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How do you separate the sections of nested method claims to avoid misinterpretation.

Claim 1. A method for doing something the method comprising:
 making square widget comprising: 
   petting the widget to make it square;
   kicking the widget to make it submissive;
 hardening the made square widget.

For me this is unclear if the step of "hardening" is a substep of "making" or if it's an independent step on its own.

Questions:

  1. Is the claim clear enough as it is?

  2. Or should I use double semicolon after "submissive;;" to separate the last sub-step from the next step?

  3. Is there yet another way to separate the steps?

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Re 1. Please note that clarity is quite subjective, therefore some examiners would object to the clarity of a claimed whereas some others would not. You may find some guidelines about clarity here and there, or manuals handed to examiners, but beyond subject-matter that is objectively unclear, pretty much you cannot say for sure whether the examiner assigned to your case will find the claims clear or not.

That said, the only feature that I see as being potentially unclear is "kicking the widget to make it submissive;", because unlike the very last feature you are not referring to the made square widget or the petted widget. Perhaps you do not want to refer to "the petted widget" because you would be limiting the claimed scope by implicitly defining the order of the steps; it is fair not do so. You may add and "and", i.e. "petting the widget to make it square; and kicking the widget to make it submissive;". For me, that would be clear. It also helps if you indent each feature based on the relevant comprising.

The way you drafted those steps, the hardening step is an independent step because you are clearly referring to thr made square widget, thus it cannot be part of the making square widget step.

Re 2. You should not use double semicolon. Use "and" before the last feature of each comprising. You would also include "and" after "submissive;" because then you claim the last feature of the first comprising.

Re 3. Sometimes I have used a step by structure without receiving any clarity objections in the US, e.g. making square widget at least by both petting the widget to make it square, and kicking the widget to make it submissive.

  • I generally don't use "and" to link the last step in a method. That way, when some future crazy court decision rules that word "and" implies a sequence (or some other weird interpretation) my claims will be immune to crazy ruling. – Jimski Aug 17 at 17:43
  • I don't understand what you mean by "Perhaps you do not want to refer to the petted widget because you are limiting the claimed scope by implicitly defining the order of the steps". In my opinion referring to the petted widget in the next step would explicitly define the the order of steps ??? I believe that my construction does not create any implicit order. Please explain. – Jimski Aug 17 at 17:52
  • For that reason you should have a description that clearly indicates that the two steps are not necessarily performed in the sequence they are written; in one embodiment they have that sequence and another embodiment they the sequence reversed. Also it is well-established that "comprising" is open-ended, but if you are not compelled by that, then: (1) draft it as "at least comprising"; and (2) use claim differentiation in your favor, draft a dependent claim such that the scope of the independent claim is not limited to those two steps. – the Europeist Aug 17 at 17:52
  • Concerning your last comment, I did not write that properly in my answer, I have modified that now, apologies. I meant exactly what you are saying, i.e. should you refer to the "petted widget", that would imply a given order of the steps. – the Europeist Aug 17 at 18:00
  • Thank you, Now all is clear. – Jimski Aug 17 at 18:05
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You can use a numbered (actually lettered) outline form and repetition of wording for clarity. Claim 1. A method for doing something the method comprising: (a) making square widget comprising: (i) petting the widget to make it square; (ii) kicking the widget to make it submissive; (b) hardening the made square widget.

Another approach is Claim 1. A method for doing something the method comprising: making square widget hardening the made square widget,

where making a square widget comprises: petting the widget to make it square; kicking the widget to make it submissive.

  • I try not to use (a) or (i) to avoid potential interpretation of the steps as a numbered sequence and if I do I add to specifications a paragraph stating that such designators are not to be interpreted as a nubered sequence. – Jimski Aug 17 at 17:45
  • by numbered sequence do mean ordered sequence? – George White Aug 17 at 17:48
  • 1
    Yes, I meant ordered sequence. – Jimski Aug 17 at 17:58

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