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[wchild]

Pressman discourages the use of multiple dependent claims because they are expensive and apparently examiners don't like them. I've heard there is an alternative, but I am wondering what that is. How do you turn:

What is claimed is:
1. A Thingy with feature A
2. The Thingy of claim 1 having, in addition, feature B
3. The Thingy of claims 1 or 2 having, in addition, feature C.
4. The Thingy of claims 1, 2, or 3 having, in addition, feature D.
etc.

into something that will get you the same coverage of combinations and permutations without using the multiple dependent claim format?  

[Isaac]

Pressman discourages the use of multiple dependent claims because they are expensive and apparently examiners don't like them. I've heard there is an alternative, but I am wondering what that is. How do you turn:

What is claimed is:
1. A Thingy with feature A
2. The Thingy of claim 1 having, in addition, feature B
3. The Thingy of claims 1 or 2 having, in addition, feature C.
4. The Thingy of claims 1, 2, or 3 having, in addition, feature D.
etc.

into something that will get you the same coverage of combinations and permutations without using the multiple dependent claim format?  

Claim 4 is a multiple dependent claim dependent upon another multiple dependent claim and thus could not be used.

But the way to get around using multiple dependent claims is simply to expand them into the separate depend claims.   For example replace claim 3 with

The thingy of claim 1 further including C.
The thingy of claim 2 further including C.

[wchild]

Claim 4 is a multiple dependent claim dependent upon another multiple dependent claim and thus could not be used.

But the way to get around using multiple dependent claims is simply to expand them into the separate depend claims.   For example replace claim 3 with

The thingy of claim 1 further including C.
The thingy of claim 2 further including C.

Thanks for your answer. I'm wondering if that works, however. If I do what you suggest, then can't someone get around the patent by, say doing the thingy of claim 3 without the new feature found in 2? Consider a "base invention" where new features are described in separate claims. With your suggestion, I think the result is this

Claim         New Feature       TOTAL FEATURES
1               A                         A
2               B                         A + B
3               C                         A + B + C
4               D                         A + B + C + D

Now, I believe that with your approach the total number of features simply increments by 1 as you move to the next claim. But what if someone tries to patent an invention with BCD only, or with ABD? Will I be covered?

Thanks for addressing this. It is quite a big issue for my patents because of the way the inventions are constructed.

[Isaac]

Thanks for your answer. I'm wondering if that works, however. If I do what you suggest, then can't someone get around the patent by, say doing the thingy of claim 3 without the new feature found in 2?

Note that I did not provide a replacement for claim 4.

Whatever lack of coverage exists with my proposed two claim replacement for claim 3 also exists with the initial claim 3.

But any  multiple dependent claim can be replaced by a set of equivalent dependent claims.   Multiple dependent claims are simply a shorthand that takes up less paper.

[JimIvey]

Claim         New Feature       TOTAL FEATURES
1               A                         A
2               B                         A + B
3               C                         A + B + C
4               D                         A + B + C + D

Now, I believe that with your approach the total number of features simply increments by 1 as you move to the next claim. But what if someone tries to patent an invention with BCD only, or with ABD? Will I be covered?

No, you won't be covered -- most likely, anyway.

What I believe Isaac was suggesting was different:

Claim 1 = A
Claim 2 = Claim 1 + B = A + B
Claim 3 = Claim 1 + C = A + C
Claim 4 = Claim 2 + C = A + B + C
Claim 5 = Claim 1 + D = A + D
Claim 6 = Claim 2 + D = A + B + D
Claim 7 = Claim 3 + D = A + C + D
Claim 8 = Claim 4 + D = A + B + C + D

It's just simple combinatorics.  Note that if you want to cover something without A (e.g., B+C+D), that claim can't depend from Claim 1.

Regards.

[wchild]

No, you won't be covered -- most likely, anyway.

What I believe Isaac was suggesting was different:

Claim 1 = A
Claim 2 = Claim 1 + B = A + B
Claim 3 = Claim 1 + C = A + C
Claim 4 = Claim 2 + C = A + B + C
Claim 5 = Claim 1 + D = A + D
Claim 6 = Claim 2 + D = A + B + D
Claim 7 = Claim 3 + D = A + C + D
Claim 8 = Claim 4 + D = A + B + C + D

It's just simple combinatorics.  Note that if you want to cover something without A (e.g., B+C+D), that claim can't depend from Claim 1.

Wow, that is going to be a lot of claims. I have something like 10 features! There must be a more efficient way!?? Thanks for the explanation.

[Isaac]

You have 10 features, but the question is whether you need claims drawn to every combination of those features.

If a claim A+B is allowable, is there a need to recite A+B with every possible comination of the elements C,D,E,F,G etc. taken one at a time up to n at a time?   Of course not.

In a perfect world where you know what minimum combinations are patentable you would recite those and maybe some additional combinations for claim differentiation purposes.   In an imperfect world, you may need some narrower claims as well.

[JimIvey]

Years ago I had a client that wanted every possible combination -- so we filed with nearly 300 claims.  Luckily, I left that firm before I had to cope with the examiner's wrath.

Unless you have a bottomless checkbook, you're always going to have to make "Sophie's choice" in patents -- and in business generally.

Regards.

[JSonnabend]

This discussion has been dead-on, with Jim and Isaac providing excellent guidance.  I'll just add one comment: I can't believe "combinatorics" is actually a word.  

- Jeff

[JimIvey]

I can't believe "combinatorics" is actually a word.  

Well, at the risk of being overly clever and geeky, it's obviously a word (spoken sign of a conception or an idea), but I'm guessing you meant you can't believe it's actually a valid English word.

However, I respectfully submit the following:
http://www.yourdictionary.com/ahd/c/c0499500.html

Regards.