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[flavsx]

Hi,

imagine i have a method in claim 1 which is
1. A method for protecting a database
(a) rearranging ....
(b) mapping ....


but before the step (a) I d like to add an additional step which to "test the database" first.

How can I make it clear  ? With "further including" like this :

2 The method of claim 1 further including a first step of testing the database ...

Thanks

[Wolfcastle]

Just don't label your steps as a, b, c. This implies a specific order that things must be done.

[JimIvey]

I think the typical way to do that is as follows:

2.  The method of Claim 1 further comprising:
        testing the database prior to the rearranging ... .

As Wolfcastle recommended, only specify an order of the steps if you really intend the ordering to be limiting.  To the extent the ordering is a practical requirement by the nature of the steps themselves (for example, an intermediate result used in another step), you can allow the implicit ordering to be ... well, merely implicit.

Regards.

[JimIvey]

Just don't label your steps as a, b, c. This implies a specific order that things must be done.

I'll respectfully disagree with that statement.

Regards.

[flavsx]

So you mean JimIvey, that even if you number the steps with (a), (b), (c) ,
there is no implicit order ?

[Isaac]

Another possible technique for implying order

1. A method for protecting a database including,
(a) rearranging the coordinates ...
(b) mapping the rearranged coordinates ....

In this case b must occur after a, but not necessarily immediately after a.

In my opinion, labeling processes with numerical or alphabetic labels is a bad idea.  I don't believe the labels reliably imply an order, and it seems likely that an amendment will mess up the order of the labels.  If you use the labels to reference the processes in dependent claims, it seems even more likely that you'll mess stuff up during prosecution. 

I don't even like calling the elements of a method steps, and there is no need to do so unless you are intentionally invoking 35 USC 112, 6th paragraph.

In most cases, effort used in specifying an order is wasted because doing so limits the claim for infringement purposes without helping distinguish the claims over the prior art.  You'll know when the order of performance is the novelty/non-obviousness part of an invention.  When that rare circumstance occurs, you aren't going to leave that important detail up to guess work.  You'll  discuss order in the specification and explicitly indicate order in the claims.

[JimIvey]

So you mean JimIvey, that even if you number the steps with (a), (b), (c) ,
there is no implicit order ?

That's my understanding, yes. 

I'll use that construct in a number of circumstances. 

If I have two steps with the same "ing" verb, I'll use similar labels so that I can refer to each step by its identifier.  For example, if I have a method that comprises: retrieving, sorting, rearranging, sorting, and packaging the results of the sorting, to which "sorting" did I refer?  Those sorts of labels are helpful in resolving such an ambiguity.

If the hierarchy of steps, sub-steps, and perhaps sub-sub-steps gets a bit difficult for me to follow, I'll use outline-like labels to help me sort things out.

From what I understand, they're just labels, nothing more.

Regards.

[Wolfcastle]

An infringer who performs the steps of the claim in a different would likely argue that the claim "directly or implicitly requires" the specified sequence. Although I agree that the likelihood of alphanumeric labels causing the claim to cross the threshold of "implicitly requires" is small, it seems ill-advised to provide anything that might someday help a litigator narrow your claim. 

[Lightning50]

What would be the best way to make explicit the fact that you DO NOT want to imply any particular order?

1 - Add text to the preamble, such as: "A process to XXX, comprising the following steps in no particular order:"

2 - A statement somewhere in the written description to the effect that "no ordering should be assumed unless explicitly stated"

3 - A dependent claim that says "The process of claim YY, wherein the steps are performed in the order listed"

[smgsmc]

So you mean JimIvey, that even if you number the steps with (a), (b), (c) ,
there is no implicit order ?

That's my understanding, yes. 

I'll use that construct in a number of circumstances. 

If I have two steps with the same "ing" verb, I'll use similar labels so that I can refer to each step by its identifier.  For example, if I have a method that comprises: retrieving, sorting, rearranging, sorting, and packaging the results of the sorting, to which "sorting" did I refer?  Those sorts of labels are helpful in resolving such an ambiguity.

If the hierarchy of steps, sub-steps, and perhaps sub-sub-steps gets a bit difficult for me to follow, I'll use outline-like labels to help me sort things out.

From what I understand, they're just labels, nothing more.

Regards.

If the hierarchy of steps, sub-steps, and perhaps sub-sub-steps gets a bit difficult for me to follow, I'll use outline-like labels to help me sort things out.

From what I understand, they're just labels, nothing more.

Regards.
[/quote]

Hi Jim.  What's your opinion of drafting a claim in the form :  retrieving, a "first sorting", rearranging, "a second sorting", and packaging the results of the [or said] "first sorting" ?  I've also used it when performing the same operation on different entities:  a first sorting of a first set of items, a second sorting of a second set of items [Although some may complain that "a second sorting of a second set of items"  implies that there was previously a "first sorting of a second set of items" .  Here "first", "second" labels only the order in which they were introduced in the claims, not the sequence in which they are performed.  So far, my senior has OK'd, but I'd like a second opinion. ].  Thanks.  smgsmc.

[JimIvey]

I agree with your superior.  I don't intend to suggest a sequence using "first", "second", etc. 

However, I would say that the inherent hint of sequence is stronger in "first", "second", etc. than in (a), (b), (c), etc.  The outline construct is well-known and, as you recognize for "first" and "second", it reflects the order of introduction in text, not a chronological sequence.

As an example, take an outline of a course you've taken.  Identify a chronology of the elements of the outline.  I bet you won't have to go far before finding an example of an outline in which the bullet-point identifiers are contrary to the chronology.

Normally, I'm not a big fan of boilerplate in patent applications.  I use some, but not much.  Perhaps as a matter of style, I prefer to write clearly and rely on plain English as much as possible.  But, perhaps it wouldn't be a bad idea to disclaim any suggested sequence of "first", "second", etc. in the claims.  Something to ponder.....

Regards.