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 on: Yesterday at 10:01 pm 
Started by full-of-iDeas - Last post by full-of-iDeas
Hi all. This question regards Patent Drafting/Interpretation:

EPO's Guidelines for Examination section 3.9.1 suggests that you can claim detailed "computer implemented method" claims, and then "refer back" to the method-claims in other 3 categories (Apparatus, Computer program and Computer-readable medium).

fx: "A data processing apparatus/device/system comprising means for carrying out [the steps of] the method of claim 1."

Do you think this claiming technic is effective? also in the US?

I see an advantage in this because:

1. the applicant doesn't have to duplicate the elements already recited in the method claims


2. the examiner doesn't have to reread the same set of elements repackaged in different formats

 on: Yesterday at 06:13 pm 
Started by EagerDrafter - Last post by EagerDrafter
I am drafting a method claim which includes a clause for looking an item up in an indexed fashion. I have looked at some look-up-table method claims but I don't know which is preferred:

"selecting one or more (items) subject to a set of one or more constraints" Is this truly definite without defining specific constraints?
"selecting from the one or more (items) an (item) having a (desired property)"

My claim is something like this (subject matter aside):

1. A method for displaying data, the method comprising:
a) accepting a portion of data from a data source and generating an image from the data, the image comprising one or more segments;
b) accepting a segment selection code from a control unit, and associating the code uniquely with one of the segments;
c) displaying a/the segment associated with the segment selection code.

2. The method of claim 1, wherein the code consists of one or more code bits, comprising
a) assigning to each of the segments a unique numerical index;
b) calculating a selection index from the code based on a/the permutation of the code bits
c) selecting from each of the segments a/the segment having a/the numerical index that equals the selection index

As you can see, I am not sure about some of the antecedents.

i) a/the segment? (the segment is defined by virtue of the step, so why "a"?)
ii)  a/the permutation? (I believe a group of bits can have "the first bit", but do bits have "the permutation")
iii) how best to formulate 2c?
iv) any other comments to these two claims? Weaknesses, flaws? (they are prototypical so no need to worry about obviousness)

Thank you! Pointers or references also welcome.

 on: Yesterday at 03:21 pm 
Started by Robert K S - Last post by JV
Thanks for raising SuperGuide.  I don't like the opinion because I think it muddies the waters unnecessarily and ignores centuries of practice in legal document drafting in favor of a shout-out to beloved children's author E.B. White, but your bringing it up forced me to take a close look at what has come in its wake.
Thanks for all the follow up.  I too am not happy with Superguide, and also was surprised to find The Elements of Style cited as the authoritative source.
In my opinion, the takeaway from SUperguide is that, when determining what is meant by "at least one of A and B" (i.e. is it [at least one A, at leat one B, or both], or is it [at least one A and at least one B]), the critical factor is what is in the specification.  If the specification clearly indicates one interpretation over the other, then that is the proper interpretation.  I'm not a litigator, but we took a patent with similar claim language to the CAFC (we had lost on SJ, and were appealing).  We had Judge Prost (author of the Superguide opinion) on our panel.  We lost, affirmed with no opinion under Rule 36. Our spec was not well-written; claimed priority to a German application, and the detailed description was very bare-bones by US standards.  I'm convinced that, if the spec was clearer about it being A or B or both, that we would have won.  Such is life.

 on: Yesterday at 03:10 pm 
Started by Retarius - Last post by Jim_Demers
The majority of 103 rejections that I deal with are of the "combining known elements is obvious" variety.

I like to throw KSR at them, since they revere it so: “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).  Known options are obvious only if they represent “identified, predictable solutions.” KSR at 421.
With that out of the way, I can get down to  what matters: motivation/identifying the problem, and unexpected/unpredictable results. I keep the text handy, because the same examiner will pull the same stunt in a later application.

 on: Yesterday at 03:05 pm 
Started by Tabo - Last post by Toot Aps Esroh
On the question of whether "up to 5%" includes 0%, I think you've gotten some good thinking points above and explanation for why "up to" can reasonably include 0%.

Question for the examiners, what if the recitation were "composition contains a further additive present in a proportion of up to 5% by weight with respect to the first additive "?

If words in claims are supposed to have meaning, is it worthwhile to argue that the additive must (now) be "present" and therefore cannot be 0%?

As a side note, in a lot of old chem cases you would see a recitation like, "contains a further additive in a positive amount up to about 5%...".  I've also seen "in a non-zero amount up to about 5%.."

 on: Yesterday at 01:06 pm 
Started by Robert K S - Last post by Robert K S
As of 11:45 AM, patent ten million is up in PAIR.  Taking a look at the prosecution history, the first Office action indicated allowable subject-matter in some of the dependent claims.

The file wrapper includes a (granted) petition to expunge trade secret material inadvertently submitted with an IDS.  Oops.

There's also this boilerplate "comment on statement of reasons for allowance":

In response to the Notice of Allowance dated February 26, 2018, the Applicant provides the following in response to the Statement of Reasons for Allowance. The Applicant believes that the claims and description of the invention are adequately described and set forth in the specification such that the Applicant's claimed invention, and terms and features described therein, are readily understood by those of ordinary skill in the art as set forth in the allowed claims. While the Applicant appreciates the Examiner's reasons for allowance, the Applicant believes that other reasons for allowance exist. The Applicant reserves the right to raise these other reasons if ever necessary.

Not sure what that does, if anything.

Then there's a Rule 312 amendment, and also an examiner's amendment, to do some claim cleanup.

No section 101 consideration of the claims anywhere in the prosecution record.

 on: Yesterday at 11:22 am 
Started by Tabo - Last post by bluerogue
Fewyearsin has a much more complete answer. I agree with everything he says here.

 on: Yesterday at 11:14 am 
Started by Tabo - Last post by fewyearsin
Support, support, support!  What does your specification say?

As an examiner, "up to 5%" could, to me, also reasonably include 0.0.  An example I have seen is where you have something undesirable, like misalignment of two layers, or an impurity, and you have a tolerance of "up to 5%."  Ideally, the tolerance is 0.0, so the "up to 5%" would reasonably be construed to include 0%.

Does your specification say "0-5%" each time the limitation is discussed?  Then while I would accept the language "up to 5%" in your claims, I would interpret it as "0-5%," and if you wanted me to interpret it to exclude 0%, I would say you don't have support for that limitation.  Similarly, if all you discuss in the specification is "0-5%," then I wouldn't allow an amendment to say "2-4%" because your specification doesn't demonstrate that you had possession of that particular sub-range, absent examples or discussion of that narrower range.

However, if you have a table of examples that includes 0.0%, 0.1%, 0.5%, 1.5%, 3%, 5%, and 6%, and it shows that 0.0% and 6% have somehow inferior results to 0.1% . . . 5%, then I would consider that to support the narrower range of "up to 5%" as excluding 0.0%.

 on: Yesterday at 10:41 am 
Started by Tabo - Last post by bluerogue
How about "the composition contains a further additive in a proportion of [[0]] up to 5% by weight with respect to the first additive"
Alternately, can you strike it and put it in a dependent claim?  If it's an optional additive, I would probably prefer this.

This is probably the best way to handle it. I would treat a limitation of 0-5% as 0% under BRI and give it no weight. Up to 5% in a dependent claim is much harder to say that it includes 0% as it makes the limitation superfluous and probably a BunRI.

 on: Yesterday at 10:12 am 
Started by Robert K S - Last post by Robert K S
Well, post-9:00 AM Eastern, and it's not up in either PAIR or the search database yet, but I do note that a signing ceremony is on the President's schedule for 3:45 PM today.

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