Intellectual Property Forum The Intellectual Property Forum

Please login or register.

Login with username, password and session length
Advanced search  

News:

We are looking for moderators.  Message the admin if interested.

Author Topic: Changing emobdiments  (Read 468 times)

novobarro

  • Senior Member
  • ****
  • Posts: 282
    • View Profile
Changing emobdiments
« on: 04-06-18 at 04:08 pm »

Our client wants to amend the claims to a different embodiment.  If I were to amend the independent claims to the different embodiment, features of the dependent claims are not in the different embodiment.  Looks like I need to cancel all features in the dependent claims that are not in the different embodiment? For example, currently claimed embodiment has a mounting structure using a screw and dependent claims describe different aspects of the screw.  The different embodiment uses a strap instead of a screw.  Would I need to remove all dependent features related to the screw?  Also, can I move the feature of the screw into a dependent claim even though the independent claim uses a strap?  The spec describes these as different embodiment.  one embodiment uses a screw, but does not disclose a strap, another embodiment discloses using a strap, but does not disclose a screw.
« Last Edit: 04-06-18 at 04:56 pm by novobarro »
Logged

mersenne

  • Senior Member
  • ****
  • Posts: 539
  • David H. Madden
    • View Profile
    • Mersenne Law
    • Email
Re: Changing emobdiments
« Reply #1 on: 04-06-18 at 07:15 pm »

Sounds like fairly major claim surgery.  If you've already received an OA, I'd worry that you risk pissing the examiner off and not getting useful work out of them.  So: after an OA, I'd amend the current embodiment, get whatever you can, and pursue the other embodiment in a continuation.

If you've received a restriction to the current embodiment, even better.  You can't switch to the other embodiment, so just do the same thing, but you're filing a divisional instead.

If you haven't received an OA yet, I'd check whether the examiner has started searching.  If you change then, you're really gonna piss them off.  But if they haven't picked up the case, then I don't see any reason not to cancel current claims and add the new claimset you want.  You might also consider refactoring so that the two different embodiments can fit under the same independent claim.
Logged
Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

novobarro

  • Senior Member
  • ****
  • Posts: 282
    • View Profile
Re: Changing emobdiments
« Reply #2 on: 04-06-18 at 11:14 pm »

Unfortunately, we already received an OA.  the client is insistent on switching embodiments.  do i need to cancel all the claims directed to the original embodiment?
Logged

snapshot

  • Senior Member
  • ****
  • Posts: 267
    • View Profile
Re: Changing emobdiments
« Reply #3 on: 04-06-18 at 11:18 pm »

Canceling all claims to the original embodiment and presenting a new embodiment is risky business.  You could very likely receive an election by original presentation and wind up with no claims pending, which is automatically a non-responsive amendment. See MPEP 821.03.
Logged

bluerogue

  • Senior Member
  • ****
  • Posts: 283
    • View Profile
Re: Changing emobdiments
« Reply #4 on: 04-07-18 at 02:54 am »

You do not need to cancel the claims to the old embodiment, but you may incur excess claim fees if you decide to have more than 3/20 as a result. 

As snapshot said, such strategy is fraught with peril as you're very likely to get a restriction by original presentation regardless of which way you go.

Sounds like fairly major claim surgery.  If you've already received an OA, I'd worry that you risk pissing the examiner off and not getting useful work out of them. 
If you haven't received an OA yet, I'd check whether the examiner has started searching.  If you change then, you're really gonna piss them off.  But if they haven't picked up the case, then I don't see any reason not to cancel current claims and add the new claimset you want.  You might also consider refactoring so that the two different embodiments can fit under the same independent claim.

After an OA, the concern isn't pissing the examiner off, but restriction by original presentation.  OK, well yes, you might piss the examiner off if he can't restrict, but that's fairly unlikely as the claim surgery sure sounds like a shift of the invention.  If you file after the examiner has started searching, you'll get an OA on the original claims because the new claims (assuming not filed within 3 months of the original filing) were presented after the examiner has spent time working on the old claims and the MPEP provides that such new claims are not entered as a matter of right.  Can't think of the cite off the top of my head at the moment.
Logged
The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

novobarro

  • Senior Member
  • ****
  • Posts: 282
    • View Profile
Re: Changing emobdiments
« Reply #5 on: 04-16-18 at 05:00 pm »

What if the original claims are very broad and covers several embodiments. The dependent claims cover different embodiments.  We want to amend independent claim to cover a specific embodiment covered by one of the dependent claims.  Would we need to cancel the dependent claims that do not correspond with the specific embodiment now covered by the independent claim?

For example one embodiment has an object mounted to a surface by inserting a protrusion of the object into a hole in the surface.  Another embodiment mounts the object to the surface by a strap connected to the object (which does not have a protrusion).

I want to amend the independent claim to include the strap.  I would then need to cancel the dependent claims directed to the hole/protrusion? 
« Last Edit: 04-16-18 at 05:08 pm by novobarro »
Logged

smgsmc

  • Lead Member
  • *****
  • Posts: 2448
    • View Profile
Re: Changing emobdiments
« Reply #6 on: 04-17-18 at 09:33 am »

What if the original claims are very broad and covers several embodiments. The dependent claims cover different embodiments.  We want to amend independent claim to cover a specific embodiment covered by one of the dependent claims.  Would we need to cancel the dependent claims that do not correspond with the specific embodiment now covered by the independent claim?

For example one embodiment has an object mounted to a surface by inserting a protrusion of the object into a hole in the surface.  Another embodiment mounts the object to the surface by a strap connected to the object (which does not have a protrusion).

I want to amend the independent claim to include the strap.  I would then need to cancel the dependent claims directed to the hole/protrusion?
That depends on what the spec says.  Does the spec preclude more than one method of attachment?  Is an embodiment with a strap compatible with a protrusion? 

Obviously you can't keep a dependent claim in which alternative options are mutually exclusive.  For example, assume the original independent claim had a platform as an element, one dependent claim had a circular platform, and a second dependent claim had a square platform.  If you now amend the independent claim to have a circular platform, you must cancel the dependent claim for a square platform.
Logged

novobarro

  • Senior Member
  • ****
  • Posts: 282
    • View Profile
Re: Changing emobdiments
« Reply #7 on: 04-17-18 at 10:38 am »

The spec does specifically exclude more than one method of attachment. However, the spec describes the different methods as different embodiments and attachment using protrusion would not make sense to also use a strap.  Attachment using a protrusion is done at the end of a long object.  Attachment using a strap wouldn't make sense to also use a protrusion because the surface does not have a orifice to receive the protrusion.
Logged

smgsmc

  • Lead Member
  • *****
  • Posts: 2448
    • View Profile
Re: Changing emobdiments
« Reply #8 on: 04-17-18 at 01:28 pm »

The spec does specifically exclude more than one method of attachment. However, the spec describes the different methods as different embodiments and attachment using protrusion would not make sense to also use a strap.  Attachment using a protrusion is done at the end of a long object.  Attachment using a strap wouldn't make sense to also use a protrusion because the surface does not have a orifice to receive the protrusion.
Well, then it's clear in your hypo you need to cancel the dependent claim reciting a protrusion.
Logged
 



Footer

www.intelproplaw.com

Terms of Use
Feel free to contact us:
Sorry, spam is killing us.

iKnight Technologies Inc.

www.intelproplaw.com

Page created in 1.204 seconds with 21 queries.