The following claim was rejected by the USPTO examiner for two reasons:

  1. For mixing a product and a method.
  2. The examiner also stated that the preamble says that this is an independent claim which cannot rely on another claim.

    A computer program product, comprising: a non-transitory computer readable medium having stored thereon a computer executable instruction(s) to perform the steps of the method of claim 1.


  1. Does anyone know an issued US patent or US case law that allows this structure?

  2. For me this is clearly a dependent claim so how to convince the examiner about it?

  • I think that in the US you cannot claim a computer program product (which is allowed in Europe, but you would not say that the product comprises a computer-readable medium), but instead you should claim a computer-readable medium having instructions thereon. Perhaps somebody with good knowledge of the US patent system can clarify this though. Nov 27, 2019 at 10:10
  • Almost a duplicate of patents.stackexchange.com/questions/20948/… See the answer there.
    – George White
    Nov 27, 2019 at 16:37

2 Answers 2


Yes, I do. Check out Claim 10 of US10067111B2

Which is an independent System claim referring to a method claim

And not only that, but the examiner proposed the amendment. Check out the response to the 3rd Office Action in the file wrapper. End of claim 12 - "a microprocessor programmed to sequence the system to perform continuous measurements within each measurement cycle"

The examiner proposed: "a microprocessor programmed to sequence the system to perform continuous measurements according to the method of claim 1"

But check out this blog post on case law why method/device hybrid claims may be indefinite.

  • Are you sure this is the right link because claim 10 is a dependent method claim? 10. The method of claim 1 further including periodically directing a reference fluid downstream of the sample processing cell and through the separate device to calibrate the separate device.
    – Jimski
    Nov 28, 2019 at 0:29
  • It seems to be claim 12 so I edited the answer
    – George White
    Nov 28, 2019 at 2:42
  • And welcome to Ask Patents Gabriel !
    – George White
    Nov 28, 2019 at 2:45
  • Guys, I don't see any mention of a computer readable medium neither in claim 10 nor 12 ??? I do see however relevance to another question which I asked in a separate thread so I upvoted your answer but didn't mark it as the best answer.
    – Jimski
    Nov 28, 2019 at 19:58
  • Thanks for the edit, guess I can't count and post in a hurry! Obvious that patent doesn't involve computer readable medium, just an example of a generic 'computer' that can do a claimed method Nov 29, 2019 at 3:10

After some digging I found two references in issued patents.

· U.S. Patent 10,492,242, Wegmann, et al., Claim 20
· U.S. Patent 10,492,208, Petersson, et al., Claim 12

Both of these patents claim computer readable medium and include a method of another claim by a reference.

I would say those are Williamson style claims and they are pretty clear when an infringement occurs and they don't mix product and method but rather define a product which has a specific function.

However, USPTO rejects these kinds of claims as they are not constructed in proper dependent form. This is because having stored instruction of a method claim does not equal performing the method claim thus this is not proper dependent form.


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