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Author Topic: obsessive definintion  (Read 600 times)

dbmax

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obsessive definintion
« on: 04-12-17 at 11:48 am »

Where the word "remainder" is not used in the specification, is there any need to explicitly define the word as in claim 1b?

1a) A bat comprising a handle.

1b) A bat consisting of a handle and a remainder.

2) A bat according to claim 1 wherein the handle is blue and wherein the remainder is red.
« Last Edit: 04-12-17 at 11:50 am by dbmax »
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smgsmc

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Re: obsessive definintion
« Reply #1 on: 04-12-17 at 01:09 pm »

Where the word "remainder" is not used in the specification, is there any need to explicitly define the word as in claim 1b?

1a) A bat comprising a handle.

1b) A bat consisting of a handle and a remainder.

2) A bat according to claim 1 wherein the handle is blue and wherein the remainder is red.

I think there will be issues with "remainder" if it is not used in the spec.  How about something along the lines of:

1'.  A bat comprising a first portion and a second portion, wherein the first portion comprises a handle.

2'.  The bat according to claim 1', wherein the handle is blue and the second portion is red.

Also, your use of "consisting of" in your orig 1b could possibly lead to an easy design around if it's not clear that "remainder" means all else in the bat other than the handle.
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still_learnin

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Re: obsessive definintion
« Reply #2 on: 04-12-17 at 03:51 pm »

Where the word "remainder" is not used in the specification, is there any need to explicitly define the word as in claim 1b?

1a) A bat comprising a handle.

1b) A bat consisting of a handle and a remainder.

2) A bat according to claim 1 wherein the handle is blue and wherein the remainder is red.

I think there will be issues with "remainder" if it is not used in the spec. 

I disagree, I think "remainder" is inherent. But also so broad, in and of itself, as to be basically useless.

IMHO, claim 2 might be vulnerable to a 112 First rejection, depending on the spec. Even though it's inherent that a bat has a handle and a remaining portion, it's not inherent that the remaining portion has any particular characteristics. So you'd need some support in your spec/drawings showing that a non-handle portion of the bat has different characteristics.

Maybe dbmax is focusing only on the word choice for the non-handle portion of the bat, and support for different characteristics isn't a problem. In that case, like I said, I view a remainder portion to be inherent in a bat with a handle. Doesn't mean an Examiner won't take exception to it, though.

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The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.

dbmax

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Re: obsessive definintion
« Reply #3 on: 04-12-17 at 04:22 pm »

Thanks smgsmc and still learnin,

Where "redness" (shown in the drawings and spec) is the only important characteristic of the remainder, but where the remainder might comprise a second handle,  perhaps this is a better example of the original question:

1a) A satchel comprising a first handle.

1b) A satchel consisting of a first handle and a remainder.

2) A satchel according to claim 1 wherein said first handle is blue and wherein the remainder is red.
 
« Last Edit: 04-12-17 at 04:58 pm by dbmax »
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wildkrazyguy

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Re: obsessive definintion
« Reply #4 on: 04-14-17 at 01:11 pm »

Agree with smgsmc. Just avoid it. it doesn't get you anything, it's easily avoidable, and it potentially hurts you a lot in examination or litigation.

1a) A bat comprising a first handle.

1b) A bat consisting of a handle and a remainder.

2) The bat according to claim 1 comprising a blue portion and a red portion, wherein the first handle comprises the blue portion.

3) The bat according to claim 1 comprising a second handle. etc. etc.
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dbmax

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Re: obsessive definintion
« Reply #5 on: 04-20-17 at 03:51 pm »

....wherein the first handle comprises the blue portion.

wildkrazyguy,

      Looks like a simple way to avoid  "blue portion consisting of a first handle"

Thanks,
db
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