Equating claim elements in dependent claims?

Question

Assume you have a system or method claim like the following:

1. A system/method comprising A, B and C.

Is it valid to equate two or more elements in a dependent claim like so?:

2. The system/method of claim 1, wherein B is C.

Or must one use additional independent claims to cover these embodiments?:

3. A system/method comprising A and B.

The reason I would like to do so is to cover the case where one element can serve two functions. Asking with regard to USPTO, but EPO replies also welcome. Thanks

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Edit: To provide more clarification on the situation I'm imagining, consider a handheld radio with a body (comprised of electronics/speakers), an antenna, and a handle. Then what I am asking is, if the antenna serves as the handle (e.g. a loop antenna, even though that may not be advisable as a design choice), is there a way a dependent claim could consolidate those latter two elements into one: "wherein the antenna is the handle"? The point is that two functions are served by the same element.

Answer 1

Concerning the European patent practice, most probably you would receive an objection on the grounds of lack of clarity because there is an inconsistency between the scope of the independent claim and the scope of the dependent claim. In the scope of the independent claim you have a system/method with three features/steps, whereas in the scope of the dependent claim you have a system/method with two features/steps. With reference to your example, according to the independent claim the system comprises a handle and an antenna, so two different elements and nothing suggests that the handle is the antenna, then according to the dependent claim the system only comprises one element.

Maybe you could draft the independent claim differently so that you can have the dependent claim you mention, otherwise you would need another independent claim, such as your option 3 (but only in some cases you are allowed to have two independent claims of the same category in a same European patent application).

Answer 2

I can imagine a case like this - claim 1. A system with an A and a transmitter module and a receiver module. Claim 2, the system of claim 1 where the transmitter module and the receiver module are comprised in a transceiver module where a common antenna is used.

In your example "wherein the antenna is the handle" is fine. I wouldn't think of it as two things in the same element, but of a further limitation of the two elements by defining some characteristics. Not really different from "where the handle is comprised of wood and the antenna is a loop antenna."

Answer 3

From finnegan.com/files/Upload/FCN_Aug10_5.html:

The Court noted that “[w]here a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” Id. at 10 (second alteration in original) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)).

There is also some further context in this case that may have led to the Federal Circuit citing this (e.g. one of the claimed elements was "connected to" the other one), but the statement by itself is clear. Therefore, one should use two independent claims in such cases where one system element or method step can be "overloaded" to perform more than one function.

Answer 4

With regard to USPTO

A system/method comprising A, B and C.

For a system A, B, C etc are elements (parts of a system) wherein the system is capable of performing one or more than one function(s). And a method will have step i using A, step ii using B etc to perform one function.

one element can serve two functions.

Giving separate names to an element as it performs different function in one application is not possible. Because it will create ambiguity in relating elements of claims to description.

In a system, an element may perform a myriad function. What is important is, are the functions related as well as of one field. If so, than the functions can be on one application as one independent claim. If functions are not related but of same field, than independent claims for different functions may be acceptable. And if functions as well as fields are different than separate applications will be required.

For method, one independent claim for one function should be placed. Because, same steps can not yield different outcome.

Albeit, a function can have separate uses and can be enumerated in dependent claims.