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[W]

Wow. What a book! I just looked up some info on it: $300, 550 pages. Cost is similar to engineering books.

And it has two sections for "consisting essentially of" and "comprising". That's never a good sign.

Hmm. This might be important...I'll run down to Penn tomorrow, see if they have a copy. Then I'll order one to add to the library. Should scare the neighbors.

Mr. Ivey, I believe you are correct: while the english definitions may be similar, it is the law definition that makes the difference.

-W

[Isaac]

I occasionally see copies for sale on ebay.  Also sometimes
there are used copies on the book store web sites, but generally
there is not a huge savings for a used copy.

[W]

Bah, I'll buy a new one. I like to keep my books in top condition.

http://www.tms.org/pubs/journals/JOM/matters/matters-9511.html

Seems to give me the brief on the difference in terms.

1.) Can you amend claims with those terms (swap "consisting of" for "comprising")?

2.) I think I'm going to have a heart-attack. Reviewing my app, I used "comprising", but I need to check some language of the first claim with a certain someone. From a strictly english language perception, the terms may be used interchangably.

Thank God for IBM's lawyers. I used their apps as a template for my own, and I may make it through the process yet .

-W

[JimIvey]

http://www.tms.org/pubs/journals/JOM/matters/matters-9511.html

Seems to give me the brief on the difference in terms.

In response to your dictionary definitions, I was hoping to cite a case explaining/establishing the respective meanings.  It's just easier to point you to Landis and you'll see the case citations in the footnotes.  If you're curious, look up the cases themselves.  It's not exactly light reading, but it's not impossible either.

1.) Can you amend claims with those terms (swap "consisting of" for "comprising")?

Well, eventually you'll see that the answer to every patent law question is: "It depends."  The short and generally correct answer is "Yes."  But there are exceptions.

As with all amendments, it must be supported by the specification.  Remember, the amendment from "consisting of" to "comprising" (or vice versa) changes what the claim covers and the change must not add "new matter" to the application.

Suppose your detailed description repeatedly makes the point that the thing that makes your invention work are some five elements and the exclusion of everything else.  It's quite rare, but it happens.  You might find that the examiner will find that your specification doesn't support changing "consisting of" those five elementes to "comprising."

And, even if the amendment is supported, it might render the claim unpatentable.  Consider a claim "consisting of" A+B+C with prior art teaching A+B+C+D.  Changing the claim to "comprising" renders the claim anticipated by the prior art.  In theory, the amendment should be permitted and the claim rejected as not novel.  So, I suppose, technically, you can make that amendment but it won't result in an issued patent.

Of course, there may be other ways to broaden that claim and get around the prior art, but I'll save that for another time.

For what it's worth, I don't think I've ever used "consisting of" in my 13 years of practice.  Of course, I'm sure in some deposition some day, some lawyer from the other side will find one and call me a liar.  Occupational hazard....

Incidentally, for all practitioners out there, I have had a usenet post of mine shown to me in a deposition and I was asked questions about it under oath in front of a video camera.  Yet another occupational hazard.

Regards.

[W]

In response to your dictionary definitions, I was hoping to cite a case explaining/establishing the respective meanings.  It's just easier to point you to Landis and you'll see the case citations in the footnotes.  If you're curious, look up the cases themselves.  It's not exactly light reading, but it's not impossible either.

I setup a meeting with law prof from UPenn to do a little research on the subject. They should have a copy of the Landis book (somewhere). Legal definitions are always worth a look, especially when you skirt past them (unknowingly).

Well, eventually you'll see that the answer to every patent law question is: "It depends."  The short and generally correct answer is "Yes."  But there are exceptions.

As with all amendments, it must be supported by the specification.  Remember, the amendment from "consisting of" to "comprising" (or vice versa) changes what the claim covers and the change must not add "new matter" to the application.

Suppose your detailed description repeatedly makes the point that the thing that makes your invention work are some five elements and the exclusion of everything else.  It's quite rare, but it happens.  You might find that the examiner will find that your specification doesn't support changing "consisting of" those five elementes to "comprising."

And, even if the amendment is supported, it might render the claim unpatentable.  Consider a claim "consisting of" A+B+C with prior art teaching A+B+C+D.  Changing the claim to "comprising" renders the claim anticipated by the prior art.  In theory, the amendment should be permitted and the claim rejected as not novel.  So, I suppose, technically, you can make that amendment but it won't result in an issued patent.

Hmm. Here's to hoping I never run into that problem. As stated before, I will narrow claims, and may change some language in the same vein as "comprising" and "consisting of", but I will not be adding any new material (or any new material w/prior art).

For what it's worth, I don't think I've ever used "consisting of" in my 13 years of practice.  Of course, I'm sure in some deposition some day, some lawyer from the other side will find one and call me a liar.  Occupational hazard....

Incidentally, for all practitioners out there, I have had a usenet post of mine shown to me in a deposition and I was asked questions about it under oath in front of a video camera.  Yet another occupational hazard.

Whoops, misread.

-W

[W]

Just out of curiosity (I do not know if you can comment on past cases), why would a usenet post be brought up in a deposition? That someone would track down a post of yours, and then bring it up in court...seems a bit odd.

I'm not saying that it doesn't happen, but...what exactly did you write ?!?

-W

[Isaac]

Mr. Ivey, your point about comprising and consisting and
new matter is very interesting.  Here's something I've
wondered about.  If you have some statements in the specification
that force the use of consisting, it seems that the solution
would be to delete those statements.  Can deleting statements
be considered adding new matter?  Clearly the effect of
deleting negative limitations could be to enable new
stuff.

It's fairly rare in the electrical and computer
arts to use anything other than comprising or including.

[Isaac]

Just out of curiosity (I do not know if you can comment on past cases), why would a usenet post be brought up in a deposition? That someone would track down a post of yours, and then bring it up in court...seems a bit odd.



-W

If you are a party, your own out of court statements are
not heresay, so if you said something adverse to your position
in court the statement is fair game.

[W]

Understood. Now I'm just curious as to the subject matter of the post (I assume it relates to the case).

-W

[JimIvey]

Can deleting statements be considered adding new matter?

Well, consider removing terms like "only" and "not."  Unless they were "inadvertent and obvious clerical errors" (my phrase for supporting some types of amendments -- feel free to use it), removing them could arguably change the meaning substantially and be considered "new matter."

Here's a little anecdote related to me by a partner I worked under many years ago (a man whose skill as a patent attorney I respect very much).  He wanted to remove language from the specification.  The examiner argued that, since the claims are interpreted in light of the specification, removing from the specification broadens the claims (either under the doctrine of equivalents or under Section 112 p 6, I believe) and therefore adds new matter to the application.

The partner apparently bought the argument and conceded the point (or was inclined to do so, I don't recall exactly).  Personally, I thought the examiner was clearly wrong.  There is no prohibition against broadening claims during prosecution and I do it relatively frequently.  I believe that, iif adding new matter has any effect on the claims, it's a narrowing effect rather than a broadening effect.  I would have fought the examiner on that point.

But, generally, I think taking stuff out is okay.  However, if -- as in my hypothetical -- the specification originally teaches that the invention is rendered inoperable by the addition of other elements, you might find an objection that taking out such a statement adds new matter.  Can you overcome that objection?  Maybe.  I don't know.  Luckily, I haven't found myself in that position.  Say what you mean and mean what you say -- as best you can, anyway.

I'd be happy to hear any other experiences and thoughts on the matter.

Regards.

[JimIvey]

Understood. Now I'm just curious as to the subject matter of the post (I assume it relates to the case).

The post was a general remark about patents in an aviation group.  It pertained to the fact that US patent examiners are human and therefore fallible and their searches aren't perfect -- leaving some patents susceptible to challenge in court.  The attorney was trying to get me to admit that what I was really saying is that software patents are of more dubious validity than other patents.  Of course, that's not what I was saying at all.  I brought up some dumbass patent on swinging side-to-side rather than back-and-forth (US Pat 6,368,227) and he spent about a half an hour asking me questions about it.  I suppose every profession has its embarrassing moments, and that patent was certainly one for us!

So, for all us practitioners, avoid posting things like "when you see X in one of my applications, that means I really messed up and I usually try to fix it by doing Y but that shouldn't really fix it but my clients will never know."  Actually, a more likely way to get into trouble is to post something like "when I say 'one' thing, I mean 'exactly one' and not 'one or more'."  Of course, I mean exactly the opposite -- "one or more" and not "exactly one".  But you can see how that can hurt the breadth of your patents if you admit to a narrower interpretation than what someone else might hope to argue for your claims.

However, this all seems somewhat irrelevant to me.  My understanding is that the application drafter's subjective intent as to the meaning of the claim is not really controlling -- it's what one of ordinary skill in the art would understand.  I think that's right, anyway.  But I could be wrong.

Regards.

[Bill Richards]

Take a look at Primos v. Hunter's Specialties.  (CAFC 05-1001, -1376 June 14, 2006)  "There are situations, however, in which a patentee may overcome that presumption [that the patentee surrended all the territory between the original claim limitation and the amended claim limitation].  One such situation is when the 'rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question'".  In one instance, the term "length" was added to a claim element at issue.  The Court determined that since every physical object has length, it was not even a narrowing amendment.  Second, "[t]he patentee added the 'differentially spaced' limitation to distinguish the diaphragm mouth call from a prior art device that consisted of a shelf-like structure positioned on top of the membrane without any spacing.  The accused device, however, includes a dome that is spaced above the membrane.  Because the accused device's dome includes the spacing, the amendment was merely tangential to the contested element . . . and thus PHE does not apply to prevent the application of the DoE."

[zunairaerfan]

Yes, but don't use "consisting of" unless you mean it.  "Consisting of" excludes all other elements while "comprising" or "including" does not exclude other elements.

Once, an examiner interpreted "parallel" to mean two lines which don't intersect -- including skew lines (non-co-planar lines which don't intersect).  I believe skew is not parallel, so I amended the claims to recite co-planar parallel lines (or something to that effect).  Although, since I didn't consider that a narrowing amendment, so it's not really on point.  However, many times you'll amend a claim to exclude some unreasonable interpretation of your claim language insisted upon by the examiner.  Of course, this was all before Festo.  

From time to time, you'll be surprised at an unanticipated interpretation attributed to your claims by the examiner, and most of the time, they're right.  The amendment just cleans that up.  Of course, Festo extracts a significant penalty for that.  Not much we fallible human patent practitioners can do about that.

Regards.