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 51 
 on: 05-18-17 at 11:32 am 
Started by dab2d - Last post by dab2d
So if Company A files under an Intended Use application, filed two extensions and failed to file a 3d (however it can still be revived by fee), can Company B now file for the name.... Is it advisable to wait?

 52 
 on: 05-18-17 at 10:30 am 
Started by Rabid Levity - Last post by lazyexaminer
It's not 100% the same situation, but I have seen board decisions for apparatus/method claims that treat the analysis for the apparatus differently from the method.  The examiner tried to use the same logic to reject the method as the apparatus - the board affirmed the apparatus rejection but reversed the method rejection.

I think you're talking about this. There is a recent case (can't remember it) where the board said that in a method, configured to is not given patentable weight, but in a system/CRM type claim, the system must be configured to do X because that requires logic on the system and is therefore given patentable weight.

I don't know if you're thinking of this case, Ex parte Schulhauser, precedential PTAB decision
https://www.uspto.gov/sites/default/files/documents/Ex%20parte%20Schulhauser%202016_04_28.pdf

General summary: Conditional statements get no weight in a method claim, because BRI includes instances where the condition isn't satisfied. But they can get weight in a device claim, because the structure needs to be able to handle both the condition happening or not.

 53 
 on: 05-18-17 at 10:25 am 
Started by midpatent - Last post by midpatent
Thanks for the replies, I'll be safe and redefine.

 54 
 on: 05-18-17 at 10:14 am 
Started by Rabid Levity - Last post by bluerogue
It's not 100% the same situation, but I have seen board decisions for apparatus/method claims that treat the analysis for the apparatus differently from the method.  The examiner tried to use the same logic to reject the method as the apparatus - the board affirmed the apparatus rejection but reversed the method rejection.

I think you're talking about this. There is a recent case (can't remember it) where the board said that in a method, configured to is not given patentable weight, but in a system/CRM type claim, the system must be configured to do X because that requires logic on the system and is therefore given patentable weight.

 55 
 on: 05-18-17 at 10:12 am 
Started by midpatent - Last post by bluerogue
I would prefer you redefine the abbreviation since the independent claim is independent of the 1st independent claim.  I'd give it a claim objection in an office action if it wasn't redefined.

 56 
 on: 05-18-17 at 10:02 am 
Started by midpatent - Last post by snapshot
YMMV from one examiner to the next, but I would object to a further independent claim that doesn't redefine an abbreviation or acronym.

 57 
 on: 05-18-17 at 10:01 am 
Started by Rabid Levity - Last post by snapshot
It's not 100% the same situation, but I have seen board decisions for apparatus/method claims that treat the analysis for the apparatus differently from the method.  The examiner tried to use the same logic to reject the method as the apparatus - the board affirmed the apparatus rejection but reversed the method rejection.

 58 
 on: 05-18-17 at 09:59 am 
Started by midpatent - Last post by midpatent
if you define an abbreviation in one independent claim, can you use the abbreviation in another independent claim, or do you have to redefine?

For example, I have independent claim 1 which reads "manual of patent examining procedure (MPEP)."  Can I just use MPEP in independent claim 2, or do i Need to recite "manual of patent examining procedure (MPEP)" again.

 59 
 on: 05-18-17 at 07:51 am 
Started by Rheo - Last post by Rabid Levity
My first thought is - RUN.  I.e., you will be in an untenable situation with inventors at each others' throats, and that eventually they'll be at your throat (especially with a likely scanty specification, and drawn up in haste as you suggest, and troubles in prosecution).  Or try to drag you into the midst of their squabbles.

At a minimum, if this firm wants to transfer it to you, put the responsibility on the firm of obtaining all necessary POAs in your name.

 60 
 on: 05-18-17 at 07:45 am 
Started by Rabid Levity - Last post by Rabid Levity
Hi mersenne and bluerogue, thanks much for your comments.  They pretty much do stand/fall together on these two claim elements.

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