JSonnabend

[smgsmc]

Hi.  My previous thread got hijacked.  My first inclination was to ask the moderator to delete most of the drivel.  However, that would waste my time and the moderator's time.  I ask ("invite" in PCT lingo) posters who get their jollies off by bashing each other in public forums to buy micrometers on eBay and compare measurements on the eBay discussion forums...seems to be the norm over there.

Back to my original post, with a different variant.

Proposed claims:

Original form

1.  A communications system comprising:

a first transmitter configured to transmit a first code sequence;

(other claim elements)

2.  The communications system of claim 1, further comprising:

a second transmitter configured to transmit a second code sequence;
an adder configured to sum the first code sequence and the second code sequence;
a multiplier configured to multiply the first code sequence and the second code sequence;

(other claim elements).

The transmitters are identical, but with adjustable parameters.  For example, two cell phones that can transmit different codes or different frequency channels.  "Configured to" is handled in a separate thread, so please do not discuss that issue here.

Filtering out the drivel:  One responder said it's OK.  A proposed option would be:


1.  A communications system comprising:

a transmitter configured to transmit a code sequence;

(other claim elements)


2.  The communications system of claim 1, further comprising:

a second transmitter configured to transmit a second code sequence;
an adder configured to sum the first-mentioned code sequence and the second code sequence;
a multiplier configured to multiply the first code sequence and the second code sequence;

(other claim elements)

Here, apparently, in claim 2, the code sequence in claim 1 morphs seamlessly from "code sequence" to "first-mentioned code sequence" to "first code sequence" without any antecedent problems.

Another option, which avoids any possible antecedent problems, is to explictly declare in claim 2, "wherein the transmitter of claim 1 is a first transmitter and the code sequence of claim 1 is a first code sequence". 

Personal preferences aside, is there a basis for rejecting my original claims?  Thanks. 

[ChrisWhewell]

transmitter configured to transmit is redundant.   by definition, a transmitter is configured to transmit, otherwise its not a transmitter and I'd leave out the configured wording.


1.  A communications system comprising:
a code sequence transmitter;
(other elements)

2.  The communications system of claim 1, further comprising:
at least one additional code sequence transmitter;
an adder... ;
a multiplier...;
(other elements)

Define code sequence transmitter however you want to in the spec and be sure to tie all the elements together cooperatively so its not a bunch of parts in a box.  See the disclaimer below.

 

[BobRoberts]

1.  A communications system comprising:

a transmitter configured to transmit a code sequence;

(other claim elements)


2.  The communications system of claim 1, wherein the transmitter is a first transmitter and the code sequence is a first code sequence, further comprising:

a second transmitter configured to transmit a second code sequence;
an adder configured to sum the first-mentioned code sequence and the second code sequence;
a multiplier configured to multiply the first code sequence and the second code sequence;

(other claim elements)

This is my vote.  Probably based on personal preferences.  As another posted in the original thread, you could move the 'antecedent basis defining' from the preamble to the body of claim 2.

Why would I use "transmitter" rather than "first transmitter" in claim 1:  to me, "first transmitter" at least opens the door to implying that there is a second transmitter, and thus if a person/potential infringer doesn't have a second transmitter, they could argue that they don't have a second transmitter and thus don't infringe.  Would it be successful?  Who knows.  But if I could curtail that argument in the claim drafting process, I would.  I was taught to use the least amount of words possible to get adequate protection of the subject matter, as in most cases, additional words have at the least, the potential to limit your claim further (and the goal is to get the broadest claim possible.

[smgsmc]

1.  A communications system comprising:

a transmitter configured to transmit a code sequence;

(other claim elements)


2.  The communications system of claim 1, wherein the transmitter is a first transmitter and the code sequence is a first code sequence, further comprising:

a second transmitter configured to transmit a second code sequence;
an adder configured to sum the first-mentioned code sequence and the second code sequence;
a multiplier configured to multiply the first code sequence and the second code sequence;

(other claim elements)

Hi Bob.  Thanks for the rationale.  It always helps me decide if I know the reasoning behind it.  I would assume, though, that under your construction, "first" would be OK in the body of the claim, and "first-mentioned" would not be needed (or maybe even incorrect).  I just don't like the sound of "first-mentioned".

[smgsmc]

transmitter configured to transmit is redundant.   by definition, a transmitter is configured to transmit, otherwise its not a transmitter and I'd leave out the configured wording.


1.  A communications system comprising:
a code sequence transmitter;
(other elements)

2.  The communications system of claim 1, further comprising:
at least one additional code sequence transmitter;
an adder... ;
a multiplier...;
(other elements)

Define code sequence transmitter however you want to in the spec and be sure to tie all the elements together cooperatively so its not a bunch of parts in a box.  See the disclaimer below.

 

Your formulation does not address the issue of a single claim containing elements referring to both the original code sequence transmitter of claim 1 and the "at least one additional code sequence transmitter".  Especially, in this instance, the outputs of the transmitters are different and need to be individually referenced.

[ChrisWhewell]

LOL, I wasn't trying to hold your hand and write the entire claim for you, I realized there would be additional information you hadn't provided, as you've now added and of course other words would be necessary.  If you don't like it, that's ok but no need to throw rocks when everybody and their mother knows I wasn't providing a complete claim ---- was just a suggestion of a framework that avoids "first" and "third" language as in the original posting.

Good luck !! 

[klaviernista]

Is the application already filed?  If so, how does the specification describe the components in question?  If one of ordinary skill can udnerstand the claims in light of the specification, than there is no issue in the U.S. with using "first" without "second" in a claim, and using "third" in a claim that refers back to another claim which does not incorporate "second."  It is not the clearest possible language, sure, but the law does not require claim language to be absolutely clear.  It just has to be "clear enough" to particularly point out and distinctly claim the subject matter the applicant regards as the invention.

That being said, the use of "first" without "second" in a claim, and/or the subsequent use of "third" without a "second" could result in problems if the application is filed abroad.  Many countries require an applicant to claim so called "essential elements" of the invention.  Its seems plausible that in your situation, a foreign examiner could assert that the claim language implies a "second" element that is essential, and must be claimed.

[smgsmc]

Is the application already filed?  If so, how does the specification describe the components in question?  If one of ordinary skill can udnerstand the claims in light of the specification, than there is no issue in the U.S. with using "first" without "second" in a claim, and using "third" in a claim that refers back to another claim which does not incorporate "second."  It is not the clearest possible language, sure, but the law does not require claim language to be absolutely clear.  It just has to be "clear enough" to particularly point out and distinctly claim the subject matter the applicant regards as the invention.

That being said, the use of "first" without "second" in a claim, and/or the subsequent use of "third" without a "second" could result in problems if the application is filed abroad.  Many countries require an applicant to claim so called "essential elements" of the invention.  Its seems plausible that in your situation, a foreign examiner could assert that the claim language implies a "second" element that is essential, and must be claimed.

Thanks.  The spec is clear that there may be one or more.  This is a situation that crops up frequently in communications systems.  For example, a WiFi network typically has multiple transmitters (one per user, for example), but you want to make sure the claim covers a single user.  If there is only one user, you don't need to include a limitation on sharing bandwidth or dealing with interference between transmitters in the independent claim.  If there are multiple users, there will be a dependent claim covering bandwidth sharing and interference mitigation.  Thanks for the insight into foreign apps.  I like Bob's formulation (thanks again, Bob), so I'll use that in the future.

[BobRoberts]

" "first" would be OK in the body of the claim, and "first-mentioned" would not be needed (or maybe even incorrect).  I just don't like the sound of "first-mentioned"."

It's pretty obvious I hadn't had my coffee when I used "first-mentioned"- I agree with you, that I don't like the way it sounds either...  I agree with you that "first code sequence" would be adequate (and preferred).

[JustAnotherExaminer]

transmitter configured to transmit is redundant.   by definition, a transmitter is configured to transmit, otherwise its not a transmitter and I'd leave out the configured wording.

There are some gnarly examiners who believe that the name of a component is just a name, solely a name, and nothing more than a name.

Our argument is usually: The alleged functionality imposed by the name is merely a capability, and not an actual required, positive functionality.
Example: A desk could be a transmitter.  A desk may be capable of transmitting.  But a desk may not necessarily be configured to transmit.

Hopefully that confuses things even more.    This coming from an examiner who rarely sees non-functional claiming. Practices vary with technology, so take this with a grain of salt.

[smgsmc]

transmitter configured to transmit is redundant.   by definition, a transmitter is configured to transmit, otherwise its not a transmitter and I'd leave out the configured wording.

There are some gnarly examiners who believe that the name of a component is just a name, solely a name, and nothing more than a name.

Our argument is usually: The alleged functionality imposed by the name is merely a capability, and not an actual required, positive functionality.
Example: A desk could be a transmitter.  A desk may be capable of transmitting.  But a desk may not necessarily be configured to transmit.

Hopefully that confuses things even more.    This coming from an examiner who rarely sees non-functional claiming. Practices vary with technology, so take this with a grain of salt.

This topic (raised in another thread) is tangential to my original post here.  But since I have a satisfactory resolution to my original post, I'd like to follow this thread.  Thanks very much for your insights into the redundancy issue.  I find them helpful. 

Also, one doesn't simply claim  "a transmitter configured to transmit", which could be debated as being unnecessarily redundant.  On the flip side, in a response to a rejection, could one readily argue inherency that a transmitter transmits?  What are your thoughts, from an Examiner's perspective?

One usually claims "a transmitter configured to transmit a <specific signal or message>", such as

"a transmitter configured to transmit a 100 MHz sine wave"

"a transmitter configured to a transmit a carrier wave modulated with a pseudo-random number code"

I really don't see a redundancy issue here.  Also, as I raised in a previous post, for those who don't like redundancy, what word would you substitute without raising potential ambiguity issues.

"a transmitter configured to <?> a 100 MHz sine wave"  .  If you simply mean "transmit", but don't want to be redundant, what word would you use?

Depending on the specific context (as usual) one could want to claim additional properties of a transmitter:

"the transmitter of claim 1, further configured to generate white noise"

or even "the transmitter of claim 1, further configured to receive a 100 MHz sine wave".  In this case, though, I would not use "transmitter" in claim 1, but a more generic term such as "network element"  (properly defined in the spec, of course), which could be configured to transmit or receive.

I think "a transmitter configured to <?> ...", where <?> is some word other than "transmit" would raise the issue that some other function is intended.  But a "transmitter configured to transmit ..." would not be open to other interpretations.  What are your thoughts, from an Examiner's perspective?

Thanks.

[ChrisWhewell]

I also like  "a ______ transmitter for ......" language.   Kind of like a means for, but without the means and all the baggage that can bring with it.

1) System for asdfg;lkjh, comprising:

a) a database containing.....  in computer-readable memory
b) database manager for ....
c) a server transceiver for....
d) a remote user transceiver for....
e) etc

2) System according to claim 1 further comprising at least one additional remote user transceiver...