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 51 
 on: 05-20-18 at 07:36 pm 
Started by Weng Tianxiang - Last post by smgsmc
A is always done with one or more X, regardless of whether one or more Y exist;
A is done again with one or more Y, if one or more Y exist.

If you really mean A is done twice (once by Xs, and a second time by Ys) then you should probably say that:

Quote
A method comprising:
doing A a first time using at least one X; and
doing A a second time using at least one Y

For your "zero or more Y" issue, if you mean that you do A once with Xs, and then if you have any Ys, you do A again, you could write it as an independent/dependent pair:

Quote
1. A method comprising:
doing A a first time using at least one X.

2. The method of claim 1, comprising:
when at least one Y is available, doing A a second time using the at least one Y.

Note that methods should have at least two steps (which should be called "operations," last I heard).  So the independent claim probably needs at least one other step.
Weng, we've been concentrating on one aspect of a simplified hypo.  In your actual claim (not to be discussed on this public forum), you should take into account mersenne's comments and decide the appropriate wording when doing A is repeated [whether or not adding "again" or using "first time" and "second time" (or some other wording) is appropriate, or even necessary, depends on the actual claim].

 52 
 on: 05-20-18 at 07:28 pm 
Started by Weng Tianxiang - Last post by smgsmc
Hi smgsmc,

I decide to accept your suggested claim method.

Because of MYK's comment:

"People have commented here in the past that "if" is a bad word to use in claims.  "When ... then" is apparently the preferred phrasing."

so I still have the following question pending in my mind:

1. A method..., comprising:
...
doing A with one or more X;
doing A with one or more Y when the one or more Y exist; <-- patentable weight?
...

Thank you and others for taking time to response my questions.

In some instances, conditional claiming is unavoidable.  Consider the hypo:

A method for controlling room temperature, the method comprising the steps of:
    measuring the room temperature;
    comparing the measured room temperature to a first reference room temperature;
    comparing the measured room temperature to a second reference room temperature, wherein the second reference room temperature is less than the first reference room temperature;
    if the measured room temperature is greater than the first reference room temperature, then turning on a room chiller; and
    if the measured room temperature is less than the second reference room temperature, then turning on a room heater.

Now “if ... then” statements are widely used by process engineers and computer programmers and should not present a problem, correct?  Well, some Examiners take the stance that “if” introduces a hypothetical condition, and hypothetical conditions are given no patentable weight.  Therefore the claim is gutted.

Depending on the Examiner, the following is acceptable:

A method for controlling room temperature, the method comprising the steps of:
    measuring the room temperature;
    comparing the measured room temperature to a first reference room temperature;
    comparing the measured room temperature to a second reference room temperature, wherein the second reference room temperature is less than the first reference room temperature;
    when the measured room temperature is greater than the first reference room temperature, turning on a room chiller; and
    when the measured room temperature is less than the second reference room temperature, turning on a room heater.


My preferred wording is the following:

A method for controlling room temperature, the method comprising the steps of:
    measuring the room temperature;
    comparing the measured room temperature to a first reference room temperature;
    comparing the measured room temperature to a second reference room temperature, wherein the second reference room temperature is less than the first reference room temperature;
    upon determining that the measured room temperature is greater than the first reference room temperature, turning on a room chiller; and
    upon determining the measured room temperature is less than the second reference room temperature, turning on a room heater.


You yourself referred to the following discussion of conditional claiming:

http://www.ipwatchdog.com/2017/08/28/beware-conditional-limitations-when-drafting-patent-claims/id=87242/

You see that there are many issues that will land you in an appeal to the PTAB or the CAFC during prosecution (and that will land you in hot water during litigation).

So, again, my advice is that if you can write your claim set without conditionals, then do so.  In your instance, I’ve shown how it can be done.  You seem to want the conditional, not because it is necessary, but because it leads to a more compact claim set.  This is not a compelling reason.  Personally, I would not use your preferred claim wording.  Whether it is acceptable or not, I don't know.  But it at least raises red flags that there is likely trouble down the road.




 53 
 on: 05-20-18 at 06:39 pm 
Started by Weng Tianxiang - Last post by Robert K S
People have commented here in the past that "if" is a bad word to use in claims.  "When ... then" is apparently the preferred phrasing.

I think "...based on [X], [doing Y]..." is even more clear and positively recited.  "When" might be argued to be equivalent to "if".

 54 
 on: 05-20-18 at 04:18 pm 
Started by fortiz303 - Last post by fortiz303
Hello all!

I have a product that (I thought) was new to the market. It's been less than a year since I disclosed it to the public, and the product has sold EXTREMELY well with no competitors- BUT the problem is that the one year window to file the patent will close soon (another 3 more months) and I want to make the move now before it's too late.

The invention was discovered in the 70's although the inventor never placed the product on the market. What I am seeking now is somebody who is going to law school, somebody who is familiar with the patenting process or a patenting lawyer who would be open to an equity split of the product.

I would love to discuss this with you further if it is of any interest to you and mods, if this is not placed in the right place, please let me know.

Best!

 55 
 on: 05-20-18 at 02:44 pm 
Started by Weng Tianxiang - Last post by Weng Tianxiang
Hi smgsmc,

I decide to accept your suggested claim method.

Because of MYK's comment:

"People have commented here in the past that "if" is a bad word to use in claims.  "When ... then" is apparently the preferred phrasing."

so I still have the following question pending in my mind:

1. A method..., comprising:
...
doing A with one or more X;
doing A with one or more Y when the one or more Y exist; <-- patentable weight?
...

Thank you and others for taking time to response my questions.


 

 56 
 on: 05-20-18 at 11:53 am 
Started by ralphael - Last post by ralphael
This is the first time I want to get a patent.
I just want to know how much of the patent the write and how much/what they expect me to provide them.

I have a rough sketch of a utility patent in the sense that I have a Claim section, History and Detailed Information section and have drawn figures and since I've studied law myself tried to keep the text as much as a legal document as possible.
is this enough to provide to the agent/attorney, or do I need to do more myself before presenting it to the attorney/agent?

 57 
 on: 05-20-18 at 11:44 am 
Started by ralphael - Last post by ralphael
Thanks. Any chance USPTO has a list of patent attorneys and agents or firms rather than a search form?

Thank you for the latter as now I can verify if a patent attorney I find is real or not

If this is not against the rules, any patent attorney/firm recommendations would be very welcome. If it is against the rules, just ignore this paragraph.

Again thank you.

 58 
 on: 05-20-18 at 07:45 am 
Started by Weng Tianxiang - Last post by smgsmc
Hi smgsmc,

I think that your claim construction and mine still have a big difference:

A. Mine:
1. Method..., comprising:
...
doing A with one or more X;
doing A with one or more Y if the one or more Y exist;
...

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

B. Yours:
1.  A method comprising:
doing A with one or more X;
....


2.  The method of claim 1, further comprising:
doing A with one or more Y;
....


C. The claim set equivalent to mine should be:
1.  A method comprising:
doing A with one or more X;
....


2.  The method of claim 1, further comprising:
doing A with one or more Y;
....

3. The method of claims 1 and 2 further comprising: <-- introduction of a multiple dependent claim
...

4. The method of claim 3, further comprising:

I will try to determine if your construction is valid for me.

Thank.
In the US, you should avoid multiple dependent claims [in the EPO, you should embrace them].  Here's one way to go:

1.  A method comprising:
doing A with one or more X;
....

2.  The method of claim 1, further comprising:
doing B;
....

3.  The method of claim 2, further comprising:
doing C;
....

4.  The method of claim 1, further comprising:
doing A with one or more Y;
....

5.  The method of claim 4, further comprising:
doing B;
....

6.  The method of claim 5, further comprising:
doing C;
....

 59 
 on: 05-20-18 at 07:34 am 
Started by Weng Tianxiang - Last post by smgsmc
Hi smgsmc,

I would like to accept your advice and use the method with 2 divided claims instead of 1 claim.

But here is another problem that may arise and I would like to clarify:

The claim 1 must be executable.

In my situation the divided claim 1 cover only one special situation in billion situations, and both claims 1 and 2 cover all relevant situations.

The added divided claim 2 would expand the range from claim 1 dramatically actually, not limit the range of claim 1?

Is there any new problem?

Thank you.
(1) You are confusing claim scope with most probable commercial embodiment. 

(2) From a mathematical perspective, a dependent claim is a proper subset of an independent claim; therefore, a dependent claim always has a narrower scope than the independent claim.

(3) If there is a particular embodiment (having further limitations in addition to those in the independent claim) that you think will be the one that will be commercially marketed, then include those further limitations in a dependent claim.

(4) It is the entire claim set that protects your invention.

(5) As an analogy, consider claims for a smartphone.  The independent claim should not include the limitation of a camera, because it is not a necessary feature, and you want a copycat unit without a camera [should someone care to produce such a unit] to infringe.  A dependent claim should include the further limitation of a camera.  The fact that all commercial smartphones will probably have cameras [and a smartphone without a camera wouldn't sell very well these days; but that probably was not clear when they were first introduced]  is irrelevant to this claim strategy.

 60 
 on: 05-20-18 at 04:13 am 
Started by ralphael - Last post by MYK
Quote
may be a home address rather than a work address.

What is the difference as long as its in the registry?
Well, for one thing, most people don't like being contacted at home about work matters.  For another, they may be working directly for a company and it's rather pointless to contact them if they are in-house, since their employment contract would most likely prohibit them from working on outside matters.  For a third, it may be outdated information.

It's useful to use the site to check that they exist;  it doesn't tell you that they're available to take you on as a client.

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