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Author Topic: One of A or B, the other of A or B  (Read 553 times)

novobarro

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One of A or B, the other of A or B
« on: 11-07-17 at 11:14 am »

I'm trying to claim selecting one of A or B;
then selecting the other of A or B.

For example, when selecting one of A or B, I select A.

Then the other of A or B, is B.

Is it proper to recite "the other of A or B" after reciting "selecting one of A or B"?

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RolandS

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Re: One of A or B, the other of A or B
« Reply #1 on: 11-07-17 at 11:44 am »

Will you have to address them distinctly further down the road?
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novobarro

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Re: One of A or B, the other of A or B
« Reply #2 on: 11-07-17 at 11:52 am »

Quote
Will you have to address them distinctly further down the road?

Yes, I would address the selected one (A), or the other (B)
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RolandS

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Re: One of A or B, the other of A or B
« Reply #3 on: 11-07-17 at 12:09 pm »

Ok, then addressing it the "not previously selected one of A or B" will not help much.

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novobarro

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Re: One of A or B, the other of A or B
« Reply #4 on: 11-07-17 at 12:16 pm »

what about ""the other of the A or B which is not selected"
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RolandS

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Re: One of A or B, the other of A or B
« Reply #5 on: 11-07-17 at 12:51 pm »

Maybe use "a first one A or B" and then "a second one of A or B being the one of A or B not having been selected as the first one".

Then you can address them downwards in the claims by "said first one of A or B" and "said second one of A or B".
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still_learnin

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Re: One of A or B, the other of A or B
« Reply #6 on: 11-07-17 at 04:09 pm »

what about ""the other of the A or B which is not selected"

The antecedent basis rules -- at least as strictly applied -- make this sort of claim ridiculously overcomplicated.

I've written a claim like this as simply "the other of the A or B" without Examiner complaint. But some attorneys don't like it, and some Examiners don't like it, reasoning "there is no antecedent basis for 'the other' ".  In which case I usually change it to "another one of the A or B" or even the ridiculously tortured "an another one of the A or B."

Maybe use "a first one A or B" and then "a second one of A or B being the one of A or B not having been selected as the first one".
Then you can address them downwards in the claims by "said first one of A or B" and "said second one of A or B".

Roland's suggestion does allow for shorthand in later references to the A/B. OTOH, I don't like the shorthand because I have to go back and read the claim to find out that "first" is shorthand for "selected" and "second" is shorthand for "non-selected."


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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.

still_learnin

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Re: One of A or B, the other of A or B
« Reply #7 on: 11-07-17 at 04:12 pm »

I'm trying to claim selecting one of A or B; then selecting the other of A or B.

For example, when selecting one of A or B, I select A.Then the other of A or B, is B.

Is it proper to recite "the other of A or B" after reciting "selecting one of A or B"?

I do see one weakness in your very readable phrasing. "The other" only makes sense if the group size is exactly two, right? Does the phrasing "one of A or B" limit the group size to two? I thought Yes on first read. Now I'm on the fence.

Changing "the other" to "another" addresses this concern. It may introduce its own concerns, not sure.
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novobarro

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Re: One of A or B, the other of A or B
« Reply #8 on: 11-07-17 at 04:25 pm »

Quote
I do see one weakness in your very readable phrasing. "The other" only makes sense if the group size is exactly two, right? Does the phrasing "one of A or B" limit the group size to two? I thought Yes on first read. Now I'm on the fence.

Changing "the other" to "another" addresses this concern. It may introduce its own concerns, not sure.

the claims recite something along the lines of "a first widget and a second widget, selecting one of the first widget or the second widget, applying X to the other widget."

I was considering using "another," just seemed awkward to me.  Could "another" widget, be construed to be not of the first or second widget?  the other widget seems to be clearer its the other widget not selected.  However, does it have proper antecedence so recite "the" other widget?
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bluerogue

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Re: One of A or B, the other of A or B
« Reply #9 on: 11-07-17 at 05:16 pm »

I might go with "the unselected one of A or B."  YMMV with how another examiner would treat it though.  But this formulation seems to cover the antecedent basis issue as one of A or B was selected and therefore the other was not selected.  Again, this would be what I would choose to do. No guarantees that it's actually proper.
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novobarro

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Re: One of A or B, the other of A or B
« Reply #10 on: 11-08-17 at 10:50 am »

Thank you for all the responses!  Is there a resource out there summarizing issues like this?
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still_learnin

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Re: One of A or B, the other of A or B
« Reply #11 on: 11-08-17 at 02:26 pm »

I was considering using "another," just seemed awkward to me. 

Oh, it's awkward, no doubt.

Could "another" widget, be construed to be not of the first or second widget?

You could fix that by "another of the A or the B."

the other widget seems to be clearer its the other widget not selected.
"widget not selected" seems the least ambiguous. Adding "other widget" to "not selected" doesn't further reduce ambiguity and maybe even increases it.

On the general topic ... this may or may not apply to your situation, but I'll throw it out there for other readers (now and future).

If this issue arises in the context of a rejection -- either directly in an indefiniteness rejection, or indirectly in claim construction used in a rejection -- then I would ask the Examiner what language he would suggest. And I'd probably go with his suggestion unless it was clearly detrimental in some way.

I don't think there's one perfect answer to this question. Or most other "how to express this in a claim" questions, for that matter. But it's worth thinking hard about.
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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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