Horizontally adjacent

Started by dbmax, 02-17-19 at 03:57 AM

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dbmax

I've used the word "adjacent" within the spec without defining it, although in all cases, the drawings illustrate the following property:

"Two proximate bodies are [ adjacent ] if a horzontal ray may be constructed to pass through each of the two bodies."   or

"A first body  and a second body are is [ adjacent ] to a proximate second body if a portion of the first body is horizontally disposed from a portion of the second body."

Now I need to add a limiting term to the claims which has the precise meaning which I failed to provide explicitly in the spec. (A vertical axis is defined in the specification).

My options in the claims are:

A) Just use the word "adjacent" and hope for the best.

B) Use another simple term (horizontally adjacent, laterally adjacent..?) which unambiguously (or less ambiguously) describes the relationship.

C) Include the entire defition in each claim.

D) Amend the spec to include a precise definition, eg: "As used in the claims, two bodies are 'adjacent' if ..."

E) Use a "such that" clause to limit the meaning of "adjacent" in the claim; eg: "...adjacent, such that a portion of said first body is horizontally disposed from a portion of said second body."

F)  Use a "wherein" or "such that" clause to limit the claim directly;  eg: "...proximate; and  wherein a portion of said first body is horizontally disposed from a portion of said second body.' "


I'm leaning toward option F,  but I'm open to suggestions.   Here are some questions:

1) Because the amendment in  Option D speaks only to the claims, is such an amendment generally considered safe  without incurring "new-matter" issues? (either during prosecution or in a continuation)

2) Anyone got a better term for Option 2?   I'm not sure that "horizontally adjacent" is both as limiting and as permissive as the definition above.

3) I'm wondering if the clause in Option E could be used (disadvantageously to a patentee) to differentiate meanings in the spec from those in the claims for the term "adjacent", leading to a finding that use of the term "adjacent" in the spec itself is ambiguous. And would that matter?

Thanks,
db

smgsmc

#1
(1) An amendment adds new matter if the matter was not disclosed in the original application as filed.  "Hey, I'm only amending the spec to clarify the claims," doesn't cut it.

(2) You're probably better off adding specific limitations to the claims that are fully supported by the written description.  Make sure you use common language so you won't get a 112(a) rejection.  What do you mean by "adjacent" anyway?  "Adjacent" typically means close-by in some sense.  If two objects are "horizontally disposed" and separated by 10 km, are they "adjacent"?  If the two objects are touching, are they "adjacent"?  If a third object is interposed at least partially between the first two objects, are the first two objects "adjacent"? ....

mybrainisfull


Since "adjacent" isn't well defined in the spec, I would try to describe the positioning of the elements in relation to the vertical axis, which you stated is well defined. For example: 

1. An apparatus comprising a first body and a second body configured to allow the pass through of a directed ray when at least one portion of the said first body and at least one portion of the said second body are (adjustably?) positioned adjacent to each other (in close communication?) along a single axis (plane?) that is horizontal to a predefined vertical axis of the apparatus.   


If the examiner rejects for the "vertical axis" being indefinite, just amend the claim to define it more precisely. For example:

......along a single axis (plane?) that is horizontal to a predefined the vertical axis of the apparatus, which is defined by the longitudinal orientation of element X.   


Just my 2c, I'm not an attorney.


smgsmc

Quote from: mybrainisfull on 02-18-19 at 07:36 PM

Since "adjacent" isn't well defined in the spec, I would try to describe the positioning of the elements in relation to the vertical axis, which you stated is well defined. For example: 

1. An apparatus comprising a first body and a second body configured to allow the pass through of a directed ray when at least one portion of the said first body and at least one portion of the said second body are (adjustably?) positioned adjacent to each other (in close communication?) along a single axis (plane?) that is horizontal to a predefined vertical axis of the apparatus.   


If the examiner rejects for the "vertical axis" being indefinite, just amend the claim to define it more precisely. For example:

......along a single axis (plane?) that is horizontal to a predefined the vertical axis of the apparatus, which is defined by the longitudinal orientation of element X.   


Just my 2c, I'm not an attorney.
If you can at all avoid it, it's best not to phrase claim limitations in terms of abstract mathematical principles.

full-of-iDeas

A Term Of Art - maybe you can find literature that uses a term for "enabling gap" that lets a horizontal ray through



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