Timeline for Equating claim elements in dependent claims?
Current License: CC BY-SA 4.0
11 events
| when toggle format | what | by | license | comment | |
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| Nov 7, 2019 at 0:56 | comment | added | user132162 | @GeorgeWhite Yes, it seems like the CAFC uses specifics of the disclosure to justify their ruling while also making a blanket statement, so it's a bit confusing to me (if the blanket statement is true, why the need to get into specifics?). But in any case, I will separate things out into different independent claims to be safe. | |
| Nov 7, 2019 at 0:33 | comment | added | user132162 | @theEuropeist I kind of see what you're saying in the example, but in order for the first claim to get through, it must have all three elements to be allowable. So it seems you would have to make a commitment in the parent claim whether the handle may not be the same as the antenna (thereby excluding the combination of handle and antenna in a dependent claim) or whether it was the same (in which case you could not take away the "handleness" of the antenna in a dependent claim, only add another handle). | |
| Nov 6, 2019 at 21:15 | comment | added | the Europeist | @user132162 Something that may be worth trying is to define one of B and C as a functional feature (if possible), and merge them as you did in a dependent claim. I guess some patent offices will not allow it though. For instance: 1. A system comprising A and C, the system being adapted to at least one of radiate and capture electromagnetic waves. || 2. The system of claim 1, further wherein C comprises B. || 3. The system of claim 1, further comprising C. | Now that I wrote it, does not seem to be as silly as I initially thought it would be. The "system adapted to" may not be allowable though. | |
| Nov 6, 2019 at 21:09 | comment | added | the Europeist | @user132162 The claim chain you propose has the same problem as soon as you read claim 3 because again the first antenna has became the handle, so they are not two different elements anymore. It is a nice attempt to disguise that, so kudos for that. By the way, European patents cannot be opposed to on the grounds of lack of clarity, so if you get it granted, it can be a nightmare for third parties. And thanks for the research on the decision, it seems to be pretty in line with the European practice. | |
| Nov 6, 2019 at 16:19 | comment | added | George White♦ | Thanks for that citation, I learned something. I read the ruling and it might have not come out that way if the specification showed an embodiment where the two elements were implemented in a common location. Or not. | |
| Nov 6, 2019 at 10:44 | vote | accept | user132162 | ||
| Nov 6, 2019 at 10:31 | comment | added | user132162 | Actually, it appears this may be the case in the US as well. See answer I added citing case law. | |
| Nov 6, 2019 at 10:15 | comment | added | user132162 | @theEuropeist Would something like this be any different?: 1. A radio comprising a body, a handle, and a first antenna. 2. The radio of 1 wherein the handle comprises a second antenna. 3. The radio of 2 wherein the second antenna comprises (or "is") the first antenna. ... I guess it looks more permissible, but technically it may still suffer from the inconsistency in scope you mention. | |
| Nov 6, 2019 at 8:01 | comment | added | the Europeist | @GeorgeWhite I think you would have the same problem. If the antenna is "structured to constitute the handle", then it can be argued that it is not clear whether you have two different elements or just one, because it appears as if the antenna were both the antenna and the handle. If there are two possible interpretations, then the claims are not clear because each interpretation defines a different scope. I understand from your answer that the USPTO will accept it, but unfortunately at the EPO you would be unsuccessful. | |
| Nov 5, 2019 at 19:20 | comment | added | George White♦ | How would it viewed at the EPO if the dependent claim was clear that there were the two elements of the independent claim but a further limitation was being added that they had a specific relationship with each other. ". . . where the antenna was mounted on the top surface and was shaped and structured to constitute the handle". | |
| Nov 5, 2019 at 18:22 | history | answered | the Europeist | CC BY-SA 4.0 |