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[flavsx]

Hi,


I ve got a software invention as a method with 3 parts :

- A is the part that does really the background job of the method but does not affect any hardware
- B is a novelty and affects some hardware but needs A to work
- C is a novelty and affects some hardware but needs A to work.

What should I claim ?

I presume A+B, A+C, A+B+C.

Is there a way to do it in 1 or 2 claims with "further including" or another key word ?
like
claim 1 : A+B + "further including" C
claim 2 : A+C + "further including" B


Thanks.

[JimIvey]

You want to claim 3 different combinations in just 2 claims?  I don't know how you'd do that.

In addition, if you have a claim of just A+B and a claim of A+C, you might expect to be required to restrict your application to just one invention.  In other words, you might need 2 separate applications (e.g., a divisional).  I haven't seen such requirements recently in situations where I'd expect to see one in the past, so it seems to not be a popular concern in the examining corps these days. 

In short, I'd expect to see 3 claims (at least):

1. A+B
2. A+C
3. Claim 2 further comprising: B
... or (equivalently) ...
3. Claim 1 further comprising: C

Regards.

[flavsx]

Thanks for your answer,

I will try to make it more clear.

my original problem is that I m trying to patent a computer algorithm like this
which can be divided into 3 parts :


part A : a calculation (novelty : never seen a calculation like this before)
part B : a report to the user about the result of the calculation (never seen a report like this before containing this type of data)
part C : an action on a physical device depending on the result of the calculation

I like to patent all of these parts.
My first thoughts were to patent A + further including B + C in one claim.
and maybe also A + B + further including C.


Thanks for opinions...


Regards.
 

[Isaac]

You might be able to write such a claim as a Markush group like construction.  I'm not sure I'd advise using such claims.

Maybe one of the following would do it.

A further including of B or C.
A further including a widget selected from the group consisting of B and C.
A further including one of B and C.

If the goal here is simply to save claim fees, I'd recommend using more claims and trying to hit up a family member for the extra cash.  Loading up claims with alternatives simply to reduce the claim count is not a good tactic.

[flavsx]

Thanks for your answer,

I will try to make it more clear.

my original problem is that I m trying to patent a computer algorithm like this
which can be divided into 3 parts :


part A : a calculation (novelty : never seen a calculation like this before)
part B : a report to the user about the result of the calculation (never seen a report like this before containing this type of data)
part C : an action on a physical device depending on the result of the calculation

I like to patent all of these parts.
My first thoughts were to patent A + further including B + C in one claim.
and maybe also A + B + further including C.


Thanks for opinions...


Regards.
 

I have edited my last message to make it more clear (see the quote)

Thanks for opinions...

[JimIvey]

I agree with Isaac: use more claims.

1. A
2. Claim 1 further comprising: B
3. Claim 1 further comprising: C
4. Claim 3 further comprising: B

As for Claim 1, see Isaac's news bulletin here.  Being on California time, I'm still trying to get through the opinions.  132 pages!!

Regards.

[flavsx]

Thanks for the 132 pages : I didn t asked that much  !!


I ve read through the introduction and the conclusion stating pages 125-129 on 132 that:

"Furthermore, abstract ideas can never
qualify for patent protection because the Act intends, as section 101 explains, to provide “useful” technology. An abstract idea must be applied to (transformed into) a practical use before it qualifies for protection."

So to my opinion, my part A (a calculation which is applied on a physical device) can lead to an independent claim.

Anyway, I can try to patent par A as claim 1, maybe it will be rejected but the other claim will be accepted anyway.

1°) Is it a good strategy to give a try to patent A or does it lead to some great complications and money spending...

By the way, I don t understand clearly what you mean by :

1. A
2. Claim 1 further comprising: B
3. Claim 1 further comprising: C
4. Claim 3 further comprising: B


2°) Did you mean "3. Claim 2" instead of "3. Claim 1" ?


Best regards.

[Isaac]

Jim's method is correct and results in the following claims.

1. A
2. Claim 1 further comprising: B   ==> AB
3. Claim 1 further comprising: C   ==> AC
4. Claim 3 further comprising: B   ==> ABC


There is more than one way to accomplish this result, but if you change things as you suggest:

1. A
2. Claim 1 further comprising: B   ==> AB
3. Claim 2 further comprising: C   ==> ABC
4. Claim 3 further comprising: B   ==> ABCB?

Another collection of claims that does work:

1. A
2. Claim 1 further comprising: B   ==> AB
3. Claim 2 further comprising: C   ==> ABC
4. Claim 1 further comprising: C   ==> AC

[flavsx]

I understand now, ok, thanks ! That's a good idea !!!!

I can try to patent part A as claim 1, maybe it will be rejected but the other claims have a chance to be accepted anyway.

Is it a good strategy to give a try to patent A (only calculation)  or does it lead to some great complications and money spending
so that I should only patent A in combination with other oparts B and C


Thanks.

[JimIvey]

When you get done with your 132 pages of reading, you'll see that using a computer to do nothing more than solve a mathematical problem, whatever mathematical problem, is going to be difficult.  I'm not saying you shouldn't attempt it, but it might not be a bad idea to speak to someone who's worked at the edges of Section 101 for a while in confidence to help you out.

Software people often understand claim dependency better once told it's like an "include" statement. 

2.  The method of Claim 1 further comprising: ... .

is more or less analogous to:

Claim2()
{
  include Claim1;
  ...
}

And, the includes can be nested.

As for whether you can have some claims rejected and others allowed, yes, you can.  However, in practice, it doesn't happen often (anymore).  Although, with respect to Section 101, I typically do see some claims pass muster under S 101 while others are rejected.  Stated another way, I generally don't see ALL claims rejected under S 101.

Regards.