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[wallflower]

Again, whether or not a device is patentable has nothing to do with the "claims" of prior art patent references, only what is disclosed in the descriptions and drawings of the patent(s), along with all other prior art refernces. Patentability has nothing to do with how the claims of prior art patents are crafted or written.

You gave the conditional statement: "The improvements are covered by the claims of the original patent...."  If that statement is true, no one will be able to patent those improvements.  

[john2006]

Wallflower wrote

"You gave the conditional statement: "The improvements are covered by the claims of the original patent...."  If that statement is true, no one will be able to patent those improvements".

My reply

That is simply not true Wallflower. You can have a valid patent that discloses a device that would infringe the claims of an earlier patent that has more broad claims.

Why would you think that it is not possible to patent a device that would infringe the claims of an earlier patent ? It has happened before and that is why people do infringement searches as well as patentability searches.

It is possible for an inventor to patent a device, and not even be able to use his or her own invention, if the device is covered by the more broad claims of an earlier patent.  

Sincerely,
John

[wallflower]

That is simply not true Wallflower. You can have a valid patent that discloses a device that would infringe the claims of an earlier patent that has more broad claims.

I believe what I said is true.  You said the "improvements are covered by the claims of the original patent."  That's very different from saying, "improvements of an invention covered by the claims of a patent."  It seems like you're referring to the latter.

[john2006]

Hi everyone,

Wallflower wrote

"I believe what I said is true.  You said the "improvements are covered by the claims of the original patent."  That's very different from saying, "improvements of an invention covered by the claims of a patent."  It seems like you're referring to the latter".

My reply

When I said the improvements would be covered by the claims of the original patent, I simply meant that if someone other than the inventor of the device disclosed in the original patent were to implement the new improvements, they would infringe the original patent.

Here is exactly what I said

"Let's say you have a patent with about 9 years left on it, and you find a non-obvious way to improve your product. The improvements are covered by the claims of the original patent, but you want to patent the new improvements so you can monopolize them for a period longer than 9 years".  

I thought it was clear that I was referring to the improvements of the "product" since I used that term in the previous sentence.

I am not sure I understand why my statement is unclear.

To clarify, you have a product protected by a  patent (say patent # 1), you make non-obvious and non-equivalent improvements to the product that would be protected by the claims of Patent #1, but you would like to get another patent (patent # 2) on the non-obvious and non-equivalent improvements, in order to extend the time limit of the protection (for the improvements only).

You seem to be saying that it would not be possible to obtain the second patent, and that is simply not true.

The second patent would only cover the improvements, but if the first patent will expire in 9 years, then the second patent takes over after that, to provide protection for the improvements, & only the improvements.

Sincerely,
John

[wallflower]

I am not sure I understand why my statement is unclear.

John, you don't see the difference between saying the "improvements are covered by the claims of the original patent" and  "improvements of an invention covered by the claims of the patent"?  From your last response, it is clear that the latter is what you meant.

You seem to be saying that it would not be possible to obtain the second patent, and that is simply not true.

I never said that.  Novel and nonobvious improvements of existing inventions are patentable.

[john2006]

Hi everyone,

Wallflower wrote

John, you don't see the difference between saying the "improvements are covered by the claims of the original patent" and  "improvements of an invention covered by the claims of the patent"?  From your last response, it is clear that the latter is what you meant.

My reply

Based on exactly what I said, I don't understand the confusion. You have taken what I said out of context. You are just quoting one section of one sentence.

Again, here is exactly what I said...

"Let's say you have a patent with about 9 years left on it, and you find a non-obvious way to improve your product. The improvements are covered by the claims of the original patent, but you want to patent the new improvements so you can monopolize them for a period longer than 9 years".  

Based on the two sentences above, I don't understand why it was not obvious that I was referring to improvements of the invention or product.

You used the term "claims" in both of your interpretations of my statement. I just wanted to point out that the claims of a prior art patent reference won't prevent a pending application from issuing as a patent, just becasue the device disclosed in the pending application would infringe the claims of the prior art patent reference. It seemed to me that this was what you were implying when you said the following ...

Wallflower wrote...

"You gave the conditional statement: "The improvements are covered by the claims of the original patent...."  If that statement is true, no one will be able to patent those improvements".

I'm just curious, what did you mean to imply with the statment quoted above ? I don't understand how you originally interpreted my two sentence statement, or the source of the confusion.


Sincerely,
John

[IPL61003]

"Let's say you have a patent with about 9 years left on it, and you find a non-obvious way to improve your product. The improvements are covered by the claims of the original patent, but you want to patent the new improvements so you can monopolize them for a period longer than 9 years".

Sorry I am a bit confused here.  

If for the new patent application, "[t]he improvements are covered by the claims of the original patent", then the "improvement(s)" in the new application would not seem to qualify as being "non-obvious", since they were anticipated in the original patent.  In other words, it would appear the new patent application would be denied.

Unless there is an exception or a more relaxed rule for "non-obvousness", that I am not aware of, which applies where the same inventors are involved.  I doubt it, though.  

Opinions, anyone?

Regards.

[Grammar Dawg]

Why is it that, whenever I find senseless bickering in these forums, Wallflower is never far away?

Sloppy words and sloppy grammar lead to pointless debates about he-said and she-said ... bla ... bla ... bla ...

Why do you debate a word having an ill-defined scope?
What is this word "cover" at the root of your debate?
Why are you debating what a claim covers?
Does this refer to the disclosure a claim represents?
Does this refer to the protection a claim represents?
It relates well to covering your head with an umbrella. But what does it mean when discussing infringement and patentability?

Why not use patent language in discussing patent concepts?

For example, one might discuss whether an item or activity appears to "infringe" the claim of a patent. One might also discuss whether the same item or activity appears to be novel and non-obvious in view of the same patent ... the entire patent ... even the claims. Yes, these are separate discussions.

Stop all your silly semantic monkey jibberish at once you children!

Wipe your tears Wallflower ... and yes ... I fully expect you to accuse me of hysteria and puffing the pipe as you have before when you have no substance left to offer.

Your Nemesis
Grammar Dawg

[john2006]

Hi everyone,

Grammar Dawg makes a good point.

when I said the the improvements are "covered" by the original patent, I just meant that the improvements are protected by the original patent claims, i.e., if someone other than the original patent owner were to make, use, or sell the improved version, they would infringe the claims of the original patent.

In the case I attempted to explain, the claims of the original patent do not make the improvements disclosed in the second patent application obvious because the claims simply do not disclose or suggest anything about the improvements.

For example, a "means for" claim can be worded broadly and "cover" i.e., protect, many different alternative mechanisms, but not really disclose anything about the alternative mechanisms that the claim protects. A "means for" engaging lever (a) with lever (b), could be a gear, a belt and pulley, a linkage, or just about anything.

Just because an improvement, modification, or alternative embodiment would infringe a claim, does not mean that the claim automatically renders the improvement or alternative embodiments obvious.

It is quite possible to obtain a patent on a device that would infringe the claims of an earlier more broad patent. The claims of the earlier patent would not prevent the later patent from issuing, but the owner of the earlier patent could prevent the owner of the later patent from using his or her own invention. Of course if the owner of the earlier and later patent are the same person, then this is not a problem.

Sincerely,
John

[Wiscagent]

John2006 –

I agree with most of what you wrote, but I do have a problem with your example:
  ... a "means for" claim can be worded broadly and "cover" i.e.,
  protect, many different alternative mechanisms, but not really
  disclose anything about the alternative mechanisms that the
  claim protects.

35 USC 112, paragraph 6 states:
  An element in a claim for a combination may be expressed as
  a means or step for performing a specified function without the
  recital of structure, material, or acts in support thereof, and
  such claim shall be construed to cover the corresponding
  structure, material, or acts described in the specification and
  equivalents thereof.

If a claim includes “... a means for engaging lever (a) with lever (b)”, in order to understand the claim the specification must be examined.  If the spec. states “lever (a) can be engaged with lever (b) using a clutch, a solenoid, or a rubber band,” then the means for is just “a clutch, a solenoid, or a rubber band” or equivalents.

“Means for” is not just an open ended claim that includes anything that will work to engage lever (a) with lever (b).

[john2006]

Hi everyone,

Wiscagent, you are correct that the protection a "means for" claim affords is limited to equivalents of what is disclosed in the specification, but this still gives much room for many alternatives & various embodiments that my not be obvious in view of the specification or prior art combined.

My point was that a claim can be worded to provide protection for a design and various alternatives and/or equivalents, without actually rendering the alternative embodiments obvious due to the wording of the claim.

I did not mean to imply that claims are read or interpreted in a vacuum, you always have to take what is disclosed and/or suggested by the specification into consideration when defining the scope of coverage or protection a patent claim provides.

Thanks for your feedback.

John

[orangequant]

having suffered much pain at the hands of this "one year rule", i'm just bumping this 2006 thread up in hopes it will save a few souls... many details here from experts (read and learn) but permit me to summarize:
1. until you've filed a formal nonprovisional app, do not tell ANYONE any details of your invention
2. until you've filed a formal nonprovisional app, do not mention any details on any website
3. if you must violate #1 for research, obtain a WRITTEN NDA or "research only" agreement
4. if you must violate #2 for marketing, make sure you file an app within one year
5. if you've already screwed up, don't even THINK about lying to the PTO in your IDS. later, somebody will find out and that $1 million license you issued to Ajax Worldwide Conglomerate will be worthless to you in a federal lockup for fraud on them and the PTO.