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[joe]

Dear all:

I have written three claim sets each consisting of 2 claims. Can somebody help me how exactly these claims will be interpreted and what is the difference.

CLAIMS

SET I

1.      A method of building a network comprising the steps of
a);
b); and
c).

2.      The method as claimed in claim 1 further comprising the steps of:
d);
e); and
f).

SET II

1.      A method of building a network comprising the steps of
a);
b); and
c).

2.      The method as claimed in claim 1 comprising the steps of:
d);
e); and
f).

SET III

1.      A method of building a network comprising the steps of
a);
b); and
c).

2.      The method of building a network comprising the steps of:
d);
e); and
f).


The word ‘further’ is deleted in dependent claim of claim set 2.  How exactly the dependent
claim 2 of set II will be interpreted. Will it replace the independent claim of set II.

What is the difference between the three claim sets.

Plz help.

Thanks in advance

Joe

[Wiscagent]

Joe -

A)  claim I(1) =
    claim II(1) =
    claim III(1) =
    A method of building a network comprising the steps of (a); (b); and (c).

Any of the “A” claims read on a method that includes all of steps (a), (b), and (c); regardless of what other steps may be included in the method.


B)  claim I(2) =
    claim II(2) =
    A method of building a network comprising the steps of (a); (b); (c); (d);
   (e); and (f).

Any of the “B” claims read on a method that includes all of steps (a), (b), (c), (d), (e) and (f); regardless of what other steps may be included in the method.


C) claim III(2) =
   A method of building a network comprising the steps of (d); (e); and (f).

The “C” claim reads on a method that includes all of steps (d), (e) and (f); regardless of what other steps may be included in the method.


Richard Tanzer

[joe]

Richard, Thank you for your clarification. My main concern is that what happens when the word ‘further’ is deleted in the dependent claim.

Does the claims having the words ‘further comprising’ and ‘comprising’ be interpreted the same way. Does adding the word ‘further’ in the dependent claim changes its interpretation.

Regards,
joe.

[Jonathan]

Richard, Thank you for your clarification. My main concern is that what happens when the word ‘further’ is deleted in the dependent claim.

Does the claims having the words ‘further comprising’ and ‘comprising’ be interpreted the same way. Does adding the word ‘further’ in the dependent claim changes its interpretation.

Regards,
joe.

In  my opinion, the exclusion of 'further' in the dependent claim does not change the claim scope.

If you actually ran into that in an application, I think it would be quite proper for you to raise a claim objection and require the Applicant to insert 'further' in the dependent claim. Examiners have  a wide latitude in making these kinds of requirements to make things read better, etc. In fact, one Examiner recently required me to place a reference numeral in bold, in the specification, that was inadvertently left unbolded. So, my spec amendment was a paragraph with a striked through un-bolded number followed by a bolded underlined number..  

[joe]

Consider the following claim:

1.      A method of broadcasting a message comprising the steps of:

a;
b; and
c;

2.      The method as claimed in claim 1 further comprising the steps of:

d;
e; and
f;

My friend is of the view that if the word ‘further’ is deleted from the dependent claim 2, then the steps d, e and f recited in claim 2 shall replace the steps a,b and c. Is it correct?. Plz clarify.

Thanks
joe

[Wiscagent]

I call your attention to 35 USC 112 paragraph 4:

     Subject to the following paragraph [dealing with
     multiple dependent claims], a claim in dependent
     form shall contain a reference to a claim previously
     set forth and then specify a further limitation of the
     subject matter claimed. A claim in dependent form
     shall be construed to incorporate by reference
     all the limitations of the claim to which it refers.

A dependent claim adds further limitations to the independent claim to which it refers.  The dependent claim is always narrower in scope.  So in your example, regardless of the use of the word “further” in claim 2, a process that infringes claim 2 comprises steps (a), (b), (c), (d), (e), and (f).

Some people would consider the following an exception to the rule.  Claim sets are sometimes granted in this form:

    1.   A process comprising ...

    2.  The product made using the process of claim 1 wherein ...

Claim 2 looks like a dependent claim, but it is a different statutory class.  Claim 1 is for a process, but claim 2 is for a product, so how can claim 2 be said to incorporate all the limitations of claim 1?  Nevertheless, for the purpose of USPTO fees, claim 2 may be counted as dependent.



Richard Tanzer

[joe]

thanks richard!

My Examiner has directed me to delete the word ‘further’ in the dependent claim. He is repeatedly telling me that the term ‘further’ is not allowable. When I asked him what is the reason for that, he simply replied saying ‘this is the patent practice’. What might be the intention (deleting ‘further’)?

joe

[JimIvey]

The Examiner's wrong.  I've been using "further" in my claims for 14 years and have never had them rejected on those grounds and have never seen a case in which "further" was disallowed.  

I haven't jumped in because I think others have handled the question just fine without me.  But I'll raise one little point that didn't jump out at me as I skimmed through the thread....

If Claim 1 recites "comprising A, B, and C" and Claim 2 recites "Claim 1 further comprising D, E, and F," it's explicit that Claim 2 also includes A, B, and C.  I think that, without "further," it's implicit but still clear that Claim 2 includes A, B, and C, but -- generally speaking -- explicit is always better than implicit.

The examiner is clearly wrong in this case.  However, you have to ask yourself whether it's worth arguing over.  I don't think it makes any difference in the coverage of your claims.  If that's the only impediment to getting your claims allowed, I think it's a no-brainer to accept the amendment.  

To guard against application of Festo, I would clearly state in your amendment papers that the amendment (to remove "further") in no way narrows your claims.  Festo is only supposed to apply to narrowing amendments, not just any amendment.  However, case law has shown that Festo can apply to amendments that clearly do not narrow the scope of a claim.  Quite frankly, we're all screwed when it comes to amending claims.  Ces le vie!

Regards.

[Peter Chang]

Assuming Claim 1 has the language "means for connecting A to B," it might make difference if Claim 2 depending from Claim 1 recites one but not the other of the following two:

Situation 1: "the connecting means comprises C"

Situation 2: " the connecting means further comprises C"

In Situation 1, Claim 1 covers a design where C is used in connecting A to B as well as other designs as are appropriate according to the disclosure.

In view of Situation 2, Claim 1 further covers, in particular, a design where C or its equivalent is NOT required in connecting A to B.

Therefore, in above example, the word "further" should be used only when you (as a drafter) intend that Claim 1 be interpreted to permit absence of C or equivalent structures.  Without such evidence (i.e., use of "further"), it's not absolutely certain (with exceptions, of course, not relevant herein) that Claim 1 should be so interpreted.

As far as I observed, in most cases, the merits of claim language make the use of word "further" trivial (harmless).  (It's not based on case law!)

[JimIvey]

I don't see the distinction.  Am I missing something?

If you're relying on the doctrine of claim differentiation, remember that it's just a guideline for claim interpretation and courts are free to disregard it if they like.

Of course, I still use it and hope for the best.  We can try all we want to force a particular interpretation of the claims, but it's not our subjective intent as drafters that ultimately determines the scope of claims.

Even with the doctive of claim differentiation, I don't see that "further" makes a difference in that example.  Perhaps I'm missing something.

Regards.

[sharma]

From India’s point of view, I would like to add on few lines:

1.      Typically the Examiner’s here are very reluctant to allow the word ‘further’ in the claims. They asks us to delete the word ‘further’ in the dependent claims. But they accept the word ‘optionally’ instead of ‘further’. The reason is that if the steps followed by ‘further comprising’ contains optional features, then they ask us to substitute the word ‘further comprising’ with ‘optionally comprising’ or if it is an essential feature, then they ask us to incorporate all the steps recited in the dependent claim to the independent claim.

2.      Typically they don’t allow the term ‘of ‘ in  ‘The method of claim 1’. They ask us to substitute the word ‘of’ with ‘as claimed in’.

3.      Typically they object to the words ‘includes’, ‘including’, ‘using’

thanks

sharma

[John Kelly]

From a conceptual viewpoint this may be an interesting question.  
But, consider practical differences.  In litigation you would really like at least one picture claim (ABCDE). The closer a single claim matches an infringing product the closer a jury (or court) will track your position. Not having to explain claim construction theory helps, but more importantly it allows one "block" of the patent to be studied by the decision maker rather than having to piecemeal things together.  Remember that the claims will almost always be examined by a Judge with a liberal arts undergrad degree and/or by a jury randomly selected off the street.
Other advantages exist in licensing and in spliting an application.  To understand the latter, say ABCDE is allowed but not ABCD.  You can cancel claims to ABCD and take unamended claims to ABCDE. Then you can file a continuation on unamended ABCD (while cancelling ABCDE to avoid a double patenting rejection).  This allows ABCDE to issue quickly while the prosecution on ABCD continues and enables the possibility of amendments (if supported) to obtain a new ABCDF.  
Obviously you could accomplish much the same thing by amending the pending claims and refiling the original claims.  But that requires more involved amendments that might create Festo II type problems without the benefit of a FESTO III argument that no changes were made to any claim and that all claims are pending (albeit in two applications).

[Wiscagent]

My guess is that it is simply a mistake.

Some people might argue that because of doctrine of equivalence interpretation by the courts, you are better off with two independent claims rather than an independent and a dependent; but that does not explain the need for four claims.

Richard Tanzer