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 31 
 on: 09-14-17 at 05:25 pm 
Started by dbmax - Last post by bluerogue
Wouldn't that mean the apparatus must be able to emit the specific wavelength and the wider band? And if we interpret that way, the dependent is narrower, right?
An apparatus configured to emit light at a wavelength of 475nm AND configured to emit light at 450-495 nm. 

I said "be able to" because of "configured to." Which made me wonder if the narrowing -- which results from adding further capability -- is an artifact of this way of claiming.
So, thinking further, what happens in a method claim? For a method, I think it depends on precisely how you choose to narrow.

22) An apparatus according to claim 1 where the emitting further comprises emitting blue light.   
I can't decide whether claim 22 requires two emissions or not.

Interesting question indeed.  Easy answer is that you should probably avoid such claiming lest you end up rolling the dice at the PTO and Fed. Cir. :)

In the apparatus case, it probably depends on how "configured to emit light at 450-495 nm" is interpreted.  One interp would be that the device emits light at 475 and also throughout the entire range of 450-495.  That's arguably narrowing since the device now has to emit more than just 475.  In a different interpretation where the device is capable of emitting any wavelength from 450-495, and it already emits 475, then it's probably not limiting because if it's capable of emitting light at 475, then it meets the range limitation inherently as the device in claim 1 emits light in that range already.

As to the hypothetical claim 22, I'm not sure either.  I'd probably subject it to a 112b to have you clarify what you mean by "emitting blue light." Does it emitting only 475 light meet the limitation or does it emit the entire range of 450-495?  Both would be valid interpretations and absent any further definition would not appraise the public of the metes and bounds of the application and all that.

 32 
 on: 09-14-17 at 04:29 pm 
Started by mersenne - Last post by still_learnin
Does anybody have any pointers for looking at a claim that was re-written by the examiner at the very end of prosecution?  I normally go through from filing to allowance, looking at all the amendments, but in this case, there was a complete rewrite by the examiner at the end.

What do you mean by "complete rewrite"?

I've seen some Examiner amendments with a ton of strikethroughs that didn't actually change scope that much. Stuff like "configured to" changed to "operable to." Or adding a wherein to each clause instead of a single wherein at the start. Or purely formatting changes, like adding returns/linefeeds, or changing semicolons to commas.


 33 
 on: 09-14-17 at 03:28 pm 
Started by mersenne - Last post by mersenne
Does anybody have any pointers for looking at a claim that was re-written by the examiner at the very end of prosecution?  I normally go through from filing to allowance, looking at all the amendments, but in this case, there was a complete rewrite by the examiner at the end.

Good news or bad (for breadth of coverage)?

 34 
 on: 09-14-17 at 02:27 pm 
Started by dbmax - Last post by still_learnin
1) An aparatus comprising a light source configured to emit light at a wavelength of 475nm....
20) An apparatus according to claim 1 wherein said light source is configured to emit blue light.   

I don't think it'd lead to a finding that claim 1 is indefinite, but you'd probably run into the rarely used 112d for claim 20.
A dependent claim needs to further limit the independent claim.  A claim that is broader would not further limit. 

Interesting issue. I'm not positive that the dependent is broader. I'll assume that "blue light" means "wavelength of 450-495 nm."

How do we interpret the combination of limitations in the dependent? How about this:
Quote
An apparatus configured to emit light at a wavelength of 475nm AND configured to emit light at 450-495 nm.   

Wouldn't that mean the apparatus must be able to emit the specific wavelength and the wider band? And if we interpret that way, the dependent is narrower, right?

I said "be able to" because of "configured to." Which made me wonder if the narrowing -- which results from adding further capability -- is an artifact of this way of claiming.

So, thinking further, what happens in a method claim? For a method, I think it depends on precisely how you choose to narrow.

Quote
1) An method of curing rubber comprising
emitting light at a wavelength of 475nm....
20) The method of claim 1 wherein the emitted light has a wavelength between 450 nm and 495 nm.
21) An apparatus according to claim 1 further comprising emitting blue light.   
22) An apparatus according to claim 1 where the emitting further comprises emitting blue light.   

I think method claim 20 is in fact broader than its independent. Claim 21 clearly requires two emissions, one at a specific wavelength and one at a range, which makes it narrower. I can't decide whether claim 22 requires two emissions or not.

 35 
 on: 09-14-17 at 02:21 pm 
Started by JTripodo - Last post by fewyearsin
PTO is hiring patent examiners as of 9-11-2017, see USAJOBS.  I'm pretty sure there was a hiring freeze, so this is the first opening for examiners in about a year, if anyone is interested.

https://www.usajobs.gov/Search/?k=patent%20examiner

 36 
 on: 09-14-17 at 02:20 pm 
Started by watsonpendelton - Last post by artchain
You published something that you did not have the rights to. 

Did the complainant claim the rights?

I suspect that your publishing contract covers this situation, and that you are not entitled to any profits.

If you want legal advice regarding your specific situation, I'd recommend a consultation with an intellectual property attorney, but I suspect based on what you have said that you don't have a case.

You can get a referral to an attorney through your local bar association.  In most cases, they will give you an initial consultation for a nominal fee.


 37 
 on: 09-14-17 at 01:21 pm 
Started by dbmax - Last post by bluerogue
I don't think it'd lead to a finding that claim 1 is indefinite, but you'd probably run into the rarely used 112d for claim 20.

A dependent claim needs to further limit the independent claim.  A claim that is broader would not further limit. 
A claim that is inherent would also not further limit and you'd probably run into a duplicate claim objection as well.

 38 
 on: 09-14-17 at 12:58 pm 
Started by dbmax - Last post by dbmax
Here's an extreme hypothetical.

1) An aparatus comprising a light source configured to emit light at a wavelength of 475nm....
...
20) An apparatus according to claim 1 wherein said light source is configured to emit blue light.   

Under the Doctrine of Claim Differentiation, can Claim 20 in this example (or any better example you might have) lead to a finding that Claim 1 is indefinite?

More generally, is there a danger in adding a dependent claim which contains a limitation which might be either inherent to or broader than the independent claim?

 39 
 on: 09-14-17 at 12:18 pm 
Started by watsonpendelton - Last post by watsonpendelton
I published a book on a publishing house website that I was unsure of having the rights to.  I told this publishing house all the details and they responded that they could not give answers until I had submitted the book.  After that, they said that they would contact me if needed.  Well, they went ahead and published the book and did not contact me until after they got a complaint.  They basically shut my account down, and took all the profits from this account.  I'm interested in taking legal action against them.  Who would handle a case like this?  Thanks.

 40 
 on: 09-14-17 at 08:38 am 
Started by Alberto - Last post by lazyexaminer
Robert's cases are referring to the combination defeating the intended purpose of the references. That is of course not permitted but that is not the issue presented in the original post, which is the combination defeating the intended purpose of the claims under review.

It is true the examiner may not know what he is doing, but this seems more complicated to me than merely a lack of basic grasp of obviousness law.

Is the purpose of the claimed invention actually claimed? Is it claimed in such a way that it requires patentable weight, as Bob suggests?

To what extent does your stated purpose of the claimed invention (especially an unclaimed one) matter in an obviousness analysis?

For example, I cannot use your spec, i.e. hindsight, to provide motivation...it doesn't matter that the inventors told me how great the combination is. So does it matter if the inventors told me the combination would not be so great? Even if the art itself points me to a good motivation? What if everyone in the art always does this, but only the inventor is the outlier who said "no don't do that it would defeat my purpose." I think all of these things would be factors that would need to be weighed.

The point of this exercise is to determine if the claimed invention would have been obvious to a PHOSITA (not just the inventor) at the time of the invention (but not using the invention as a roadmap). So I think this isn't a black and white thing and will depend on all the evidence and how strong the teachings are on all sides.

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