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Author Topic: Is this independent method claim allowed?  (Read 754 times)

Patentstudent

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Is this independent method claim allowed?
« on: 01-11-18 at 03:51 am »

Let's presume a patent application for a novel and inventive device has a number of device claims, for example:

1. A device comprising elements A and B.
2. The device of claim 1 comprising an element C.


Can these device claims now be followed by a method claim in the following form:

3. A method for the manufacturing of the device according to the preceding claims.

My specific question is, whether this method claim that does not disclose any features of the method will be accepted due to the mere fact that the claimed features of the device are novel and non-obvious? 

Thank you.
 

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lazyexaminer

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Re: Is this independent method claim allowed?
« Reply #1 on: 01-11-18 at 09:42 am »

You can claim that way according to the PTO. See MPEP 608.01(n) II. We have discussed this issue on this board before so there are other threads talking about it if you search, I know I was in at least one second half of last year. I also believe someone posted a CAFC case sanctioning this.

I don't know if you mean it this way but I don't like that there are no method steps. You are basically claiming the device made by any method, so it is just the device, so it's the same scope as the device claim. 

You also can't use "according to the preceding claims" I don't know if you meant that or were just writing lazily.
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Patentstudent

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Re: Is this independent method claim allowed?
« Reply #2 on: 01-11-18 at 11:36 am »

Lazyexaminer, thank you very much.

Yes, I was being lazy and basically just wanted to focus on the permissibility of the lack of method steps in the method claim.
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ThomasPaine

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Re: Is this independent method claim allowed?
« Reply #3 on: 01-11-18 at 01:19 pm »

My guess is that you'll get a 112(b) rejection for failing to set forth the metes and bounds of method (i.e. the subject matter you regard as your invention).  That would be a good rejection, and I would bet you could not overcome it, even on appeal.

It's arguably rejectable under 112(d) also.
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still_learnin

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Re: Is this independent method claim allowed?
« Reply #4 on: 01-11-18 at 05:28 pm »

It's arguably rejectable under 112(d) also.

Where 112(d) is a dependent claim that fails to further limit its parent claim(s). Depends on whether the Examiner treats the method claim as an independent or a dependent.

Is an enablement (full scope) rejection also a concern? As in the claim covers all methods of manufacturing the invention, but does not teach a POSITA about all those methods?

My question for the OP: of what value is this method claim. IOW, what infringement scenario do you think you're covering in the method that's not already covered by the device claim?
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Patentstudent

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Re: Is this independent method claim allowed?
« Reply #5 on: 01-12-18 at 04:30 am »

still-learning, thank you.
Based on your (and lazyexaminer's and ThomasPaine's) comments/question I have come to realize that such a method claim does not have added value, even if permissible.
I won't fall into this trap again.
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