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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.

Questions:

  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. – the Europeist Nov 27 at 10:10
  • Almost a duplicate of patents.stackexchange.com/questions/20948/… See the answer there. – George White Nov 27 at 16:37
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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 at 0:29
  • It seems to be claim 12 so I edited the answer – George White Nov 28 at 2:42
  • And welcome to Ask Patents Gabriel ! – George White Nov 28 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 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 – Gabriel Hendricks Nov 29 at 3:10
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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.

Also, the claims are clearly dependent as they include all the elements of another claim by a reference and the word "comprising" by itself does not define whether the claim is dependent or independent.

  • BTW, after citing these references Examiner withdrew the rejection. – Jimski Dec 4 at 3:37

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