Is it legal for a phrase “each of zero or more logic blocks”?

[Weng Tianxiang]

Hi smgsmc,

I decide to accept your suggested claim method.

Because of MYK's comment:

"People have commented here in the past that "if" is a bad word to use in claims.  "When ... then" is apparently the preferred phrasing."

so I still have the following question pending in my mind:

1. A method..., comprising:
...
doing A with one or more X;
doing A with one or more Y when the one or more Y exist; <-- patentable weight?
...

Thank you and others for taking time to response my questions.

[Robert K S]

People have commented here in the past that "if" is a bad word to use in claims.  "When ... then" is apparently the preferred phrasing.

I think "...based on [X], [doing Y]..." is even more clear and positively recited.  "When" might be argued to be equivalent to "if".

[smgsmc]

Hi smgsmc,

I decide to accept your suggested claim method.

Because of MYK's comment:

"People have commented here in the past that "if" is a bad word to use in claims.  "When ... then" is apparently the preferred phrasing."

so I still have the following question pending in my mind:

1. A method..., comprising:
...
doing A with one or more X;
doing A with one or more Y when the one or more Y exist; <-- patentable weight?
...

Thank you and others for taking time to response my questions.

In some instances, conditional claiming is unavoidable.  Consider the hypo:

A method for controlling room temperature, the method comprising the steps of:
    measuring the room temperature;
    comparing the measured room temperature to a first reference room temperature;
    comparing the measured room temperature to a second reference room temperature, wherein the second reference room temperature is less than the first reference room temperature;
    if the measured room temperature is greater than the first reference room temperature, then turning on a room chiller; and
    if the measured room temperature is less than the second reference room temperature, then turning on a room heater.

Now "if ... then" statements are widely used by process engineers and computer programmers and should not present a problem, correct?  Well, some Examiners take the stance that "if" introduces a hypothetical condition, and hypothetical conditions are given no patentable weight.  Therefore the claim is gutted.

Depending on the Examiner, the following is acceptable:

A method for controlling room temperature, the method comprising the steps of:
    measuring the room temperature;
    comparing the measured room temperature to a first reference room temperature;
    comparing the measured room temperature to a second reference room temperature, wherein the second reference room temperature is less than the first reference room temperature;
    when the measured room temperature is greater than the first reference room temperature, turning on a room chiller; and
    when the measured room temperature is less than the second reference room temperature, turning on a room heater.


My preferred wording is the following:

A method for controlling room temperature, the method comprising the steps of:
    measuring the room temperature;
    comparing the measured room temperature to a first reference room temperature;
    comparing the measured room temperature to a second reference room temperature, wherein the second reference room temperature is less than the first reference room temperature;
    upon determining that the measured room temperature is greater than the first reference room temperature, turning on a room chiller; and
    upon determining the measured room temperature is less than the second reference room temperature, turning on a room heater.


You yourself referred to the following discussion of conditional claiming:

http://www.ipwatchdog.com/2017/08/28/beware-conditional-limitations-when-drafting-patent-claims/id=87242/

You see that there are many issues that will land you in an appeal to the PTAB or the CAFC during prosecution (and that will land you in hot water during litigation).

So, again, my advice is that if you can write your claim set without conditionals, then do so.  In your instance, I've shown how it can be done.  You seem to want the conditional, not because it is necessary, but because it leads to a more compact claim set.  This is not a compelling reason.  Personally, I would not use your preferred claim wording.  Whether it is acceptable or not, I don't know.  But it at least raises red flags that there is likely trouble down the road.

[smgsmc]

A is always done with one or more X, regardless of whether one or more Y exist;
A is done again with one or more Y, if one or more Y exist.

If you really mean A is done twice (once by Xs, and a second time by Ys) then you should probably say that:

A method comprising:
doing A a first time using at least one X; and
doing A a second time using at least one Y

For your "zero or more Y" issue, if you mean that you do A once with Xs, and then if you have any Ys, you do A again, you could write it as an independent/dependent pair:

1. A method comprising:
doing A a first time using at least one X.

2. The method of claim 1, comprising:
when at least one Y is available, doing A a second time using the at least one Y.

Note that methods should have at least two steps (which should be called "operations," last I heard).  So the independent claim probably needs at least one other step.

Weng, we've been concentrating on one aspect of a simplified hypo.  In your actual claim (not to be discussed on this public forum), you should take into account mersenne's comments and decide the appropriate wording when doing A is repeated [whether or not adding "again" or using "first time" and "second time" (or some other wording) is appropriate, or even necessary, depends on the actual claim].

[Weng Tianxiang]

Hi smgsmc,

1. I have decided to accept your claim method and have finished the first 2 claims' modifications.

2. Your comment is correct and I really have a trend to do what you say: "You seem to want the conditional, not because it is necessary, but because it leads to a more compact claim set. "

3. The reason I repeatedly ask the same question on "if" and "when" is that I found many more "if" words, exactly 8 "if" times, in my claims that lead me to want to get the final unified solutions forever on how to avoid using "if" word completely in claims.

4. Your example wording is very instructive, valuable and I will follow your advice in my next 10 or more application filing that cannot be learned from any books and googling:
" upon determining that the measured room temperature is greater than the first reference room temperature, turning on a room chiller; and
    upon determining the measured room temperature is less than the second reference room temperature, turning on a room heater."

5. I also will follow mersenne's comments: add "first time and second time". But I don' really understand why "first time and second time" is so important and relevant that it would lead to some penalty without them?

6. I have carefully studied the paper "Beware of Conditional Limitations when Drafting Patent Claims", http://www.ipwatchdog.com/2017/08/28/beware-conditional-limitations-when-drafting-patent-claims/id=87242/

And my conclusion is: the paper conclusion is misleading and it has nothing to do with "if" wording!

smgsmc,
I would ask a question: if the patent wording were changed using your "Upon...", the patentability problem would disppear?

No! I don't think so.

Here is the reasoning from PTAB:
The Board found that the method contained "several steps [(specifically steps D, E, and F)] only need[ed] to be performed if certain conditions precedents [were] met." Id. at 6. The Board reasoned that if the determining step (step C) is not reached then the "remaining method steps" (steps D, E, and F) did not have to be performed. Id. at 9. Accordingly, it was not necessary for the patent examiner to show that both paths of a conditional limitation were anticipated or obvious over prior art. Id. The examiner had to show that only one path was anticipated or obvious. Id.

In another words, if you change "if" to "upon", 2 process paths still exist and one falls into prior art that leads to unpatentable!

In my a non-professional explanation for BRI (good indicator to check what should be paid attention to!):
Check every possible process path generated by "if" or equivalent wording, if one path falls into prior art, the application is unpatentable!


I think that Blueroger's comment about no patentable weight for a step if there is a "if" word, not because "if" itself, but because "if" word leads to a short cut path that enable Examiner to fully ignore the step with "if" wording without any harm. Most importantly, the examiner had to show that only one path was anticipated or obvious.

Thank you.

[smgsmc]

5. I also will follow mersenne's comments: add "first time and second time". But I don' really understand why "first time and second time" is so important and relevant that it would lead to some penalty without them?

My recommendation was to consider mersenne's comments and revise the wording in your real claim, if needed ... not just blindly accept his recommendation based on a simplified hypo.  If you don't really understand why it's important and relevant (or even whether it's necessary), that's a red flag for trouble down the road.

6.

smgsmc,
I would ask a question: if the patent wording were changed using your "Upon...", the patentability problem would disppear?

No! I don't think so.

It is possible, but whether it's wise to do so is another story.  Consider the following hypo:

A method comprising:
   determining whether one or more Y exist;
   upon determining that one or more Y do not exist, doing A with one or more X; and
   upon determining that one or more Y do exist:
      doing A with one or more X; and
      doing A with one or more Y.

That would work.  But for literal infringement, the user would actually need to check whether one or more Y exist.  Is that your intent, or does the user know a priori whether one or more Y exist?  As an analogy, suppose I have a method performed with a cellphone.  One variant is performed if the cellphone has no camera.  Another variant is performed if the cellphone has a camera.  In this instance, the user knows a priori whether his cellphone has a camera or not.  I would not want an explicit step in the claim of "determining whether the cellphone has a camera or not".  In contrast, the room temperature controller example I gave above requires that the room temperature be measured and be compared with a first and a second reference room temperature.

6. I have carefully studied the paper "Beware of Conditional Limitations when Drafting Patent Claims", http://www.ipwatchdog.com/2017/08/28/beware-conditional-limitations-when-drafting-patent-claims/id=87242/

And my conclusion is: the paper conclusion is misleading and it has nothing to do with "if" wording!

...
Here is the reasoning from PTAB:
The Board found that the method contained "several steps [(specifically steps D, E, and F)] only need[ed] to be performed if certain conditions precedents [were] met." Id. at 6. The Board reasoned that if the determining step (step C) is not reached then the "remaining method steps" (steps D, E, and F) did not have to be performed. Id. at 9. Accordingly, it was not necessary for the patent examiner to show that both paths of a conditional limitation were anticipated or obvious over prior art. Id. The examiner had to show that only one path was anticipated or obvious. Id.

In another words, if you change "if" to "upon", 2 process paths still exist and one falls into prior art that leads to unpatentable!

In my a non-professional explanation for BRI (good indicator to check what should be paid attention to!):
Check every possible process path generated by "if" or equivalent wording, if one path falls into prior art, the application is unpatentable!


I think that Blueroger's comment about no patentable weight for a step if there is a "if" word, not because "if" itself, but because "if" word leads to a short cut path that enable Examiner to fully ignore the step with "if" wording without any harm. Most importantly, the examiner had to show that only one path was anticipated or obvious.

The remainder of your Pt. 6 confounds at least three phrasings used in claim limitations:

"zero or more" [which led off your original thread];
conditionals introduced specifically by "if"; and
conditionals introduced by any term.

It furthermore confounds two issues:

whether a particular claim limitation has any patentable weight; and
for a claim with more than one conditional branch, whether the Examiner can reject the entire claim if he finds prior art for only one conditional branch. 

You should re-read the prior posts in this thread and the article you cited, while properly partitioning the phrasings and issues under consideration.

[Weng Tianxiang]

Hi smgsmc,

1. Your comment is very much appreciated that takes you a lot of time.

2. Your cellphone example clearly teaches me what is the difference between a claim limit and a product limit.

3. I think your comments help me to understand how to properly handle:
   a. "zero and more"; and
   b. "if".

To express:
1.  A method comprising:
doing A with one or more X;
....

2.  The method of claim 1, further comprising:  <-- excellent and creative method
doing A with one or more Y;
.... ;

Here is what my latest replace version is about "zero or more" and I would like to have your further comment:

a. Add a new definition XY in specs, and the XY is a concept that comprises both X and Y. (Actually it exists in the specs before my posting)

1.  A method comprising:
...
doing A with one or more XY;
...

2. The method of claim 1, further comprising:
dividing each of the one or more XY into 2 categories:
   1) a X when a condition CX is satisfied; or
   2) a Y when a condition CY is satisfied.
...

a. So later one or more X and one or more Y can be referenced.

b. The above claims make all following claims applied to both X and Y that is very important!

c. Actually it's not a key problem I am concerned about, what I want to do is to describe them correctly!

Finally I think I may improperly express my opinion about paper "Beware of Conditional Limitations when Drafting Patent Claims", http://www.ipwatchdog.com/2017/08/28/beware-conditional-limitations-when-drafting-patent-claims/id=87242/

smgsmc,
I would ask a question: if the patent wording were changed using your "Upon...", the patentability problem [of the paper] would disppear?

The above opinion is especially pointing to the paper, not to my question.

In other words I think the paper about "if" judgement may be misleading.

My opinion is: no matter "if" phrase changes, the claim 1 in the paper is still unpatentable!

If needed or necessary, I would like to open a new discussion topic for the paper.

Thank you.

[eighteighteight]

My preferred wording is the following:

A method for controlling room temperature, the method comprising the steps of:
    measuring the room temperature;
    comparing the measured room temperature to a first reference room temperature;
    comparing the measured room temperature to a second reference room temperature, wherein the second reference room temperature is less than the first reference room temperature;
    upon determining that the measured room temperature is greater than the first reference room temperature, turning on a room chiller; and
    upon determining the measured room temperature is less than the second reference room temperature, turning on a room heater.

Note that this claim scope requires both turning on the room chiller AND turning on the room heater (at different times, presumably, but you might run into issues). If a person only ever turns on a chiller, they do not infringe. Maybe this is what you want, but it could run into claim construction issues. It is certainly of a different claim scope than using the conditionals ("if the room is to hot, etc.)"

If it is important, I would write two different independent claims. One turns the room chiller on upon determination that the temperature is too high, one turns the heater on upon determination that the temperature is too low.

As for your initial question:

"A method comprising:
doing A with X and zero or more Y".

I would write this as:

1. "A method comprising:
doing A with Z, wherein Z includes an X."

(this means it could be an X by itself, or it could by an X and a Y, or an X and 10 Y's).

"2. The method of claim 1, wherein Z includes at least one Y."

If you are REPEATING "A" with Y later, then just claim it as a dependent, as has been pointed out.

[Weng Tianxiang]

Hi 888,

You are right when 2 different independent claims are prefered to deal with 2 different situations: hot or chill.

I have another question to ask:

1. A method, comprising:
...
dividing a cake into one or more smaller cakes;
...

If the dividing result is one cake, it is the same cake as the original cake and their sizes are the same, not smaller. In the situation using "smaller" is correct?

Thank you.

[mersenne]

I have another question to ask:

Might be better as a new thread...

1. A method, comprising:
...
dividing a cake into one or more smaller cakes;
...

If the dividing result is one cake, it is the same cake as the original cake and their sizes are the same, not smaller. In the situation using "smaller" is correct?

I think "dividing into one or more" is problematic, for the reasons you note.

If your method can function properly with one whole cake, then the "dividing" operation might be better off as a dependent claim:

1. A method involving at least one cake, comprising:
laying out a napkin for each of the at least one cake;
laying out a fork for each of the at least one cake;
inviting one distinct person for each of the at least one cake; and
each distinct person uses one of the forks to eat a corresponding one of the at least one cake.

2. The method of claim 1, further comprising:
dividing the at least one cake into at least two smaller cakes; and
performing the laying out, inviting and eating operations on each of the at least two smaller cakes.

(This is sort of messy, partly because it's a messy situation, and partly because I haven't spent the time to structure the claim in a way that makes it cleaner to express, but hopefully it conveys the idea.)

[Weng Tianxiang]

Hi mersenne,

I have changed words in the original claim 1.

Original:
1. A method, comprising:
...
dividing a cake into one or more smaller cakes;
...

New:
1. A method, comprising:
...
baking a raw cake into one or more finished cakes;
...

The dividing and smaller are accurate and appropriate in life language, but they now are used in claims and they should not be picked up for any fault.

It seems that it is appropriate for me to change phrases if some words in claims are smelling bad.

A lesson learned from your comment!

Thank you.

[mersenne]

baking a raw cake into one or more finished cakes;

If there's nothing special (patentable) about your baking method, you might leave that step out entirely -- it introduces questions about how you get from one raw cake to more than one baked cakes.

If there's something special in the baking, then maybe you want:

pouring raw cake batter into at least one cake pan; and
baking the at least one cake pan containing raw cake batter to produce at least one finished cake;
and then doing whatever with the at least one finished cake.

[Weng Tianxiang]

Hi mersenne,

I put 2 questions into one question to save one post. And the followings are real phrases from my claim 1.

Original:
1. A method, comprising:
...
dividing a plurality of states into one or more state groups; <-- Here dividing one to one
...

Latest:
1. A method, comprising:
...
making one or more state groups from a plurality of states; <-- Here avoid from one to one.
...

"smaller" is changed properly, not mentioning the size comparison that is unnecessary.

Thank you.

[mersenne]

That doesn't sound too bad...I know it's hard to come up with an example claim to illustrate things like that!

Instead of "dividing," you might consider "assigning" or "separating."  "Separating" has some of the same "splitting up" feel of "dividing," but "assigning" could easily have all your states assigned to one state group.  "Making" is not bad either, but it's kind of generic for a verb.  "Assign" seems to be more specific than "make" in this application.

A lot of these kinds of word choices are less about describing the invention accurately, and more about preventing the examiner from picking a meaning that is silly and not what you intended.  That seems to be a big part of their job: to (pretend to) be the dumbest engineer on the planet, and misunderstand your claim in the most ridiculous way possible.

(I don't mean to say that examiners are dumb -- far from it!  But some of them are astonishingly good at coming up with a misunderstanding that's just this side of embarrassingly wrong!  _{Don't get me started about infringement-defense attorneys!})

[Weng Tianxiang]

Hi mersenne,

Thank you very much!

I will use your recommended "assigning" absolutely!

Latest:
1. A method, comprising:
...
assigning a plurality of states to one or more state groups;
...