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Author Topic: Main independent claim without usefulness  (Read 1213 times)

Pianist

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Main independent claim without usefulness
« on: 08-11-17 at 05:16 am »

Can I make object of first indepndent claim without any useful action?
If I make object of second dependent claim by adding some parts useful and working, can I get patent for such invention?
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smgsmc

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Re: Main independent claim without usefulness
« Reply #1 on: 08-11-17 at 10:36 am »

Can I make object of first indepndent claim without any useful action?
If I make object of second dependent claim by adding some parts useful and working, can I get patent for such invention?
If the independent claim does not claim anything useful, the Examiner will reject the claim under 35 USC 101.  If the dependent claim is otherwise allowable, the Examiner will object to the dependent claim, saying the dependent claim would be allowable if rewritten as a new independent claim, including all the limitations of the current independent claim on which it depends.
« Last Edit: 08-11-17 at 10:46 am by smgsmc »
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Pianist

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Re: Main independent claim without usefulness
« Reply #2 on: 08-11-17 at 03:26 pm »

35 USC 101 is about statutory classes.
But I found explanation of my in question 2107.02   Procedural Considerations Related to Rejections for Lack of Utility
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smgsmc

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Re: Main independent claim without usefulness
« Reply #3 on: 08-11-17 at 06:09 pm »

35 USC 101 is about statutory classes.
But I found explanation of my in question 2107.02   Procedural Considerations Related to Rejections for Lack of Utility
??  MPEP 2107.02 discusses how the USPTO deals with certain aspects of utility issues under 35 USC 101. Rejections are based on the statute.
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NJ Patent1

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Re: Main independent claim without usefulness
« Reply #4 on: 08-12-17 at 09:32 am »

Whoever invents or discovers any new and useful ...  This requirement applies to all the "classes" that follow. 
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still_learnin

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Re: Main independent claim without usefulness
« Reply #5 on: 08-16-17 at 04:50 pm »

Can I make object of first indepndent claim without any useful action?
If I make object of second dependent claim by adding some parts useful and working, can I get patent for such invention?
Whoever invents or discovers any new and useful ...  This requirement applies to all the "classes" that follow.

I see a couple of different things going on in this thread. I wonder if everyone is talking about the same thing.

Today, the phrases "rejection under 101" and "utility rejection" often relate to inventions related to computers or biotech. Such rejections don't have much to do with the "usefulness" as most people use the word in ordinary speech.

There is another thing called a "specific utility" rejection -- also arising under section 101 -- which is commonly applied to inventions for which there isn't a solid scientific basis ... cold fusion, perpetual motion, etc. Such inventions are viewed as "not useful" in the sense of skepticism that these inventions have a realistic, real world, use. These sorts of rejections are relatively rare, since such inventions represent a very small percentage of patent applications.

Pianist, it's not clear at all what you're really asking about when you say "useful."

Many, many claims do NOT recite a use. For example, consider this hypothetical claim:

An apparatus comprising:
a first plate having a first sleeve;
a second plate having a second sleeve;
and a rod insertable into the first sleeve and into the second sleeve such that the first plate and the second plate rotate about the rod.

Maybe you can't tell from my 5-minute claim, but the above is meant to describe a door hinge. Note that the claim did NOT recite its use, only its structure. That's very common, and would not draw a 101 rejection for lack of utility.

If that's the kind of "useful action" you're talking about, consider focusing on the structure and function that accomplishes the end result rather than claiming the useful action as an end result.
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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.
 



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