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The invention is a tool that has a least one of feature Y on a first location. Then in preferred embodiments have feature Y in a second location and also different possible configurations and numbers of Y on the tool.

My question is how do I introduce Y correctly and still have it make sense with the dependent wording? I find many articles I read say you must preferably use "a" or "an" to introduce an element. What is the best most clear way to make an examiner happy?

Example 1: Independent claim: Tool, comprising: X with a first location and a second location; and at least one Y on the first location.

Dependent claim: The tool defined in claim 1, wherein at least one said Y is also located on the second location.

Example 2: Independent claim: Tool, comprising: X with a first location, and a second location; and a Y on the first location.

Dependent claim: The tool defined in claim 1, wherein at least one said Y is also located on the second location.

Example 3: Or should I say: at least one of a Y? That way there is the proverbial a, or does that even matter or help?

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Assuming each of the two locations can only have a single location, you do not want to say there is at least one Y in location one. Example 2 is better. Also, the independent claim does not need to set the stage for the dependent claim by reciting a second location. It could be seen as narrowing claim. Looking at an an infringer that had one Y at some location a jury might say "I do not see that it has any such thing as a 'second location' so it doesn't have all elements."

Without the second Y somewhere, 'second location' as a placeholder in the independent claim is not needed and potentially harmful. Just bring in the second location in the dependent claim.

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  • The locations I mentioned features of element X, first side, second side, distal tip end, proximal end and the like. In Landis on Mechanics of Patent Claim Drafting "Parts or features of elements: Where relevant to functionality, the features of an element (the size, shape, geometry, construction material, constituent parts, apertures, orientation, etc.) should be mentioned" Commented Jan 5, 2020 at 14:28
  • My main concern was using "at least one of" instead of "a". I know "a" after comprising can be construed as possibly plural, but I was trying to being more clear. Alas. Commented Jan 5, 2020 at 14:54
  • Do you want to allow for more than one Y per "location" or not?
    – George White
    Commented Jan 5, 2020 at 21:18
  • Yes sir. There can be more than one Y per location area. X has two sides. Y can be anywhere on one of two main sides of X; which side does not matter, but at least one. Having multiple Y on both sides and at more specific locations on each side, such as toward the tip or toward the bottom of each side, adds utility. I plan to add that extra utility in the dependent claims. Commented Jan 6, 2020 at 11:29
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    In that case - you have "a" Y at a first location in the independent claim. If that + other characteristics is not enough for patentablity you might need include "and a second Y at a second location" or specify the location of the single Y to achieve novelty and non-obviousness.
    – George White
    Commented Jan 8, 2020 at 4:25

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