Should I present a preliminary amendment?

Started by jgmiko, 05-24-17 at 10:23 PM

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bluerogue

Quote from: snapshot on 05-25-17 at 05:28 PM
2) Why would "spring means" be interpreted under 112f?  A spring, to me, is structure, and that causes "spring means for x" to fail the means-plus-function test, same as "display means for y" would fail (in the classic PTO example).

I would say that given the lack of initial detail, there was a definite possibility that spring means could be interpreted under 112f.  I won't comment on whether the usage here would be under 112f because they appear to be claims pending before the office.  It's one thing to discuss spring means by itself; it's another with the amount of detail provided by jgmiko. 

More generally though, means has a strong presumption for 112f.  I don't think there's that much difference between "display means for" and "means for display" that I would be comfortable saying that one is 112f and another isn't.  As has been said above, "means" is such magic wording that it can cause all sorts of issues when used in a claim to the point where even we are not entirely sure if it invokes 112f in cases like this and is good reason to avoid it unless the intent is to actually invoke 112f.

The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

jgmiko

I just called the Inventors Assistance Center at USPTO, and they told me that I should not worry about the 3 months to present the preliminary amendment, that nobody is going to touch my application for at least a year.
Any thoughts on that?
If that is correct that would be great for me, the three months are up this Monday and as you can see I could use some extra time to draft the amendment.

bluerogue

Quote from: jgmiko on 05-25-17 at 06:18 PM
I just called the Inventors Assistance Center at USPTO, and they told me that I should not worry about the 3 months to present the preliminary amendment, that nobody is going to touch my application for at least a year.
Any thoughts on that?
If that is correct that would be great for me, the three months are up this Monday and as you can see I could use some extra time to draft the amendment.

That's pretty dependent on art unit. I am working on apps filed in 2014/15.  Other AUs are working on cases filed in Nov. 16.  You have an absolute right to a preliminary amendment in 3 months.  After that, it's more iffy, but generally, yes, you're safe for about a year or more.  I still wouldn't delay filing more than necessary.
The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

jgmiko

Quote from: bluerogue on 05-25-17 at 06:49 PM
Quote from: jgmiko on 05-25-17 at 06:18 PM
I just called the Inventors Assistance Center at USPTO, and they told me that I should not worry about the 3 months to present the preliminary amendment, that nobody is going to touch my application for at least a year.
Any thoughts on that?
If that is correct that would be great for me, the three months are up this Monday and as you can see I could use some extra time to draft the amendment.

That's pretty dependent on art unit. I am working on apps filed in 2014/15.  Other AUs are working on cases filed in Nov. 16.  You have an absolute right to a preliminary amendment in 3 months.  After that, it's more iffy, but generally, yes, you're safe for about a year or more.  I still wouldn't delay filing more than necessary.

THX!!

still_learnin

Quote from: snapshot on 05-25-17 at 05:28 PM
Why would "spring means" be interpreted under 112f?  A spring, to me, is structure, and that causes "spring means for x" to fail the means-plus-function test, same as "display means for y" would fail (in the classic PTO example).

Depends on what X is, i.e., the rest of the "for" clause. Yes, a spring connotes structure, but if it's not enough structure to accomplish the entire X function, then 112f is invoked. OTOH, if the qualifier preceding "means" (here, "spring") itself connotes enough structure to accomplish X, then 112f is avoided.

BTW, we don't even know there is a functional clause.

Quote from: jgmiko on 05-25-17 at 05:50 PM
You are correct, the spring means is mentioned in a dependent claim. BUT since we are already talking about "means", the only independent claim mentions a "hinge means": "a hinge means pivotally coupling said first body member and said second body member."

In a dependent claim says: "The device from claim 1, wherein said hinge means is selected from the group consisting of one-piece polymer, one piece metal, multi piece polymer, multi piece metal, cloth, a flexible membrane and perforated lugs used in conjunction with hinge pins and spring means."

Ah, more detail provided. So there is no "for" in either means clause. Do you need the word "for" to invoke 112f, or is "means" alone enough?

"pivotally coupling [said members]" does appear to be functional phrase, rather than further describing the structure of the hinge.

While we're at it, what's the difference between

  • a hinge pivotally coupling said first body member and said second body member
  • a hinge means pivotally coupling said first body member and said second body member
  • a hinge means for pivotally coupling said first body member and said second body member
  • a hinge operable to pivotally couple said first body member and said second body member

Do you even need "pivotally" ? Isn't that implied by "hinge" ?
The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.

mersenne

Quote from: still_learnin on 05-25-17 at 10:45 PM
Do you need the word "for" to invoke 112f, or is "means" alone enough?

Not according to some of my examiners!  More than once, I've had them say 112f was invoked, when there was no "means" or "for" at all -- those positions were so nonsensical, I can't even recall what the actual claims were about, but I do recall arguing about it in at least two office actions on one case.

If you have "means" in a claim, I think you should expect to get 112f treatment, and if you didn't intend that, then you're guaranteed to waste time arguing it, plus you'll probably end up amending at least that part, which will guarantee you a final OA.  So that one word will quickly usher you through a complete round of examination and dump you back at the fee-collection booth, for no good reason.
Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

lazyexaminer

Quote from: mersenne on 05-25-17 at 11:04 PM
Quote from: still_learnin on 05-25-17 at 10:45 PM
Do you need the word "for" to invoke 112f, or is "means" alone enough?

Not according to some of my examiners!  More than once, I've had them say 112f was invoked, when there was no "means" or "for" at all -- those positions were so nonsensical, I can't even recall what the actual claims were about, but I do recall arguing about it in at least two office actions on one case.

Are you saying that those particular positions were nonsensical, or that finding 112(f) invoked with no "means" or "for" is nonsensical? Because the Federal Circuit has been quite clear that means is not required, and certainly for is not required.

I wish 112(f) was a bright line rule. Use means, you invoke, unless you have structure in the claim. Don't use means, you don't invoke, period, it's just functional language with its various drawbacks. I prefer Newman's dissent in Williamson v. Citrix. Especially now that the Office seems to have a renewed interest in having most everything invoke. It's a real PITA.
I'm not your examiner, I'm not your lawyer, and I'm speaking only for myself, not for the USPTO.

jgmiko

Wow, What a mess....I feel I opened a pandora box....

I really don't know how to proceed now, it seems that even between you guys, that really studied the issue, is no consensus.

I used the term "means" regarding to things: the spring and the hinge. My intention was to cover as many different springs and hinges as possible but for what I am understanding I might have got it wrong.

Is there an absolute answer as to if I should amend and what? I can't afford another lawyer at the moment, I already paid for one and he did everything wrong. So I will have to do it myself.

Can anyone advice me in not so legal terms what should I do?

I would really appreciate that!

mersenne

Quote from: lazyexaminer on 05-25-17 at 11:39 PM
Are you saying that those particular positions were nonsensical, or that finding 112(f) invoked with no "means" or "for" is nonsensical? Because the Federal Circuit has been quite clear that means is not required, and certainly for is not required.

No, I suppose you could claim something in a way that implicated 112(f) without using "means" or "for," but I hadn't in that case. 

I was curious, so I dug up my old OA...it was a software application, and one of the claims used the word "for" in the sense of a "for loop."  The specific element at issue was:

...setting a flag in the flag set for each processed record of one of the two classes...

The Examiner asserted that my use of "for" implicated 112(f).  I argued the point, referencing
Quote from: MPEP §2181
[A] claim limitation that does not use the term "means" or "step" will trigger the rebuttable presumption that [35 U.S.C. § 112(f)] does not apply.
and asking for some reasoning to rebut the presumption, but none was forthcoming.  I eventually appealed, and got a notice of allowance when the Examiner's Answer was due.

Quote from: lazyexaminer on 05-25-17 at 11:39 PM
I wish 112(f) was a bright line rule. Use means, you invoke, unless you have structure in the claim. Don't use means, you don't invoke, period, it's just functional language with its various drawbacks.

You and me both, brotha'!

For jgmiko, you probably want to leave the word "means" out of your claims.  It'll make your life miserable, and probably won't improve the coverage of any patent, given the other parts of the specification and claims you've shared with us.  smgsmc mentioned that you might have trouble with deleting "means," but in my view, the likelihood of trouble there is lower than the virtual certainty of trouble if you leave it in.

If you have extra claim space free, you could leave "means" in the original claims, and just add some new claims that omit the word, but are otherwise the same as the originals.  That way, you'll get your pick of which trouble you have to deal with.
Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

snapshot

Quote from: still_learnin on 05-25-17 at 10:45 PM
Quote from: snapshot on 05-25-17 at 05:28 PM
Why would "spring means" be interpreted under 112f?  A spring, to me, is structure, and that causes "spring means for x" to fail the means-plus-function test, same as "display means for y" would fail (in the classic PTO example).

Depends on what X is, i.e., the rest of the "for" clause. Yes, a spring connotes structure, but if it's not enough structure to accomplish the entire X function, then 112f is invoked. OTOH, if the qualifier preceding "means" (here, "spring") itself connotes enough structure to accomplish X, then 112f is avoided.

BTW, we don't even know there is a functional clause.
Regarding "on what X is", that's a good point, and one I tend to not think about, because such a situation almost never comes up.

Quote from: still_learnin on 05-25-17 at 10:45 PM
Ah, more detail provided. So there is no "for" in either means clause. Do you need the word "for" to invoke 112f, or is "means" alone enough?

No, you don't need "for".  "Means configured to" or "unit configured to" or whatever substitute used for "means" can invoke 112f.  Something like "displaying unit" will also invoke 112f without any sort of transitional phrase.

Quote from: lazyexaminer on 05-25-17 at 11:39 PM
I wish 112(f) was a bright line rule. Use means, you invoke, unless you have structure in the claim. Don't use means, you don't invoke, period, it's just functional language with its various drawbacks. I prefer Newman's dissent in Williamson v. Citrix. Especially now that the Office seems to have a renewed interest in having most everything invoke. It's a real PITA.

I wish this was the case, too, but Citrix really made examination a pain, especially for the foreign patents (Japanese in particular) that claim all their structure as a "module configured to" or a "unit for" doing something.  112f, all day, every day, and it genuinely adds time to action writing that could be better used elsewhere in examination.

smgsmc

This is somewhat tangential to the OP's initial question concerning preliminary amendments.  But since so much of the discussion has focussed on 112(f) [previous 112 (p6)], I'll ask a question I've asked before, but have never received a satisfactory answer to.  It's my understanding that a long time ago, means plus function claiming was actually preferred to give broader scope to claims, based on the "and equivalents thereof" concluding phrase.  But apparently one or more court cases then gutted the "equivalents" to zilch, with the net result that presently the scope is limited to the embodiments explicitly disclosed in the spec.  Does anyone have cites to the relevant court cases that led to the 180 deg about face for means plus function claims?

smgsmc

#26
Quote from: jgmiko on 05-26-17 at 12:25 AM
Wow, What a mess....I feel I opened a pandora box....

I really don't know how to proceed now, it seems that even between you guys, that really studied the issue, is no consensus.

I used the term "means" regarding to things: the spring and the hinge. My intention was to cover as many different springs and hinges as possible but for what I am understanding I might have got it wrong.

Is there an absolute answer as to if I should amend and what? I can't afford another lawyer at the moment, I already paid for one and he did everything wrong. So I will have to do it myself.

Can anyone advice me in not so legal terms what should I do?

I would really appreciate that!

At this point, you really need to come up with the $ for professional help.  Unless you're extremely unlucky, you still have time to file a preliminary amendment before examination starts (although, Murphy's law always kicks in; the USPTO queue is typically really long, except when you intentionally want a long delay ... then it's surprisingly short).  Even if examination does start before you enter a preliminary amendment, you will still need professional help in responding to the first Office Action.  It just means that you have wasted round one; but you are not down and out ...you may just have to pay for more rounds.

There are a lot of nuances surrounding means plus function claiming and its consequences.  For your specific instance, however, it requires a careful reading of the spec, a careful understanding of your invention, and a careful analysis of design-arounds that a potential infringer might exploit to determine the consequences ... and to determine what alternative claim language is viable, if needed.

lazyexaminer

Quote from: smgsmc on 05-26-17 at 03:30 PM
This is somewhat tangential to the OP's initial question concerning preliminary amendments.  But since so much of the discussion has focussed on 112(f) [previous 112 (p6)], I'll ask a question I've asked before, but have never received a satisfactory answer to.  It's my understanding that a long time ago, means plus function claiming was actually preferred to give broader scope to claims, based on the "and equivalents thereof" concluding phrase.  But apparently one or more court cases then gutted the "equivalents" to zilch, with the net result that presently the scope is limited to the embodiments explicitly disclosed in the spec.  Does anyone have cites to the relevant court cases that led to the 180 deg about face for means plus function claims?

I'm not aware of any cases cutting down greatly on equivalents for examining purposes at least (I do consider the equivalents issue when examining but it doesn't really make a difference often), and I'm not sure about long ago, but today I feel like 112(f) limitations are definitely narrower than a similar limitation without 112(f).

112(f) limitation: covers structure in the spec that performs the function + equivalents.

Non-112(f) limitation: covers anything that performs the function, whether equivalent or not.

Logically, it seems like even if the scope of 112(f) equivalents is vast, it could never be broader than a non-112(f) interpretation, which covers anything.

Which is why, I guess, the Office is trying to greatly enforce 112(f) claiming nowadays. Non-112(f) limitations are so broad that it is a lot harder to enable the full scope of the claim. But then 112(f) limitations are easier to find indefinite (if no structure is clearly and explicitly described that's indefinite, whereas a non-112(f) would be fine since a PHOSITA would be good with it if it's well known).
I'm not your examiner, I'm not your lawyer, and I'm speaking only for myself, not for the USPTO.

ChrisWhewell

Quote from: jgmiko on 05-24-17 at 10:23 PM
Hello everybody and thank you for your help,

I am the inventor of a new very simple mechanical device.

I drafted the PPA myself and got a patent agent friend to review it and draft the claims.

A year later I applied for the NPPA. For this I hired a free lance patent attorney since our agent friend was unavailable at the time. We had a terrible experience with this lawyer, he was absolutely useless, he ripped me off. So I ended drafting the NPPA myself and I think I did a pretty decent job.

Now my agent friend looked at the application I presented and suggested a few "corrections". He advised me to present a preliminary amendment to address those corrections.

He also advised me to do that before 3 months passed since the NPPA so the examiner is forced to accept the preliminary amendment.

Most of the corrections he pointed out are not things that are really wrong but things that can be improved.

There are some things that are the more important though:

- He believes that one of my claims is redundant and already covered in the previous claim, I can combine these claims into one

- my last claim is a method claim that is dependent on an apparatus claim, he suggested to redraft that claim

- I presented a formula in a claim he believes is better to write it in proper English grammar

- He suggest using the term "spring" instead of "spring means"


The question is if it is worth to make a preliminary amendment or if it is better to wait for the first office action. I read in some forum that examiners don't like preliminary amendments  and also read somewhere that is always good to  leave something for the examiner to correct/object, I don't know how much truth is in that.

Thanks for your advise

Clearly, you have one opinion by a practitioner raising the issue.  For inventor prepared claims, it is like 99% of the time a no-brainer to have a practitioner look at the case.  The question is, how valuable is the invention ?   If it were me, I'd want someone with about 15 years experience to handle it.  It could make a huge difference, depending on the value of the invention.
Chris Whewell

www.patentsearcher.com

Rabid Levity

Quote from: smgsmc on 05-26-17 at 03:30 PM
This is somewhat tangential to the OP's initial question concerning preliminary amendments.  But since so much of the discussion has focussed on 112(f) [previous 112 (p6)], I'll ask a question I've asked before, but have never received a satisfactory answer to.  It's my understanding that a long time ago, means plus function claiming was actually preferred to give broader scope to claims, based on the "and equivalents thereof" concluding phrase.  But apparently one or more court cases then gutted the "equivalents" to zilch, with the net result that presently the scope is limited to the embodiments explicitly disclosed in the spec.  Does anyone have cites to the relevant court cases that led to the 180 deg about face for means plus function claims?


Hi.  It has been a fairly steady chipping away in my impression.  Check out this professor's website as searched in the link below. 
https://patentlyo.com/?s=%22means+plus+function%22

Lots of cases (court and BPAI precedential opinions) are discussed about scope of infringement, validity, % decline in use by patentees, etc. of MPF claiming.  Note the search results do not order by date, so you will see (e.g.) a 2005 article sandwiched between more recent articles.


In the one simply titled "Means Plus Function Claiming" see commenter Paul F. Morgan,
https://patentlyo.com/patent/2013/01/means-plus-function-claiming.html#comment-24261
(excerpted part where he mentions some case law)
"*The Federal Circuit has held several times for a long time now that the same or identical "function" must be provided in the accused product for literal infringement of a "means-function" claim element. That is, there is no normal doctrine of equivalents (DOE) for the "means for" function.
Also, that any structural "equivalents" under 35 USC 112 para. 6 will always be different and always be narrower than DOE for other types of claims. E.g., since at least Kemo Sales Inc. v. Control Sales Co., (Fed. Cir. 2000), and Odetics, Inc. v. Storage Tech. Corp. 51 USPQ2d 1225, 1230 (Fed. Cir. 1999).

The CAFC has also held several times that structural "equivalents" of a means-function claim element means equivalents of the "corresponding structure".."described in the specification". E.g., since at least Johnson v. IVAC Corp., 12 USPQ2d 1382 (Fed. Cir. 1989) [also reminding that a means-function claim does NOT cover ALL means for accomplishing the stated function]; and In re Iwahashi, 12 USPQ2d 1908 (Fed. Cir. 1989). Valmont v. Reinke, 25 USPQ2d 1451 (Fed. Cir. 1993) even suggests that the word "equivalent" in Section 112(6) invokes the familiar concept of an insubstantial change that adds nothing of significance to the structure, material or acts disclosed in the specification.
"


Misfortunately the remainder of the comments on that article do not appear to be worth one's time.



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