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 on: Yesterday at 10:50 am 
Started by Patentstudent - Last post by mybrainisfull
Personally, I prefer to hone in on the essence of the invention, and avoid incorporating any intended use into the claim (e.g. attaches to cables; car 2 towing car 1; hit by car 3).

For example:

1. A coupling apparatus comprising elements x, y and z, configured to engage when linear tension is applied between x and y, and disengage when a predetermined force is exerted upon z.

2. The apparatus of claim 1, wherein the angle of force required for disengagement is between 45 and 90 degrees relative to the linear tension between x and y.

I guess the risk of doing it that way would be enlarging the universe of pertinent prior art, because "couplings" could be used for many things other than tow cables. So, if the "essence" of the claimed subject matter (i.e. the coupling apparatus) does not appear to be novel in itself, you might have to weave other elements into the claim (e.g. tow cables) to hopefully limit the scope of inquiry for prior art, and at least give you some ability to argue prior art references when viewed in combination (e.g. a coupling apparatus + tow cables) would not be obvious (or operable as claimed).

Just my 2c. I'm not an attorney.

 on: Yesterday at 09:33 am 
Started by FroggyStyle - Last post by MYK
The only B.S.-bio patent attorney I've run across is one who took the exam to get the registration number, but who works for a construction law firm in a rural area.  Similarly, a classmate of mine had enough physics credits to take the exam, but his degree was in history so he works on Latin American bond issues, and another classmate had a Ph.D. in the wrong type of biology and ended up working in-house in the dairy industry.  Law school is a very common fallback for people who went the biology route, couldn't get into med school, and didn't want to become a lab technician.

For marketability as a patent agent or patent attorney, you'd want to get another degree.  If you really, really want to be a lawyer, you can be some other type, but I wouldn't recommend law school unless you get into a top-25, preferably a top-10.

 on: Yesterday at 08:16 am 
Started by FroggyStyle - Last post by FroggyStyle
First time poster here:  I am very curious about patent law and was pushed into pursuing that after my naval career.  After some research I was a bit discouraged after reading about advanced degrees in life sciences being necessary.  How true is this?  And what would my life be like after law school with my current credentials and what are some recommendations to make myself more marketable?

About me:
- BS in Biology 3.0, intended to go to med school prior to military
- 12 years as a Navy SEAL, still active
- damn good at video games haha, also pursuing fixtion writing


 on: 02-20-17 at 10:42 pm 
Started by Variusz - Last post by bluerogue
More or less what lefty said.  You cannot claim priority on a provisional to a foreign filing.  That would extend your provisional period beyond 1 year.

Note that while you can claim priority to both a foreign and provisional on the ADS and under certain circumstances get priority to both, the proper circumstances does not appear to be in your fact pattern.   

 on: 02-20-17 at 10:15 pm 
Started by still_learnin - Last post by PaulWeathers

For this to apply (examiner not allowed to make final the first office action after RCE), do I have to supply arguments to all of the rejections and objections made by the examiner, or is it just the amendment that provokes the non-entry ccomment that counts?

Are points of the examiner not rebutted in the after final amendment/reply accepted to be true and any chance for later rebuttal (for instance together with filing an RCE) lost?


 on: 02-20-17 at 08:30 pm 
Started by cdk270 - Last post by NJ Patent1
Some time ago, we had an extended and vigorous discussion here on “may” versus “can” in the WD.  In well-written English, “may” is merely permissive or speculative (it may [might] rain, but then again maybe not), ”can” is affirmative / enabling (you can use this in my invention and it works) and does not per se limit.  The fact that I can get form NYC to BOS by train does not preclude that I can get there by plane.  But Garner’s “Modern American Usage” suggests that, in everyday usage, the distinction has been lost.  Legal writing is not (or IMO should not be) “everyday usage”; well except to the PHOSITA in art in question.  To cut to the case, it might feel good, but “may” is unlikely to buy you any more scope that “can” would, esp in M+F land that I try to avoid.  But I can’t cite a case where “may” in the WD killed a M+F claim. 

As for examples of M+F, simply search for “means” or “means for” in the claims search field on USPTO website.  These words invoke a presumption.  In your hypo claim, I’d be more concerned about description and enablement. 

 on: 02-20-17 at 07:00 pm 
Started by Patentstudent - Last post by NJ Patent1
student:  First a question:  is the “device” a), an integral part of the tow cable, or b) an add-on or “aftermarket” device?  I assume a) and give it a shot. 

A tow cable (for ... = optional) comprising:
   a) a cable member having a long axis and first and second ends, first and second ends each having a hook detachably attached thereto via a respective disengagement member, and

   b) a disengagement sensor, fixedly integrated between the first and second ends, in [mechanical, electrical, radio?] communication with at least one of the disengagement members,

   wherein the disengagement sensor communicates a disengagement signal to the at least one of the disengagement members in response to a sensed force applied perpendicular to the long axis of the cable, causing …   

 on: 02-20-17 at 04:52 pm 
Started by patentbro - Last post by smgsmc

But that I am confused about that last part because "Passed [month and year] - awaiting registration" is almost exactly what I currently have on my resume.  Why is that wrong?

It's not wrong per se.  It just doesn't position you in the best light.

(a) In some instances, your resume will first be screened by a software filter, searching for the magic words "Registered Patent Agent, USPTO Registration No. XX,XXX".  In which case, the filter will direct your resume to the trash bin.

(b) OK, assume there is no software filter and your resume is screened by a human reviewer.  In many instances, the reviewer will skim your resume for ~ 30 sec and sort it into one of three bins:  "yes" (worthy of further consideration), "no" (trash), and "maybe" (requires special handling).  Of course, you want your resume to be directed to the "yes" bin.  But, since you do not have a registration number, it will likely end up at best in the "maybe" bin, even if your credentials are otherwise a good match to the firm's needs.  If the "yes" bin is sufficiently populated, however, the "maybe" bin gets folded into the trash bin.  [Of course, you could luck out, and the reviewer thinks "I've never heard of anyone being rejected because of a negative comment", so it's a "yes".]

(c) So you wait, haven't had a nibble, and you eventually get your registration number.  You update your resume and send it out again to the same firms (as well as others).  If it hits a previous reviewer, perhaps he's forgotten about your first resume, and gives your second resume a fresh look.  But perhaps there's a subconscious memory and a hidden bias that he passed you over the first time for some reason.

 on: 02-20-17 at 02:47 pm 
Started by Weng Tianxiang - Last post by Weng Tianxiang
Hi mersenne,

Here is a misunderstanding with "one or more" replaced with "at least one" in my application:

Here is the partial original claim: or more copies of the paired critical path component together having the input data acceptable on every clock cycle.

It means that all copies together have the input data acceptable on every clock cycle.

partial new claim: least one copy of the paired critical path component together having the input data acceptable on every clock cycle.

It means that at least one copy has the input data acceptable on every clock cycle, not all together!

Thank you.


 on: 02-20-17 at 01:39 pm 
Started by Weng Tianxiang - Last post by Weng Tianxiang
Hi mersenne,

Your teaching is excellent and I will print it as an attachment to my book: "Invention Analysis and Claiming".

"At least" is much better than "one or more" and I will change my 2 pending filings absolutely.

The text "one or more" is copied from somewhere.

The reason for my preference is that some examiners are touchy about the word or, even when it's completely unambiguous.  And arguments over things like that distract from the central goal of claiming your invention clearly, making sure the Examiner understands what to search for, and that s/he does a good search for it.

If your invention improves a single pipeline, then you might consider claiming just one pipeline in the independent claim.  Then, in a dependent claim, you can say something like:

The system of claim 1 comprising at least two pipelines, wherein each of the at least two pipelines is three instructions long.


The system of claim 1 comprising at least two pipelines, wherein each pipeline of the at least two pipelines is three instructions long.

This teaching is my another benefit and it is exactly what I meet in my second pending application!!!

How wonderful it is!!

Actually I, as an inventor and pro se, have many similar situations to deal with that are basic practices for senior lawyers.

Next time I dare to ask more questions!

And thanks to this website, many professional lawyers, even Examiners from USPTO like bluerogue, like and are willing to devote their precious times to help others while communicating with other lawyers.

Thank you.


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