Intellectual Property Forum

Patents => Patent Filing and Prosecution => Topic started by: dbmax on 11-10-17 at 02:46 pm

Title: gadget comprising the widget of claim 1
Post by: dbmax on 11-10-17 at 02:46 pm
1) A widget for use on a gadget, said widget comprising
   x; and
   y.

20) A gadget comprising a widget according to claim 1.

The gadget is not shown in the drawings.
The gadget is not discussed in the spec, except as to how the widget would typically be fitted to it.
Gadgets and widgets, and the fitting of one to the other, are common within the art, and well understood by a phosita.

Is there a problem with claim 20?
Title: Re: gadget comprising the widget of claim 1
Post by: smgsmc on 11-10-17 at 05:16 pm
I see a 112 indefiniteness issue because you recite "a gadget" in claim 1, then claim "a gadget" in claim 20.  Is "for use on a gadget" necessary in claim 1, or can you omit it?  That is, does "gadget" appear in the body of claim 1, or is the preamble solely intended use and not afforded patentable weight anyways?
Title: Re: gadget comprising the widget of claim 1
Post by: dbmax on 11-10-17 at 07:06 pm
That is, does "gadget" appear in the body of claim 1, or is the preamble solely intended use and not afforded patentable weight anyways?

Only a court can answer that question, but my answer is that the gadget in claim 1 is solely a part of the preamble, and can be omitted.

But since it (presumably) has no patentable weight, is it necessary to omit it from claim 1?

Thanks,
bd
Title: Re: gadget comprising the widget of claim 1
Post by: smgsmc on 11-10-17 at 07:32 pm
That is, does "gadget" appear in the body of claim 1, or is the preamble solely intended use and not afforded patentable weight anyways?

Only a court can answer that question, but my answer is that the gadget in claim 1 is solely a part of the preamble, and can be omitted.

But since it (presumably) has no patentable weight, is it necessary to omit it from claim 1?

Thanks,
bd
If you don't omit it from claim 1, you will have the 112 indefiniteness issue I mentioned above.  If "gadget" in claim 1 is unnecessary and you omit it, that issue goes away.

As written:

1) A widget for use on a gadget, said widget comprising
   x; and
   y.

20) A gadget comprising a widget according to claim 1.

20) expanded reads:

A gadget comprising a widget for use on a gadget ....

That won't fly.


ETA:  We've also gone round the block a few times as to whether 20) is a proper dependent claim, even if you fix it up.
Title: Re: gadget comprising the widget of claim 1
Post by: dbmax on 11-13-17 at 10:53 pm
ETA:  We've also gone round the block a few times as to whether 20) is a proper dependent claim, even if you fix it up.

Seemed to remember a discussion like that  but couldn't find it until now.  Thanks.   http://www.intelproplaw.com/ip_forum/index.php/topic,29693.msg139741.html#msg139741 (http://www.intelproplaw.com/ip_forum/index.php/topic,29693.msg139741.html#msg139741)

I'm guessing a cleaned up claim would fly. Monsanto Co. v. Syngenta Seeds, Inc.,503 F. 3d 1352 -CAFC 2007 suggests that the "form" of the dependent claim is not important so long as the claim meets two criteria, and that the word "then" in 112(d) does not literally mean "then."  (dunno about scotus)

Regards,
bd