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Author Topic: To claim a device including a novel feature or just the novel feature?  (Read 4025 times)

mybrainisfull

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Disagree. It's certainly not intended use, as the claim clearly specifies that the valve is part of the car, not that it could be part of the car. Also, it's only "use" in the same sense that valve is a "use" of component X in claim 1 -- so not "use" in any meaningful (patent) sense.

... As you said, hypo claim 2 "identifies the valve as an element of the car," so any "use" is actual, not intended.

Still-learnin, based on your above quoted posts I think you and I have different understandings of what "intended use" means in the legal sense. You seem to be arguing that by showing the valve is "actually" being used in the car, it would be sufficient to overcome a rejection of intended use. To the best of my knowledge, that is not the proper inquiry. A rejection based on intended use could stand even if an apparatus (e.g. car) actually comprises the claimed element (e.g. valve).

The proper inquiry with regard to intended use is determining whether the structure of the claimed apparatus (i.e. valve) changes as a result of the limitation (i.e. being incorporated into a car). If it doesn't, the purported limitation is likely only describing an intended use. In other words, it's still structurally the same thing you claimed in claim 1, you're just claiming it in a different operating environment (i.e. a car), or for a different use or purpose. Since the hypo claim 2 merely says "A car having the valve of claim 1", I don't see any structural difference of the claimed apparatus between claim 1 and claim 2, hence my opinion.

However, since smgsmc previously scoffed at my opinion by saying:
With the claims as written, I don't see how anyone would come up with that conclusion.

I certainly welcome smgsmc's explanation of how my analysis is flawed.   




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lazyexaminer

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There is a difference between "a structure comprising a thing." And "a thing for use in a structure."
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Tobmapsatonmi

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The proper inquiry with regard to intended use is determining whether the structure of the claimed apparatus (i.e. valve) changes as a result of the limitation (i.e. being incorporated into a car). If it doesn't, the purported limitation is likely only describing an intended use.


From where do you get this, was there a court decision that set forth this test?

It doesn't match my understanding of when an examiner can properly pretend that a given claim element is not present in the claim, due to that element merely setting out an intended use.


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mybrainisfull

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The proper inquiry with regard to intended use is determining whether the structure of the claimed apparatus (i.e. valve) changes as a result of the limitation (i.e. being incorporated into a car). If it doesn't, the purported limitation is likely only describing an intended use.
From where do you get this, was there a court decision that set forth this test?

My opinion is based on knowledge gleaned from multiple sources, such as MPEP, PTAB case decisions, books, articles and my own battles with examiners. For example, below is an excerpt from MPEP. That said, I acknowledge I am Pro-Se, so contrary viewpoints/ constructive criticisms are certainly welcome.

https://www.uspto.gov/web/offices/pac/mpep/s2114.html

II.MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART

“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.



There is a difference between "a structure comprising a thing." And "a thing for use in a structure."

Agreed, but what point are you making? In my previous posts I opined that if claim 2 is interpreted as a car comprising a valve, it shouldn't be allowable because it would be claiming a different apparatus than its parent (i.e. claim 1), and is probably broader in scope. On the other hand, if claim 2 is interpreted as a functional relationship between a car and the valve, the joining word "having" in my view does not confer any additional structural limitations to the valve, so claim 2 is merely describing the operating environment for the claimed valve, namely the car, and shouldn't be allowable because that is an intended use. Do you disagree with my arguments, and if so why? I'm assuming you do, since you previously posted you didn't think there was anything wrong with the claim.
« Last Edit: 08-01-17 at 10:20 am by mybrainisfull »
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Tobmapsatonmi

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There're are at least two fundamental mismatches between how you are using terms of art, and everyone else here are using those same terms of art.

One is the word "broader".  Twice now you've opined that as between
(1) A valve;
and
(2) A car comprising the valve of claim 1

the car comprising the valve of claim 1 is "broader" in scope than claim 1, claiming the valve alone.

Your opinion here is fundamentally wrong.  Claim 2 is clearly narrower than claim 1 in any sense which makes sense in the patent world - in legal terms, that is.  A person legally infringes claim 1 if they make or sell the valve.  But they must do more than that in order to infringe claim 2.  They must make or sell that valve and the car in which that valve was installed.

If you have to do more to infringe the dependent claim than is required to infringe the independent claim, then that dependent claim must be narrower (not broader) than the independent claim.

The other issue is what exactly does intended use mean.  We all of us keep saying the same thing.  Even you do - but then you seem to not understand what you're saying. 

You point to: "MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART". 

However, the claim to "A car comprising the valve of claim 1" is not a manner of operating the device (valve).  It describes structure.  The structure of claim 1 differs from the structure of claim 2.  Therefore they are patentably distinct from one another, unless art can be applied showing that claim 2's added feature still doesn't make it non-obvious over claim 1. 

Notice the underlining above.  You wrote, "the joining word "having" in my view does not confer any additional structural limitations to the valve".  This seems to be where you're going astray.  The word "having" (aka "comprising" aka "including") means that the car must comprise the valve.  That is a structural requirement of the car as claimed.  The claim cannot be infringed by something that does not, structurally, include both the car and the car including the valve of claim 1.  This describes the structure of the thing claimed by claim 2.

Also note that this notion that the valve must have its own structure changed as it goes from independent article claim to dependent article claim, else it is (in your view) merely describing an intended use, is not correct. 

It is not that a given element of an article claim must have differing structure as you go from independent to dependent claims.  Only that the dependent article claim itself is structurally different than the claim from which it depends.  (And if it is not structurally different, as we'll all agree, then the penalty for this is that the examiner can say the new or differing element in the dependent claim is "merely an intended use" which can be ignored for the purposes of applying prior art and determining patentability.)
« Last Edit: 08-01-17 at 01:47 pm by Tobmapsatonmi »
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Tobmapsatonmi

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Maybe it's just that the claims as presented look odd to you and this is throwing you off?

What if the claims said:

1.  A certain type of valve.
2.  The valve of claim 1, fixedly mounted into an automotive engine block.
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lazyexaminer

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The proper inquiry with regard to intended use is determining whether the structure of the claimed apparatus (i.e. valve) changes as a result of the limitation (i.e. being incorporated into a car). If it doesn't, the purported limitation is likely only describing an intended use.
I'm not sure how this test can be workable. There is a reason why the courts have not set a bright line test like this for preambles, for example. It depends on the whole claim, and is somewhat an I know it when I see it thing.

A bicycle comprising: a seat, brakes, and wheels.

I don't see how any of these pieces have their structure changed as a result of being in the bike. All can exist separately, and are not changed merely by screwing them together. Yet, no patent attorney or examiner anywhere would say that this is merely intended use of the wheels. All would agree that to invalidate the claim one must find (or render obvious) a bike having all these things.

An optical fiber comprising a core and a cladding surrounding the core.

The core itself doesn't structurally change just by having a cladding around it, though it certainly functions differently. Is wrapping a cladding around it just intended use? Do I need to find a cladding in the prior art?

*MPEP 2114 stuff*

MPEP 2114 is drawn to functional language. Like the part you quoted, that means what the device *does*, not what it *is*. A valve "being part of another structure" is a structural relationship, not functional language, and again, I am confident that almost everyone in the field would agree. It is telling us what the structure is. A valve "allowing liquid of certain viscosity to pass" would probably be functional, I would rather see structure that causes that to happen. You are saying that a structural relationship is merely a functional relationship, and on that I disagree.

There is a difference between "a structure comprising a thing." And "a thing for use in a structure."

Agreed, but what point are you making? ...

I disagree because words matter and you are ignoring the words. You say you agree that these things are different but you are conflating them.

"A valve for use in a car" is clearly claiming a valve, and also claiming its use. The only structure actually claimed is the valve. Thus we use the intended use type analysis and determine that a car is not really part of the claim. What the device *is* is a valve. Its use, in this case, is in a car.

"A car comprising the valve of claim 1" is clearly claiming a car, and also that the car must have a particular valve. The car is structure (whatever a PHOSITA would understand is necessary to be a car) and that valve is structure. This isn't just a functional relationship--see first part of this post--it is a structural relationship. If you want to quibble about car being in the preamble, I would argue that "car" clearly gives life and meaning to the claim and describes that something more, structurally, is required than merely a valve.

These things are somewhat splitting hairs, but people write and examine claims with these differences in mind, and these differences matter. Sometimes you want to limit yourself to a car having a particular valve--maybe you aren't sure if the valve is new, but you know it has never been used in a car, so you want to present that claim.

I am not sure that your intended use discussion really depends on the dependency. That is, whether the claims are properly dependent are a different matter.

I discussed above that it is clear that the PTO thinks 112(d) is satisfied if the dependent claim just has something more than the independent claim. It says there is no problem with claims having different statutory classes, thus analogously IMO there is no problem with different structures in the same class. I acknowledged that reasonable minds might wonder if a court would agree and might avoid such claims due to the 112(d) question, but I think the PTO position is reasonable.

Even if the claim is unpatentable under 112(d) as being an improper dependent claim, that is a different question than what structure is found in the claims. You have a choice in how you want to claim: if you want to claim structures, you can, and it gets weight. If you want to claim uses of that structure, you might do that for context but it won't get weight. And I really don't understand how anyone could say that "A car comprising the valve of claim 1" is probably broader than claim 1. 

Finally...all of these examples are incredibly simplified, of course. If your experience is different, it may very well be due to the way your claims were written, and even subtle differences can make big changes.
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mybrainisfull

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Your opinion here is fundamentally wrong.  Claim 2 is clearly narrower than claim 1 in any sense which makes sense in the patent world - in legal terms, that is. 

I'm mostly repeating myself, but I disagree completely with the argument that "A car having (i.e. structurally comprising) the valve of claim 1" is narrowing in scope. For dependent claim 2 to be further limiting, the VALVE itself would have to comprise some additional element, or be structurally configured or functionally adapted to work with something else, such as a car. But when you say "a car having the valve of claim 1" you're basically identifying the car as the apparatus and the valve as an element of the car. You aren't changing the structure of the valve at all, you're just saying it's an element of a newly introduced apparatus. As such, you are claiming two different apparatuses, and claim 2 should properly be re-written in independent form.  Both you and Lazyexaminer are taking the positon that claim 2 is proper because there's a structural relationship (i.e. physically joined) between a car and the valve of claim 1, but then when it comes to characterizing the resulting joined apparatus, your viewing it as a functional relationship, so you can justify still calling it a valve. If you agree the valve is an apparatus defined by its claimed elements, then the car must necessarily be an element comprising that valve. When is the last time you saw a valve (comprising a car) driving down the street?

You could make claim 2 properly dependent upon claim 1 and narrowing in scope by saying: "The valve of claim 1 further comprising a car". But, that wouldn't make much sense functionally if the objects you are talking about actually are a valve and a car. Alternatively, as I said in a previous post, if you really wanted to work "a car" into the claim in a (functional) way that does makes sense, you could say: 2. The valve of claim 1, wherein X is configured to attach to Z of a car.


Maybe it's just that the claims as presented look odd to you and this is throwing you off?

What if the claims said:

1.  A certain type of valve.
2.  The valve of claim 1, fixedly mounted into an automotive engine block.

The way you rewrote claim 2 here does (in my view) further limit the valve of claim 1, although personally I would probably try to put a little more teeth in it so there's no doubt its a structural limitation. For example,

   2.  The valve of claim 1, configured to fixedly mount onto an automotive engine block.

Claim 2 as originally written (i.e. a car comprising the valve of claim 1) was far different than what you amended it to above. In its original form, it's not "odd", it's wrong.

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Tobmapsatonmi

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Everyone else is wrong, and you are right, damn the torpedoes and full steam ahead.  Way to dig in them heels!  Even if everyone else has been trained in the field and has decades more experience than you do in these matters.

I'm tired of trying to communicate with a brick wall, so I’ll just leave you with these examples across several industries, and spanning several decades.  It took me more time to type up this reply than it did to find these examples.In each of these there are dependent claims to some other thing comprising the item claimed in the original independent claim. 

None of them make any structural changes to the item claimed in the independent claim.  Do you believe they've all be invalidly granted? 


US- 4734486 (aramids, articles) (ICI Americas)
1. A polyamide polymer consisting essentially of the recurring units of Formula I wherein, A is a divalent alkylene or arylene radical having 4-18 carbon atoms, n is an integer greater than 1, B is a divalent alkylene or arylene radical having up to 19 carbon atoms and at least 50 mol percent fluorinated xylylene radical of Formula II, wherein x is an integer from 1 to 4.
5. A film cast from the polymer of claim 1.
6. A coating formulation comprising the polymer of claim 1.
7. An injection molded article of the polymer of claim 1.

US- 5,162,165 (battery, generator) (SERE S.R.L.)
1. In a low capacity and high power density hydrogen-oxygen electric battery acting as a water electrolyzer during the charging phase which comprises at least one elementary cell formed by two end-plates (1, 2) and separated by an ion-exchange membrane (3) into a positive pole compartment and a negative pole compartment, a positive electrode (11) in contact with one side of said membrane (3) and a negative electrode (7) in contact with the other side of said membrane (3), means for supplying water to and discharging water from said compartments, means for supplying oxygen to the positive compartment and for supplying hydrogen to the negative compartment and means for discharging oxygen and hydrogen from said compartments, the improvement comprising the positive pole compartment having about half the volume of the negative pole compartment.
13. Electric generator system for driving an electrically powered vehicle comprising the battery of claim 1 and a steady-state output generator.

US- 6120491 (polymer, implantable device) (Rutgers Univ)
1. A polymer with a hydrolytically labile polymer backbone, said polymer having the structure: ##STR17## wherein R9 is an alkyl, aryl or alkylaryl group with up to 18 carbon atoms having a pendent carboxylic acid group on the benzyl ester thereof…
15. An implantable medical device comprising the polymer of claim 1.

US- 6712796 (valve, medical drains)
1. A valve operable upon a flexible tube defining a lumen, comprising: a first flow restrictor positioned outside of the lumen, which transitions between an open configuration and a closed configuration; a closing mechanism that automatically positions the first flow restrictor to the closed configuration when a pressure in a fluid within the lumen is below a low threshold pressure; and an opening mechanism that automatically positions the first flow restrictor to the open configuration when the pressure in the fluid within the lumen is above a high threshold pressure that is higher than the low threshold pressure.
10. A drainage system comprising the valve of claim 1, wherein the tube is a catheter.

US- 6970624 (device, other device, optical fibres) (Furukawa Electric North America)
1. An optical gain device comprising:
a. an input optical fiber,
b. an optical fiber adiabatic transformer section comprising a GRIN optical fiber attached to the input optical fiber,
c. an optical fiber gain section attached to the optical fiber adiabatic transformer section, and
d. means for optically pumping the gain section,
wherein the GRIN optical fiber has a refractive index that is graded so that a light beam passing through the GRIN optical fiber has a modefield that expands from the input optical fiber to the optical fiber gain section.
12. A laser gain device comprising the device of claim 1.
13. An optical fiber amplifier comprising the device of claim 1.

(hit character limit, few more to follow)
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Tobmapsatonmi

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US- 8,668,919 (poly, coating, angio balloon) (Abbott Angioplasty)
1. An amphiphilic polymer comprising: a phosphoryl choline moiety covalently attached to a first end of an amphiphilic polymer and a functional moiety F on a second end of the amphiphilic polymer, wherein F couples the amphiphilic polymer to an implantable medical device surface or coating comprising a chemical moiety R to which F binds or reacts, wherein the amphiphilic polymer comprises polylactide (PLA), poly(L-lactide) (PLLA), poly(D,L-lactide-co-glycolide) (PLGA), poly (e-caprolactone) (PCL), poly(ester amide) (PEA), polycarbonates, parylene, polytetrafluoroethylene (PTFE), polyvinylidene fluoride (PVDF), polyurethane (PU), polyethylene glycol (PEG), polyvinylpyrrolidone (PVP), polyvinyl alcohol (PVA), poly(vinyl pyrrolidone co-vinyl acetate) (PVP-co-VA), pluronics polymers, or combinations thereof, and wherein the chemical moiety R-functional moiety F paring is selected from the group consisting of amines-amine reactive esters; amines-aldehyde groups; amines-epoxide groups; sulfhydryl-sulfhydryl reactive esters; sulfhydryl-acrylate groups; sulfhydryl-vinyl groups; and sulfhydryl-allyl groups.
7. A coating composition comprising the amphiphilic polymer of claim 1.
8. An angioplasty balloon including a coating that comprises the amphiphilic polymer of claim 6.

US- 8,580,414 (device, battery) (TTP Group)
1. An electrochemical device comprising an electrolyte conduit having a length-to-depth ratio of at least 30 that is configured for laminar flow of at least 85% of an electrolyte flowing along the conduit, and further comprising a plurality of neighboring electrode segments that run along the length of the conduit, wherein the electrode segments are electrically insulated from each other, wherein the electrode segments are arranged for sequential contact of the electrolyte with the electrode segments, and wherein at least two of the electrode segments are electronically coupled to at least two respective current control devices.
11. An apparatus comprising the device of claim 1, wherein the apparatus is selected from the group consisting of a primary battery, a secondary battery, a fuel cell, and an electrochemical reactor.

US- 9334373 (fire retardant poly, materials) (UNLV)
1. A fire retardant polymer comprising: a. at least one pyridinium salt moiety; and b. at least one phosphine oxide moiety.
21. A construction material comprising the polymer of claim 1.
22. An insulation comprising the polymer of claim 1.
23. A medical device comprising the polymer of claim 1.

US- 9,517,292 (OOPS, they did it again)
1. A polymer having the following structure: ##STR00005## wherein: n and m are independently an integer; R' is H or CH.sub.3.
2. The polymer of claim 1, further comprising a therapeutic agent selected from a group consisting of proteins, peptides, anti-inflammatory agents, antivirals, anticancer drugs, anticoagulant agents, free radical scavengers, steroidal anti-inflammatory agents, antibiotics, nitric oxide donors, super oxide dismutases, super oxide dismutases mimics, cytostatic agents, prodrugs thereof, co-drugs thereof, and a combination thereof; or the drug selected from a group consisting of zotarolimus, dexamethasone, clobetasol, paclitaxel, estradiol, 4-amino-2,2,6,6-tetramethylpiperidine-1-oxyl (4-amino-TEMPO), 4-hydroxy-2,2,6,6-tetramethylpiperidine-1-oxyl(TEMPOL), tacrolimus, sirolimus, sirolimus derivatives, 40-O-(2-hydroxy)ethyl-rapamycin (everolimus), 40-O-(3-hydroxy)propyl-rapamycin, 40-O-[2-(2-hydroxy)ethoxy]ethyl-rapamycin, and 40-O-tetrazole-rapamycin, prodrugs thereof, co-drugs thereof, and combinations thereof.
3. An implantable device comprising a coating that comprises the polymer of claim 2.
4. A coating composition comprising the polymer of claim 1.
5. A method of treating a human being by implanting in the human being a stent as defined in claim 3, wherein the disorder is selected from the group consisting of atherosclerosis, thrombosis, restenosis, hemorrhage, vascular dissection or perforation, vascular aneurysm, vulnerable plaque, chronic total occlusion, claudication, anastomotic proliferation for vein and artificial grafts, bile duct obstruction, ureter obstruction, tumor obstruction, and combinations thereof.
6. An angioplasty balloon including a coating that comprises the polymer of claim 2.
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lazyexaminer

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Everyone else is wrong, and you are right, damn the torpedoes and full steam ahead.  Way to dig in them heels!  Even if everyone else has been trained in the field and has decades more experience than you do in these matters.
 

*slow clap*

Also, please *read* the cases I cited earlier. Frankly it doesn't matter what any of us think. It matters what the courts and the Patent Office think. And they have permitted such claims. I've tried to explain why, but I'm not getting the job done.If you don't like it take it up with them, or your congressman.
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dbmax

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I don't think there's anything wrong with:

1. A valve comprising X.

2. A car having the valve of claim 1.

I see claims like this from time to time and let them go. Claim 2 includes all of the features of claim 1 and has further limitations so it passes 112(d). MPEP 608.01(n) II permits dependent claims to be even in different statutory classes:


from Monsanto v. Syngenta Seeds, 503 F. 3d 1352 - Court of Appeals, Federal Circuit, 2007 
Quote
Claims

1. A process for producing a fertile transgenic Zea mays plant comprising the steps of (i) bombarding intact regenerable Zea mays cells with DNA-coated microprojectiles, (ii) identifying or selecting a population of transformed cells, and (iii) regenerating a fertile transgenic plant therefrom, wherein said DNA is transmitted through a complete sexual cycle of said transgenic plant to its progeny, and imparts herbicide resistance thereto.
...
4. A process comprising obtaining progeny from a fertile transgenic plant obtained by the process of claim 1 which comprise said DNA.
...

Although in a somewhat unusual format, claim 4 is dependent from claim 1 because it only stands if all three steps recited in claim 1 have been performed. In other words, the additional fourth step of obtaining progeny depends on the performance of the process comprising the three steps recited in claim 1 for obtaining a fertile transgenic plant. Claim 4 contains each element of a dependent claim.
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