1

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?:

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

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

  1. 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


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.

  • Can you edit to question to explain it a little more? – George White Nov 5 at 4:08
  • @GeorgeWhite Okay, I have tried to clarify above. – user132162 Nov 5 at 13:25
2

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).

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    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". – George White Nov 5 at 19:20
  • @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. – the Europeist Nov 6 at 8:01
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    Actually, it appears this may be the case in the US as well. See answer I added citing case law. – user132162 Nov 6 at 10:31
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    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. – George White Nov 6 at 16:19
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    @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. – the Europeist Nov 6 at 21:09
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."

  • Okay, maybe this is what I should try to pursue.. wrapping the initially distinct two elements in a third element that comprises both and serves both functions. – user132162 Nov 5 at 13:31
  • Just to follow up on this, while it may seem like one should be able to reduce the scope of a claim element just to those embodiments that happen also to be another element of the claim, according to the case law I cited in another answer, this would not be allowed, as the parent claim implies they are distinct components. – user132162 Nov 6 at 10:49
1

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.

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    Nice research you did there! I believe the answer to your question seems more apparent if the B and C of your example are introduced as "first device" and "second device", because that is what they are. Then it is quite clear that you had two devices comprised in the system, so a dependent claim defining that they are the same device is kind of weird. – the Europeist Nov 6 at 21:19
0

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.

  • I feel like there is a potentially good answer here, but I didn't quite understand. Does the edit above change anything? – user132162 Nov 5 at 13:29
  • @user132162. Thanks for those good words. My submission was in layman's language and on the whole in conformity with almost all the answers so far. As regarding post edit opinion, I feel it could be handled in the independent claim itself with a claim structure such as (i) "a handheld radio with a body (comprised of electronics/speakers), an antenna," wherein the antenna is attached to the external part of the body in the shape of a handle ......material and shaped to – AD Adhikary Nov 6 at 14:21
  • 2/2. or (ii) "a handheld radio with a body (comprised of electronics/speakers), a handle," ... wherein the handle is a metallic loop covered with insulating material .... . I feel with such enumeration in independent claim, element antenna as handle or element handle as antenna may be corroborated in dependent claim(s). – AD Adhikary Nov 6 at 14:39

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