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Let's say there are two items. Item A and Item B.

Item A and Item B are similar, but not identical.

One of my claim step is worded like this at the moment.

Wherein the copying step uses item A   

I have provided enough details for the above step in the specification.

But an infringer can go like this.

Wherein the copying step uses item B   

My drawing contains both Item A and Item B. But my specification never described the item B step.

If I don't claim the step that uses item 2, an infringer can get away with my invention and I may lose the doctrine of equivalents argument due to prosecution history estoppel. [I didn't know anything about the prosecution history estoppel when I draft my specification.]

So Can I claim something that's not described in detail, but inherent?

  • Is item B numbered in your drawings? – Eric S Jan 1 at 17:48
  • The answer is very dependent on the details. In theory, yes if the drawings make it very clear that B can be sued that way and are enabling. – George White Jan 1 at 18:18
  • @EricShain Yes. I have numbered that. – Giri Jan 1 at 20:12
  • @GeorgeWhite Thanks. Yes the drawing is clear. – Giri Jan 1 at 20:14
  • You numbered B but make no reference to it in the specification? – Eric S Jan 1 at 22:07

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