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Author Topic: definitions within / prior to claim  (Read 731 times)

wchild

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definitions within / prior to claim
« on: 01-05-07 at 04:28 pm »

I am wondering if it is possible to establish definitions immediately prior to a claim, as in:

With the understanding that A represents X, B represents Y, and C represents Z

I CLAIM:

1. A method for using A etc.

Is that weird? Illegal?

Alternatively, it is possible to use the kind of "hereinafter" reductions used elsewhere within a claim.

I CLAIM:

1. A method of processing long-winded-noun-phrase (hereinafter, "short noun") comprsing:

Is there a rule against that as well?

Thanks.
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Bill Richards

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Re: definitions within / prior to claim
« Reply #1 on: 01-05-07 at 08:17 pm »

There's nothing "illegal" with either of your hypos.  (Very little is absolutely illegal in the patent drafting area.)
Your first hypo is problematic, however, since I believe you miss an opportunity of expand/expound upon your definitions.  Why try to dispense with a short phrase when you can perhaps broaden your claims by a more expansive discussion?
Your second hypo is fine.  If you will review some claims, you will found it done all the time.
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William B. Richards, P.E.
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wchild

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Re: definitions within / prior to claim
« Reply #2 on: 01-05-07 at 08:33 pm »

Actually, the first hypothetical is designed to expound on the interpretations of A, B, and C at length. In other words, X, Y, and Z are long phrases that read someting like:

With the understanding that
A represents an X which can consist of x, y, z, or even a, b, c, or t, u, s,
B represents....

I was worried that they will claim that such definitions literally come before the "I CLAIM" statement. It seems to me that getting the definitions out of the way in unequivocal fashion prevents having to force the examiner to wade through the specs and interpret (or misinterpret) your meaning of the terms. It also makes the claims easier to read.
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