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The following claim was rejected by the USPTO examiner for mixing system and method:

An online computer system comprising a 
processor configured to perform the steps of 
the method of claim 16.

As I understand the method steps, when spelled out within a system claim, are allowed under US patent law as per Oasis Research v. AT&T Corp, 2012 U.S.

Question: Why then a method steps couldn't be included in a system claim by a reference?

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You need to study the office action but my suspicion is that the examiner is taking the position that a claim that references another claim is, by definition, a dependent claim. The examiner is then taking the position that a dependent claim must necessarily be of the same statuary class as the claim it depends from since, by common definition, it is a narrower version of that claim. In your case the claim is to a machine, and the claim it depends upon is a claim to a process, so rejection.

The MPEP - in a very odd place - says the examiner is wrong -

The fact that the independent and dependent claims are in different statutory classes does not, in itself, render the latter improper. Thus, if claim 1 recites a specific product, a claim for the method of making the product of claim 1 in a particular manner would be a proper dependent claim since it could not be infringed without infringing claim 1. Similarly, if claim 1 recites a method of making a product, a claim for a product made by the method of claim 1 could be a proper dependent claim.

MPEP 608.01(n) Dependent Claims - way down in the discussion of fee calculation

By a careful reading of the MPEP above we see that a narrowing of the depended upon claim is only taken to mean that anything that infringes the dependent claim necessarily infringes the depended upon claim. Your case is not in the examples but the analogy is clear.

BUT, it is not worth arguing with the examiner, just paste in the steps of claims 16 and pay for an additional independent claim if you are over the three "free" ones.

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After discussion with the supervisor here is the final answer in this specific case.

Supervisor agreed with the examiner that the claim should be rejected but for a different reason. Supervisor stated that the system claim structured like this is not a dependent claim because the system could be infringed without performing the steps of the method.

So structuring a system to perform the method is not equal to performing the method. An interesting nuance which may help other people to understand and avoid this kind of rejection.

  • The logic would be, I assume, that a system that would perform the method if it was turned on, infringes a system claim just sitting in a shelf, not plugged in. No method is being performed so a method claim is not infringed. It actually makes sense. – George White Dec 9 '19 at 21:47
  • Yes George, that's how I read it too. If the system is configured to perform the method, but is not actually performing it but rather sitting idle, then there is no dependency on the method claim, and thus such a system claim is not really dependent on a method claim as the method is not being performed by the system. – Jimski Dec 10 '19 at 4:22

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