be commercially marketed, then include those further limitations in a dependent claim.

(4) It is the entire claim set that protects your invention.

(5) As an analogy, consider claims for a smartphone.  The independent claim should not include the limitation of a camera, because it is not a necessary feature, and you want a copycat unit without a camera [should someone care to produce such a unit] to infringe.  A dependent claim should include the further limitation of a camera.  The fact that all commercial smartphones will probably have cameras [and a smartphone without a camera wouldn't sell very well these days; but that probably was not clear when they were first introduced]  is irrelevant to this claim strategy.
« Last Edit: 05-20-18 at 07:36 am by smgsmc »
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smgsmc

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Hi smgsmc,

I think that your claim construction and mine still have a big difference:

A. Mine:
1. Method..., comprising:
...
doing A with one or more X;
doing A with one or more Y if the one or more Y exist;
...

2. The method of claim 1 further comprising:
...

B. Yours:
1.  A method comprising:
doing A with one or more X;
....


2.  The method of claim 1, further comprising:
doing A with one or more Y;
....


C. The claim set equivalent to mine should be:
1.  A method comprising:
doing A with one or more X;
....


2.  The method of claim 1, further comprising:
doing A with one or more Y;
....

3. The method of claims 1 and 2 further comprising: <-- introduction of a multiple dependent claim
...

4. The method of claim 3, further comprising:

I will try to determine if your construction is valid for me.

Thank.
In the US, you should avoid multiple dependent claims [in the EPO, you should embrace them].  Here's one way to go:

1.  A method comprising:
doing A with one or more X;
....

2.  The method of claim 1, further comprising:
doing B;
....

3.  The method of claim 2, further comprising:
doing C;
....

4.  The method of claim 1, further comprising:
doing A with one or more Y;
....

5.  The method of claim 4, further comprising:
doing B;
....

6.  The method of claim 5, further comprising:
doing C;
....
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