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Author Topic: Accepting 112 interpretation  (Read 1227 times)

useful_machine

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Re: Accepting 112 interpretation
« Reply #15 on: 05-09-18 at 11:44 am »

Consider that it is well established that the absence of “means for” or “step for” language creates a strong rebuttable presumption that a limitation is not properly interpreted as invoking a means-plus-function limitation under § 112(f). 

Williamson changed the 112f standards - it's not a "strong" rebuttable presumption anymore.

Thank you for the correction.
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eighteighteight

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Re: Accepting 112 interpretation
« Reply #16 on: 05-09-18 at 05:56 pm »

You can always add the structure into a dependent claim, so that even if the independent claim is interpreted as invoking 112(f) for lacking sufficient structure, this would not be true of the dependent claim. of course, if it is not required for novelty, it should probably not be in the claim.
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fb

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Re: Accepting 112 interpretation
« Reply #17 on: 05-12-18 at 04:07 pm »

Yes I think that leaving the original independent claim as-as, and changing two dependents to structure, will be the way to go.

And including "without admitting 112(f) applicability or non-applicability..."

Quote
Also, if those alleged 112(f) limitations are not required for patentability, could you amend the claims to recite element A positioned relative to element B (instead of including a positioning device for positioning A relative to B); element C attached to element B (instead of including an attachment mechanism for attaching C to B; etc.?

I did have a dependent using "relative" such as this; will take another look at it.
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bluerogue

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Re: Accepting 112 interpretation
« Reply #18 on: 05-12-18 at 09:57 pm »

Yes I think that leaving the original independent claim as-as, and changing two dependents to structure, will be the way to go.

I don't see what that gets you.  Any disclosed structure will be covered by the 112f independent and any dependent claim simply narrows the structure.  E.g. you spec discloses A, B, and C as possible structures.  Under this change, the independent will still get you A, B, and C.  A dependent claiming only A is fine, but doesn't get you anything more.  You still would not get D, which is what you're hoping to do if the claim wasn't under 112f.  And if you tried to claim D, that would be an improper dependent and new matter given the 112f interp.
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The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

fb

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Re: Accepting 112 interpretation
« Reply #19 on: 05-13-18 at 08:30 pm »

Good point. I'll make the two dependents into independents of structure only.
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eighteighteight

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Re: Accepting 112 interpretation
« Reply #20 on: 05-15-18 at 03:41 pm »

Yes I think that leaving the original independent claim as-as, and changing two dependents to structure, will be the way to go.

I don't see what that gets you.  Any disclosed structure will be covered by the 112f independent and any dependent claim simply narrows the structure.  E.g. you spec discloses A, B, and C as possible structures.  Under this change, the independent will still get you A, B, and C.  A dependent claiming only A is fine, but doesn't get you anything more.  You still would not get D, which is what you're hoping to do if the claim wasn't under 112f.  And if you tried to claim D, that would be an improper dependent and new matter given the 112f interp.

As discussed here, there are various reasons why, in litigation, you may want to avoid the 112(f) interpretation (e.g., DOE being one of them). A dependent claim specifically reciting structure of the elements may allow you to avoid 112(f) altogether, shall you so chose during litigation.
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fb

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Re: Accepting 112 interpretation
« Reply #21 on: 05-16-18 at 11:59 pm »

It looked like more grey area if I left them as dependents, so I made the two of them independent. So now one claim is independent MPF, and two claims are independent structure.

Interesting though that a structure dependent could offset a MPF independent somewhat.
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